A Few Explanatory Roles of the Specification on the Amended Features when Amending Claims in Responding to OA
date: 2024-04-30 Xiufeng Ji Read by:

During the OA response process, the patent agent needs to conduct a detailed analysis and response to the issues raised by the examiner, at the same time, make appropriate amendments to the claims to overcome the deficiencies indicated by the examiner. This article explores the strategies and precautions for amending claims when responding to OA through a specific case.

Case details

1st OA

Claim 1 relates to an inkjet ink composition, and in the OA1, the examiner indicated that all the claims lack inventive steps. To overcome this issue, the agent added the features from the specification into claim 1, namely the content range of the surfactants and the content range of the silicone based surfactants in the inkjet ink composition.

2nd OA

In the OA2, the examiner once again indicated that all the claims lack inventive step. The examiner, by Reference 1 and Reference 2, indicated that the prior art has already disclosed ranges similar to the surfactant content ranges of the claim 1.


Examiner’s comments

The claim 1 after responding to the 1st OA describes that "the content of the surfactants in the inkjet ink composition is equal to or more than 0.1% by mass and equal to or less than 1.5% by mass relative to the total amount of the inkjet ink composition", the total content of the surfactants described in Reference 1 is equal to or more than 2.0% by mass, furthermore, the amended claim 1 can achieve good effects on both scratch resistance and color rendering property that are difficult to be balanced, the References do not give any teaching, so the examiner's comments seem unreasonable.

Consideration of amendment basis

When facing the challenge of the 2nd OA, the agent continued to delve deeper into the differences between the solutions in the specification of the present application and the References. In this case, the specification mentions that inkjet ink composition could contain various surfactants (silicone based surfactants, anionic surfactants, and other surfactants), and there are specific preferred values for the content ranges. And according to the description of the specification, the silicone based surfactants are essential, while the anionic surfactants and the other surfactants are optional. In addition, these different surfactants bring different technical effects.

Amendment strategy

When responding to the 2nd OA, the agent adopted a more detailed amendment strategy. Firstly, it is clearly defined that the inkjet ink composition can also contain anionic surfactants and/or other surfactants other than the silicone based surfactants and the anionic surfactants. Secondly, for cases containing these other surfactants, their content range has been further limited. Such amendments not only solve the obviousness problem indicated by the examiner, but also more accurately express the technical solution of the invention.


In summary, when amending the claims in the OA response process, the following points should be noted.

Firstly, accurate understanding of the technical solution: It is necessary to understand the technical solution combining the entire text, rather than relying solely on a part of the text. For example, in the above example, although the specification describes the content proportion of surfactants, but it does not specify the type of surfactants. It is necessary to determine the content proportion of each type of surfactants respectively in combination with different parts of the specification. Only based on this can the claims be amended in accordance with the technical solution of the present application.

Secondly, accurately understand the examiner's intention: When amending the claims, it is necessary to accurately grasp the true meaning of the examiner’s comments and ensure that the amendments can address the issues raised by the examiner contrapuntally. For example, in the above example, although the content range of surfactants disclosed in the Reference is different from that of the technical solution of the present application, the examiner still commented on the inventive steps of the claims of the present application. It is obviously inappropriate to argue that the claims of the present application possess the inventive step just for different content ranges. At this point, it is necessary to examine whether the surfactants in the Reference and the surfactants in the present application are similar, whether they bring similar technical effects, and whether their content range differences can bring different technical effects.

Thirdly, pay attention to the cumulative effect of amendments: Sometimes, instead of making minor amendments every time you respond to the OA, it is better to make sufficient amendments when responding to the 1st OA, so as to distinguish from the Reference. This can avoid the examiner focusing only on the amendments of each time, leading the examiner to ignore the distinctions between the overall solution and the References. This helps to ultimately overcome the examiner’s comments and can also reduce the frequency of OA.

By applying the above strategies and precautions, patent agent can more effectively respond to OA and improve the success rate of an invention patent application. In practice, each case has its own uniqueness, and the agent needs to flexibly apply these principles according to specific situations to ensure the quality and effectiveness of the claims.