Introduction

       In the evaluation for inventiveness by examiners, there is a relatively common situation where certain distinguishing technical features may be considered as conventional technical means. The distinguishing technical features considered as conventional technical means are often regarded by examiners as conceivable or as having a lower contribution to inventiveness. In such cases, examiners may proactively supplement prior art evidence to support their views, or in the absence of such evidence from the examiner, the applicant or attorney, as the respondent, can usually request the examiner to provide relevant evidence. Regardless, in practice, the applicant or attorney may still need to pay more attention to the prior art evidence provided by the examiner itself, at least from the following aspects.

1. Whether the provided prior art evidence genuinely teaches the corresponding distinguishing technical features

       For example, the following example patent application relates to an apparatus for producing objects from polymeric materials, which apparatus is illustrated in the figure below. The examiner pointed out that the difference between the patent application and Reference Document 1 is that “the apparatus includes an accelerator device for accelerating the flow of polymer material from the melting device 2, the accelerator device being configured to accelerate the flow of polymer material such that the average velocity of the flow higher than the average velocity that the flow has in the heat exchanger 6", but alleged that this distinguishing technical feature belongs to conventional technical means.

    In the examination opinion, as requested by the applicant, the examiner supplemented the "Designer's Guide to Plastic Products" as evidence to prove that the above-mentioned distinguishing technical features belong to conventional technical means in the art. The "Designer's Guide to Plastic Products" first studied the effect of melting temperature and time on the crystallinity of the material, then studied the effect of stress on the crystallinity, and thus found that as the concentration of "fibrils" increases with the increase of stretching rate or shear rate, the crystallization rate of the melt increases with the increase of stretching rate and shear rate. However, increasing the stretch or shear rate does not mean that the polymer material will accelerate flow. For example, a polymer material can be subjected to stretching or shear stress by using a suitable tool, such as a rotating mixing element, and the stretching rate or shear rate can be increased by increasing the rotational speed of the tool. This does not result in an increase in the flow rate of the polymer material as caused by the accelerator device in the example patent application.

       In addition, the "Designer's Guide to Plastic Products" also clearly states that "the effect of stress on the melt crystallization process must be fully estimated during the molding process. For example, when changes in stress reduce the crystallization temperature, During the processing, early crystallization may occur in the high-speed flowing melt, leading to an increase in flow resistance and making molding difficult". Such teaching actually suggests the negative impact of stress on high-speed flowing melt during processing. In particular, if crystallization occurs prematurely, the molten material may experience increased resistance to flow and may not properly fill the mold's molding cavity. Based on such teachings, the skilled person in the art will actually be prompted to reduce the stretching rate and shear rate for the polymer material, and to reduce the flow rate of the melt during processing, which is exactly the opposite effect of the accelerator device of the example patent application.

    It can be seen that when the examiner provides relevant evidence, it is necessary for the applicant or attorney to analyze the relevant evidence in detail and consider whether it genuinely teaches the corresponding distinguishing technical features. Such analysis is crucial and should not be overlooked in the response for inventiveness issues.

2. Determining whether the provided prior art evidence can be used as a supplement to the reference document from a timeline perspective

       For example, the following patent application relates to a telehandler, which telehandler is illustrated in the figure below. The examiner pointed out that the difference between the patent application and D1 is that "the transparent protective cover forming the roof includes multiple layers, with the multiple layers including two glass layers which define an outermost surface and an innermost surface of the cover, wherein three inner layers made of polyurethane and two made of polycarbonate alternated with each other are included between the two glass layers, wherein each layer of glass has a thickness of between two and four millimetres, wherein each layer of polycarbonate has a thickness of between twelve and eighteen millimetres, wherein each layer made of polyurethane has a thickness of between 0.5 millimetres and one millimetre, wherein said protective cover is designed to withstand an impact of an object which has a kinetic energy of greater than 11000 Joules". However, the examiner alleged that D2 discloses a similar multi-layer structure arrangement, and the specific size selection of these layers and their impact withstand are conventional technical means, and "High Speed Railway Multiple Unit" is provided as evidence to prove that the aforementioned distinguishing technical features are conventional technical means in the field.

    However, D2 only relates to an embedded glass for rail vehicles. Although it discloses a multi-layer structure arrangement similar to the present application, the enhancement of impact resistance brought by D2, from the perspective of application scenarios, is relative to traditional glass, and it does not disclose the specific degree of impact resistance that embedded glass can withstand. It is even more impossible to talk about meeting the impact requirements of objects with kinetic energy greater than 11000 joules, such as those used on cranes, by further designing the thickness of each layer of this embedded glass.

    Moreover, although "High Speed Railway Multiple Unit" does disclose that "the impact resistance of the front window glass of the cab needs to meet the impact of a 1kg aluminum projectile at 545km/h, and according to the kinetic energy theorem, the kinetic energy of the aluminum projectile is 11459 joules, which is greater than the 11000 joules required by the present application", all the design content disclosed by "High Speed Railway Multiple Unit" is specified for China's High Speed Railway Multiple Unit, which are known to have emerged after 2008, corresponding to the publication date of "High Speed Railway Multiple Unit" (i.e., 2012). However, considering that D2 was published in 1996, the so-called "rail vehicles" mentioned in it are not actually the objects involved in the design specifications of "High Speed Railway Multiple Unit". Therefore, from the perspective of the sequence of disclosure times, "High Speed Railway Multiple Unit" cannot prove that the multi-layer structure of embedded glass disclosed in D2 can meet the impact resistance requirements of objects with kinetic energy greater than 11000 joules, let alone conceivable of further designing the thickness of each layer to meet such impact resistance requirements. Therefore, there is a lack of inspiration to apply the multi-layer structure of D2 to D1 to solve the objective technical problem of how to make the transparent roof of the telehandler withstand a huge impact (e.g., the impact of objects with kinetic energy greater than 11000 joules).

    It can be seen that for a characteristic of a feature disclosed in a reference document, one should consider it from the time point of the design in that reference document, rather than understanding it from a later perspective far beyond the technical level and technical cognition at that time. Therefore, in addition to confirming whether the prior art evidence genuinely teaches the corresponding distinguishing technical features, attention should also be paid to the publication time of the prior art evidence to determine whether it can be used as a supplement to the relevant reference document.

Conclusion

       From the above two aspects, it can be seen that for the prior art evidence supplemented by the examiner, the applicant or attorney should not underestimate or ignore the analysis of the evidence itself, but should pay attention to details, make essential analysis and determination, so as to avoid various misguidances and try to explore ideas for response.