Article 26.4 of the Patent Law of the People’s Republic of China provides that “the claims shall clearly and concisely state the requested patent protection scope in accordance with the written description.” It can be seen from this provision that claims are used to determine the scope of the exclusive rights to the patent, so that the public can clearly know what acts would infringe upon the patent rights of others. The claims are of great significance for the determination of patent grant and protection because they state the protection scope the applicant seeks for and the scope the State agrees to grant and protect. Therefore, the claims are very important in terms of patent grant and patent rights protection.

 

However, the applicant frequently receives office actions before the grant of patent that there are some defects of unclearness in his claims because of his unfamiliarity with the relevant provisions of patent application, personal drafting habits or other reasons. Due to such unfamiliarity, many defects of unclearness failed to be solved timely and effectively, may lead to more serious problems of exceeding the scope he should have applied for, which would adversely affect the progress of patent application and the possibility of grant. In order to correct such defects, the authors intend to give some referential solutions for the applicant and the examiner by drawing lessons from some cases and in accordance with the Guidelines for Patent Examination (Guidelines) and the Operating Procedures for Patent Examination (Procedures).

 

The 2010 Guidelines (Section 3.2.2, Chapter II, Part II) indicates that “The requirement that the claims shall be clear means, on the one hand, individual claims shall be clear and on the other hand, the claims as a whole shall be clear as well.” It also expounds on the types of claims, the extent of protection, the references, and so forth.

 

Under the Substantial Review of the 2010 Procedures (Section 3, Chapter II), “according to the 2010 Guidelines (Section 3.2.2, Chapter II, Part II), the requirement that the claims shall be clear means the category of each claim shall be clear, the extent of protection as defined by each claim shall be clear, and on the other hand, the claims as a whole shall be clear as well. The clearness of the claims shall be technically viewed from the perspective of a person skilled in the art.” The Procedures also cites some cases for the analysis and explanation from the perspective of subject matters, terms, punctuation, sentences, etc.

 

Therefore, both the Guidelines and the Procedures set some guidance and specifics on and make explanation of the claim in terms of subject matters, words, the claim as a whole, and other conditions. The clearness of the claim shall be judged and analyzed by a person skilled in the art from the perspective of technology. However, there are some differences in the actual operation in terms of such judgement.

 

Now, the authors want to make some analysis with reference to some cases.

 

Claim 1 relates to a hybrid burner wherein “said premixing baffle is folded in a ‘ ’ shape.” The examiner make his observations in the Office Action that the drawing ‘ ’ included in claim 1 is not clear. In this regard, the authors think it can be analyzed in the following:

 

Firstly, the applicant should know the relevant provisions of the Guidelines. Section 3.3 of the Guidelines stipulates that the claims may contain chemical formulae or mathematical formulae but shall not refer to drawings. Unless absolutely necessary, the claims shall not contain such expressions as “as set forth in the written description,” or “as shown in the drawings...,” or the like. The situation “absolutely necessary” means the situation where a specific shape involved in an invention or utility model cannot be defined with words but only by drawings, in which case the phrase “as shown in drawing...” or the like can be used in the claims. It can be seen from the Guidelines and Procedures that the drawings are not completely prohibited from being used in the claim, and it can be interpreted as that drawings may be used if it is difficult for words or mathematical formulae to clearly define the technical features which are necessary to the claim.

 

Secondly, the claim with drawings to define its technical features should be analyzed from the perspective of a person skilled in the art. The claim should be deemed as clear where the lines or shapes of the drawings itself is so clear that the person in the art can understand the information it intends to define. Furthermore, it is suggested that the words should be used for the specification of the drawing where there are words in the claim to define the characteristics of the shape.

 

In response to the Office Action in Case One, the applicant may argue that the claim is clear on the grounds that the line of the drawings is clear and simple to some extent, that the meaning it intends to define is relatively clear, and that such baffle can be found in quantity in the art. Thus, the applicant may explain the particular meaning of the drawing as a whole in combination with the technical solution of the claim by way of the normal meaning of the drawings in the art.

