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Features Easily Ignored in Responses to An Office Action Regarding the Novelty/Obviousness of a Method Claim in the Field of Chemistry
date: 2013-04-09Yugui Wang

Abstract: This article discusses technical features that are easily ignored in responses to an office action regarding novelty/obviousness of a method claim in the field of chemistry. The analysis of two cases is an attempt to provide patent applicants or agents with a problem-solving approach when responding to such an office action.

Key words: chemistry field, method claim, technical features easily ignored, response to an office action regarding novelty/obviousness

1. Introduction

Regarding the method claim, Section 3.2.2 under the Chapter 2 of Part 2 of the Patent Examination Guidelines (2010 Edition) provides that "a method claim is applicable to a method invention and is usually described by technical features such as technological processes, operating conditions, steps or processes, etc." 1 .

In addition, Section 4.4 under Chapter 10 of Part 2 of the Patent Examination Guidelines provides for the method claim in the field of chemistry stating that "a claim to an invention method in the chemistry field, whether it is a method for preparing a substance or for other purposes (such as using, processing or disposing of a substance), can be defined by features such as technical processing, substances and apparatus involved. Technical processing includes the processing steps (or reaction steps) and processing conditions, such as temperature, pressure, time, catalysts or other promoters needed in each processing step;..." 1.

In practice, examiners often ignore the feature of "during...... (in the process of...)" and view the method claim under application as lacking novelty/obviousness compared with that in the cited reference. If the applicant or agent doesn't have a good grasp of the feature of "during......(in the process of...)", which constitutes the essential difference between the method claim and the cited reference, the applicant or agent are likely to be influenced by examiners' opinion and amend the method claim. Under such circumstances, the protecting scope of the patent application is likely to be narrowed, which will harm the applicant's benefits, or delay the examination process, which will affect the timely patent granting.
The author provides two cases to analyze technical features that are easily ignored in responses to the office action regarding novelty/obviousness of a method claim in the chemistry field in order to provide patent applicants or agents with a problem-solving approach when responding to the office actions, help protect the benefits of patent applicants and expedite the patent-granting process.

 

2. Case Analyses

Case 1:
[Relevant Facts]
Claim 1: A method of manufacturing a single-wall carbon nanotube heterojunction in which a semiconductive single-wall carbon nanotube and a metallic single-wall carbon nanotube are joined with each other in a longitudinal direction thereof, wherein a defect is introduced during growth of a single-wall carbon nanotube and induce a chirality change during growth of a single-wall carbon nanotube.

After examination, the examiner believes that the method in Claim 1 is anticipated by Reference 1. Specifically, the examiner indicates that Reference 1 discloses the following features: a carbon nanotube 10 has lattice structures 30a, 30b, 30c; the modified lattice structure 30c is metallic, and the lattice structure 30c and the lattice structures 30a, 30b are joined with each other in a longitudinal direction thereof. The transformation in chirality is achieved by changing the orientation of the lattice so as to make the changed orientation different from the initial orientation. Reference 1 discloses all the technical features defined in Claim 1.

The author proposes to respond to the office action by arguing on the basis of the substance and improvement of the method of the present application. For example, it is concluded from the disclosure of the Description of the present application "a chirality change is induced during the growth of one single-wall carbon nanotube by introducing a defect during the growth of the single-wall carbon nanotubes and introducing a five-membered ring or a seven-membered ring in a six-membered ring structure of the graphene sheet, it is possible to realize a single-wall carbon nanotube heterojunction in which a semiconductive single-wall carbon nanotube and a metallic single-wall carbon nanotube are joined with each other in a longitudinal direction thereof" that the key of the technical solution of the present invention, or the substance and improvement of the present application is to introduce a defect during the growth of the single-wall carbon nanotubes and induce a chirality change, to form a single-wall carbon nanotube heterojunction in which a semiconductive single-wall carbon nanotube and a metallic single-wall carbon nanotube are joined with each other in a longitudinal direction thereof, thereby fundamentally solve the problem of the deterioration in the characteristic of the single-wall carbon nanotube FET due to mixing of the metallic single-wall carbon nanotubes in the semiconductive single-wall carbon nanotubes and realize a single-wall carbon nanotube FET having satisfactory characteristics such as an on/off ratio.

It can be seen from the disclosures in Reference 1 that the chiral changes of the carbon nanotube occur after the nanotube is formed rather than in the process of the nanotube's growth. If the applicant or agent can grasp this distinguishing feature, he/she can argue that the method of Claim 1 is different from the method of Reference 1. Besides, the applicant or agent can also argue that the technical solution of the present application is different form that of Reference 1 based on the following viewpoint, that is, the person skilled in the art knows that since the growth is quite short, it often functions to induce a chirality change and the transformation in chirality is mainly performed and completed after the growth. That is to say, the present application adopts the technical solution which differs from the prior art.

As shown in Case 1, if the applicant or agent stick to the technical features of "during....." that is easily ignored in responses to an office action, thereby argue that the chiral changes of the nanotube do not occur during the growth of the nanotube but after the nanotube is formed, while the technical solution of the present application is to introduce defects and induce chiral changes during the growth of the single-wall carbon nanotubes, thus the technical solution defined in Claim 1 is different from that of Reference 1.

From the response of Case 1, the author suggests that, when arguing for the novelty/obviousness of a method claim, the applicant or agent needs to thoroughly consider the technical problem and technical solution adopted to solve it, and to prove the examiner's conclusion is wrong on the basis of the substance and improvement of the method of the present application and according to the analyses of the contents disclosed in the cited reference and the common general knowledge in the field.

