Since the reasons for rejection in an office action issued during the examination of a divisional application usually arise from claims in the application that exceed the scope of the initial description and claims, it is important to cultivate an understanding of the principles and legal provisions that apply to China’s patent examination practices for divisional applications and amendments that are beyond the scope of the initial description and claims.
1. Current Examination Practices: Principles for the Examination of Amendments in Divisional Applications that Exceed the Initial Scope
As a general principle, Article 43 of the Implementing Rules of the Patent Law forbids amendment(s) in divisional application from exceeding the scope that is disclosed in the initial application. Part II, Chapter 6 of the Patent Examination Guidelines provides further interpretation of the term “disclosed scope” in Article 43 by stating that it “should be construed as the ‘disclosed scope’ in Article 33 of the Patent Law”. Consequently, the examination of whether or not the content of a divisional application exceeds the initial scope should apply the examination principles prescribed in Article 33 of the Patent Law concerning amendments exceeding the initial scope. In other words, “new constituent elements” in the divisional application should be deemed amendments to the initial application documents (including the description and the claims), and the examination should focus on whether or not such amendments exceed the scope that is disclosed in the initial description and claims.
Part II, Chapter 8 of the Patent Examination Guidelines provides the following circumstances under which amendments to the content are forbidden:
- The technical features of the claims are changed. Such amendment goes beyond the scope of disclosure contained in the initial claims and description.
- New contents are introduced by changing indefinite contents into definite and specific contents.
- Several separate features of the initial application documents are combined as a new feature while the interrelations of these separate features are not mentioned definitely in the initial application documents.
- Certain feature described in the description is changed to make the changed technical contents different from those described in the initial application documents. Such amendment goes beyond the scope of disclosure contained in the initial description and claims.
2. Case Analysis
The initial application relates to a method for preparation of a chemical product called W, which involves three basic preparation process/steps that have already been disclosed in prior art: Step A – dissolution, Step B – reduction and Step C – crystallization (hereinafter A, B and C are used to represent the corresponding concepts). The initial application used a specific feature, “X” of a defined parameter in Step B as the “inventive step” and requested protection in the form of a claim. The technical solution disclosed in the initial claim was A+B+C+X, among which A+B+C served as the basis and X served as the feature. The patent examination department issued a notice of authorization to the initial application after examination.
The applicant later filed a divisional application based on the initial application. The technical solution disclosed in the claims of the divisional application used the specific feature Y, mentioned in further explanations of Step C in the description, as its inventive step; thus the technical solution disclosed in the claims of the divisional application was A+B+C+Y, of which A+B+C served as the basis and Y served as the feature. After examination the patent office rejected the divisional application, holding that the technical solution disclosed in the claims of the divisional application exceeded the scope of the initial application and did not comply with Article 43 of the Implementing Rules of the Patent Law.
First of all, the examiner used the entire technical solution disclosed in the claims as the examination target, i.e. his examination focused on whether or not the entire technical solution was disclosed in the initial description and claims, instead of merely focusing on whether or not a certain individual technical feature in the technical solution was disclosed in the description. It can be confirmed based on the initial description that the technical solution disclosed in Claim 1 of the divisional application (i.e. A+B+C+Y) was not independently and consecutively disclosed in the initial description or claims (while, by contrast, the technical solution A+B+C+X in the initial application was disclosed in the initial claims.)
Secondly, the distinguishing technical feature “Y” was a technical feature included in the detailed description of a preferred embodiment of the initial description, and did not by itself constitute a complete technical solution. Specifically, the preferred embodiment described not only the specific feature Y involved in Step C, but also the other specific technical features involved in Step A and Step B (i.e. subordinate concepts of A and B, e.g., feature X). All of these specific technical features were presented as an inseparable whole. In other words, these technical features jointly constituted the scope disclosed by the embodiment, which was exactly the basis for the amendment of the claims (i.e. the claims of the divisional application) as well as the “scope disclosed by the initial description” recognized by the examiner. Nevertheless, when selecting the specific feature Y in Step C, the technical feature of the claims of the divisional application deleted further descriptions of the specific features in Step A and Step B (e.g. feature X) from the preferred embodiment. Such a technical solution cannot be definitely derived from the initial description or claims.
Consequently, the examiner held that the conditions of Article 43.1 of the Implementing Rules of the Patent Law were not met because (i) the technical solution defined by the claims in the divisional application was not disclosed in the initial description and claims; and (ii) the scope defined thereby exceeded the scope defined by the specific embodiment disclosed in the description that was used as the basis for the amendment.