 

Claim 1 relates to a continuous mixer in needle-guard shape with high efficiency, having a stirrer gear with two angles, the one under 90 degrees being between a stirring surface which is connected with the outer circumferential edge of inner discoid needle guard and said edge, and the other over 90 degrees being between the other stirring surface which is connected with the outer circumferential edge of inner discoid needle guard. The specification includes a drawing showing the two angles as follows:

 

Figure 1 Angle α and β

 

The examiner makes his observations in the Office Action that the above-mentioned definitions of the two angles are unclear, that it can be seen from the drawing that the stirring surface and circumferential edge is curved, that it is unclear where the concrete place of the edge for the definition of the angles on the arc is, and that there is no clear definition of the angles as a result.

 

In this case, the claim in the case has to be deleted because of the incurable defects in the specification where the written description fails to describe the angles in clear terms, nor does the illustrative figures in the drawing unequivocally denote the location of the angles. This kind of defects, generally, is hard to correct by amendments or statements, and any amendment may result in exceeding the scope. Therefore, the applicant should do his best to avoid similar mistakes in claim. Otherwise, there may be no grant of patent.

 

Claim 1 relates to a process for manufacturing printed circuit board with high frequency and mixed pressure. Its dependent claim 4 involves a “high TG program,” which is neither defined in the original written description, nor has corresponding definition in the pertinent field of art. The examiner makes his observations in the Office Action that the meaning of the program is unclear. The applicant should be sure whether there is clear definition or explanation in the claim. Otherwise, he had better introduce the corresponding content into the claim. If there is no such corresponding content to be introduced, he should look for explanation or definition in the art. He may cite technical works, several patent documents and other evidences to prove the universality and clarity of the technical terms.

 

The defects in case three cannot be overcome through amendment or argument because there is neither a definition or an explanation for the so-called “high TG program” in the written description, nor is it a commonly understood term of art in the pertinent field. However, since it is a dependent claim, the defect can be avoided by deleting the claim from the application.

 

Case four

Claim 1 relates to an electrophoretic & electroplating apparatus with an element of electrode structure of the substrate being a structure with a plurality of side electrodes.

 

The examiner makes his observations in the Office Action that the claim is unclear because the electrodes are used in pairs; the electrodes in electroplating apparatus are generally positive and negative electrodes whereas claim 1 defines multiple electrodes leading to unclearness.

 

The defect of unclearness in this case is not quite apparent. Such unclearness cannot be identified if there is no analysis on the basis of common sense and such defect cannot be overcome through observation. Generally, there are two electrode structures in conventional electroplating apparatus. The claim runs counter to the common knowledge in the art. Therefore, the word of “plurality” must be modified in order to avoid unclearness. If there is certain number in the written description or the preferred embodiment, the word of “plurality” may be changed correspondingly; if, however, the number is not recorded in the written description, it has to be ascertained based on the written description in combination with general knowledge in the field of art for amendment..

 

In the present case, fortunately, the preferred embodiment did indicate that the substrate is composed of two side electrode structures, and the drawings did show the composition of two electrode structures. Therefore, the applicant should modify the word “plurality” into specific numbers.

 

It can be seen from the above cases that avoiding unclearness in the claim requires first of all a clear understanding of relevant provisions of the Guidelines and Procedures so that he may avoid such unclearness. Secondly, any existing defects of unclearness in the claims should be evaluated from the perspective of a person skilled in the art by making statements or, if necessary, by making amendments or arguments with evidence. Moreover, practical analysis of different cases must be made while taking consideration of the pertinent art and the actual situation when the claims are drafted in order to avoid further complications of exceeding the range of disclosure in the written description. Claim unclearness is a frequent defect in the application/examination process, of many different types, and mostly in connection with the technical problems in the pertinent art. It is for this reason a question for which the applicant is most eager to find an answer in straighten out the unclearness. The authors have following suggestions to offer in this regard.