Furthermore, in another example, Case 2 includes the technical feature of "during......(in the process of......)" in a method claim in the chemistry field, and further explains the details in a method claim that the applicants and agents need to pay attention to while responding to such office actions.

 

Case 2
[Relevant Facts]
Claim 1: A method comprising reacting a starting material and oxygen in the present of a heterogeneous catalyst and p-xylene as solvent to produce a solution of terephthalic acid without formation of solid terephtehalic acid during the reaction, wherein the starting material is p-xylene, p-toluic acid, 4-carboxybenzaldehyde, or a mixture of two or more therof.

After substantial examinations, the examiner believes that Claim 1 of the present application is anticipated by Reference 1. The examiner points out that, as described in the method of Reference 1, p-xylene serves as a reaction reagent and reaction solvent. In addition, from the solubility of terephthalic acid in P-xylene indicated in Reference 1, it can be seen that terephthalic acid is not precipitated in a solid form but in a dissolved state during the reaction process in Reference 1.

Similar to the analysis of Case 1, the applicant or agent can argue on the basis of the substance and improvement of the method of the present application and the technical solution to be solved the problem. For example, the applicant or agent can argue as follows: the technical problem to be solved by the method of the present application is to remain the TPA produced during the reaction in the solution, and therefore 4-CBA is not trapped in the generated TPA. As shown in Table 1 of Document 1, the yield of TPA separated from the reaction of paraxylene and chromium supported catalysts at 138°C is 5%. It is generally known to the person skilled in the art that TPA generated at 138°C with a 5% yield will not be retained in solution but will be solid, which is exactly what the method of the present application tries to prevent from happening. Claim 1 of the present application describes the method as "A method comprising reacting a starting material and oxygen in the present of a heterogeneous catalyst and p-xylene as solvent to produce a solution of terephthalic acid without formation of solid terephtehalic acid during the reaction", which is the specific requirement that makes the application different from the existing technology. The generated product can be prevented from precipitating in the solution through the method of the present application. In other words, the application is aimed to keep the TPA in the solution during the reaction. However, Reference 1 lists in Table 1 only the final yield of TPA after the reaction without discussing the state of TPA during the reaction.

Besides, the present application can be differentiated from Reference 1 because the method of the present application ensures TPA is retained in solution with an aim to minimize the generation of by-products. When other methods are applied, by-products will be crystallized together with TPA. Reference 1 fails to disclose the above features. Since Reference 1 fails to describe the state of TPA during the reaction and the phase behavior of TPA in paraxylene is not recorded in Reference 1, the person skilled in the art can't know that the TPA is in the state of solution during the reaction based on the disclosure in Reference 1. However, Claim 1 of the present application clearly discloses a technical solution, which is to produce a solution of terephthalic acid without formation of solid terephtehalic acid during the reaction.

As it can be seen in Case 2, when arguing for the novelty/obviousness of a method claim, the applicant or agent should also thoroughly consider technical problems and technical solutions adopted to solve them, and prove the examiner's conclusion is wrong by analyzing the contents disclosed in the Reference and the common general knowledge in the field. As shown in Case 2, when responding to the office action, the applicant or agent sticks to the point that Reference 1 fails to discuss the state of TPA during the reaction and provides in Table 1 only the final yield of TPA after the reaction is completed. In addition, it is generally known to the person skilled in the art that, according to the existing technology, TPA generated with a yield of 5% at 138°C will not be in the state of solution but will be solid. However, Claim 1 of the application clearly defines that it is a method of "produce a solution of terephthalic acid without formation of solid terephtehalic acid during the reaction", which specifies that the TPA is kept in the state of solution without generating solid TPA during the reaction. Thus, the method of the present application can be differentiated from that in Reference 1.

 

3. Conclusion

Based on Case 1 and Case 2, the author suggests that, when responding to office actions regarding the novelty and obviousness of method claims that include the technical feature of "during......( in the process of......)", the applicant or agent should fully understand the technical problem and technical solution adopted to solve it, and prove the examiner's conclusion is wrong by analyzing the substance and improvement of the method of the present application and the contents disclosed in the cited reference and the common general knowledge in the field. Meanwhile, when responding to an office action for his/her client, an agent should pay attention to the feature of "during......" in the method claim and check the cited reference so that technical solutions described therein are also processed or achieved through the technical feature of "during......". In practice, the technical solution in the cited reference provided by the examiner is usually not processed or achieved through the technical feature of "during......", thus, when reading the application and the cited reference, the agent should watch out for the technical feature of "during......", which may allow him to focus the difference between the present application and the cited reference more quickly and make powerful argument in response. In addition, the applicant or agent will also avoid wasting time and making unnecessary amendments to the method claim, maximizing the benefits of the applicant or expediting the patent-granting process, if the difference between the application and the cited reference can be determined promptly through the technical feature of "during......"
The author suggests that, in practice, when arguing for the novelty/obviousness of a method claim, the applicant or agent should pay special attention to technical features that are easily ignored. Sometimes, a solution may be significantly changed by changing only one or two words, and the same is true in patent examinations and arguments. It can be concluded from the above that, when analyzing differences between the method claim of the application and the cited reference, the applicant or agent should have a good grasp of the real meaning of each technical feature in the method claim so as to provide powerful support for the argument in response.

This article simply provides some practical experience of the author, which only serves for soliciting more valued opinions of others. Please kindly propose for corrections if there's anything wrong in the article.

Reference
1. Patent Examination Guidelines, Intellectual Property Publishing House, 2011

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