 

1.       Amending the claim

This is very useful where there is a simple unclearness and is used by the applicant as his first card. It is mainly for the correction of the following defects: (1) indefinite preamble in the claim or inconsistency of the preamble with the technical field; (2) claim element lacking precedential support, or inconsistency in the elements; (3) claim elements expressed in reference to drawings or symbols; (4) claim language in vague terms such as “about,” “approximate,” etc. For example, claim 1 claims “a bio-diesel and a method preparing the same,” which is typical indefinite preamble. This defect may be cured, depending on the subject matter being “a composition of bio-diesel” or “a method of preparing bio-diesel.”

 

Section 5.1, Chapter VIII of the Guidelines stipulates that “the response of the applicant may include the observations only; the revised application documents (replacement sheet and/or rectification) may be also included.” That is to say, observation may be used where some defects can be overcome because they can be accepted by the examiner after being observed and explained by exploitation of common sense in the art. It is often used where the technical term or the unit in the claim is not generally used in the art, and there is no certain statement in the description. Such defects mainly includes: (a) the comma in the claim having the meaning of “and/or” in face of plural selection; (b) the unclear mass or volume in terms of percentage content, composition ratio, and the like in the claim; (c) the technical terms in the claim which are not generally used. It is not convenient to amend the defects in the claim because there is no generally accepted writing method for the description. If there is a conventional practice or optimal provision in the art, such defects can be explained by observation. For example, Claim One defines the ratio among nitrate, sulfate and deionized water a solution preparation is 1:2:10. If the examiner has doubt on the unclearness of the ratio, he may makes his observations in the Office Action that it has been a general practice of using the mass ratio in the art for such salt solution and the applicant need not amend the claim.

 

Some applicants may use wrong word or abnormal spelling because of his habit or mistakes. These defects can be corrected through observations and evidence. It should be noted that such amendment should assure that there is a sole amendment direction and there should be no such amendment if the content of the description can be identified directly and unambiguously.

 

In the example of claim 1, “A process for the extracting Al0 from the fly ash” for example, Al0 was wrongly spelled as Al203 and leads to unclearness which should be pointed out by the examiner. The applicant may submit observations and proofs showing that Al0 was wrongly spelled by him because of his bad habit which is shared by aged technicians, that such wrong spelling could also be traced in the early publications, and that he intends to apply for the patent of the process extracting Aluminum oxide from fly ash. Finally, the applicant was permitted to change A10 into A1203 in the claim.

 

There are many materials to be submitted as evidence, including the contents recorded in textbooks, appearing in journals, documents, technical books, patent documents, etc. Furthermore, the basis for citation should be submitted as evidence if the cited patent document has a record of the meaning of the term.

 

The examiner often makes his observations in the Office Action that there is indefiniteness where there is a product name or product model in the claim. Generally speaking, it is unnecessary to amend the claim under such circumstance. What the applicant needs to do is to just submit observation and incorporate evidence by reference to the product name or model is sole and can be easily gotten by the person skilled in the art. There are few defects in this regard. However, the applicant often withdraws his application or makes an amendment that exceeds the scope because he does not know how to modify the claim.

 

For example, claim 1 claims an apparatus of rapid self-detecting formaldehyde thermal desorption, and there is a vague description of formaldehyde measuring tube with proportional high accuracy. In response, the applicant submitted observation, cited examples that foreign counterparts have already produced several kinds of formaldehyde measuring tubes with proportional high accuracy in quantity, that there were some products in this regard for sale. The applicant also submitted some product manuals from the sellers. Of course, the examiner accepted the observations and proofs in the end.

 

To sum up, there are many factors that cause indefiniteness in the claims, including the subjective reasons of the applicant, and other special factors in different technical field, appearing in various forms. The direct consequence of the defect in the claim makes it impossible for the person skilled in the art to clearly and exactly understand and determine the technical solution and content as claimed, therefore unable to determine the scope of protection the claim intends to define. Based on the analysis of several cases and combined with the provisions of Guidelines and Procedures, the authors, from the perspective of examination, summarizes several recommendations and practices for applicants, agents and examiners as references. In this way, the disputes resulting from unclearness in claim in patent examination may be decreased, so the examination resource saved and efficiency improved.