Hui Hu | Feb 26, 2017

Abstract: This paper introduces the application of schematic diagrams in response to the inventiveness of chemical patent. The inventiveness and process principle can be clearly and concisely expressed by reasonably using the schematic diagram.
Keyword: schematic diagram

Introduction
According to the provisions of Article 22.3 of the Patent Law, inventiveness means that, as compared with the prior art, the invention has prominent substantive features and represents a notable progress, and that the utility model has substantive features and represents progress.

The judgment of prominent substantive features and notable progress has been introduced in detail on pages 118-120 of the Guidelines for Patent Examination (2010). Therefore, when responding to the office action relating to the Article 22.3, experienced chemical patent attorneys are able to expertly use the three-step method to determine whether the technical solutions described in the claims have prominent substantive features over the prior art, and also can determine whether the present invention represents a notable progress according to the experimental data recorded in the description, as compared with the prior art.

It often occurs in the actual examination that, firstly, the examiner searches a closest reference document 1 and makes a subtraction between the technical solutions described in the claim and reference document 1 to obtain the distinguishing technical features between both and determine the technical problems to be solved by the present invention. Next, the examiner searches the other reference documents which recite the distinguishing technical features and goes on discussing them. Therefore, the examiner determines that the technical solution required for protection in the claim can be easily reached by combining reference documents, and the claim does not involve an inventive step.

However, regarding the examiner.chemical patent, especially the patent of formulation, since the formulation is an indivisible entirety and there is a synergistic effect between the components, how to express the integrity and synergistic effect often becomes the core part of allowance. In the response process, it is necessary to clarify the principles to eliminate the misunderstanding and prejudice of the examiner.

1. Example of application of schematic diagram
For invention with application number: 2014102984518; applicant: Guangzhou LESCO-KINGFA WPC Technology Co., Ltd; title of invention: compositing process for PVC wood-plastic product and long-fiber reinforced thermoplastic sheet,, the examiner pointed out in the first office action that (for length considerations, some of the contents are omitted and replaced with ellipsis):

comparing the technical solution claimed in this claim with the technical contents disclosed in the reference document 1, the distinguishing technical features are that:

(1) the chlorinated polyolefin in the present application is a chlorinated polypropylene solution;…Therefore, it is obvious to a person skilled in the art to obtain the technical solution for which protection is sought in the claim on the basis of reference document 1 in combination with reference document 2 and the common knowledge in the art.

This office action reflects a typical examination routine of chemical patent. First, the examiner determines a closest prior art, i.e., reference document 1, and makes a subtraction between the technical solutions described in claim 1 and reference document 1 to obtain the distinguishing technical features and determine the technical problems to be solved by the present invention. Next, the examiner searches the other reference documents which recite the distinguishing technical features and combines various reference documents to obtain the technical solutions described in claim 1. Therefore, the examiner believes claim 1 does not involve an inventive step. Then, the examiner goes no discussing other dependent claims which are all common choices for a person skilled in the art, and thus they all involve no inventive steps. The strategy adopted by the patent attorney is that, the patent attorney explains the formulation as a whole technical solution and emphasizes the synergistic effect between the components by actively using the schematic diagram, to change the prejudice and misunderstanding of the examiner.

Specifically, the patent attorney mentioned in the observation that (for length considerations, some of the contents are omitted and replaced with ellipsis):
comparing the amended claim 1 with reference document 1, the distinguishing technical features are:
1) the long fiber reinforced thermoplastic sheet is subjected to a surface flame treatment;
2）……
3）……

Regarding the above distinguishing technical features: in the first step, the long fiber reinforced thermoplastic sheet is subjected to a surface flame treatment. Flame treatment can make the weak polar surface of the sheet and the oxygen in the air, other active gases (such as water vapor) have a strong oxidation-reduction reaction. Thus, the polar groups, such as –OH are connected to the surface of the sheet. The visual expression is provided as follows:



Namely, the purpose of the surface flame treatment is to connect the polar groups to the surface of the long fiber reinforced thermoplastics sheet.

In the second step: the surface of the sheet is sprayed with a compatibilizer and dried. The components of the compatibilizer are: 30-45 parts of bisphenol A type epoxy resin, 20-40 parts of 203 polyamide, 8-11 parts of diethylenetriamine, 0.3-3 parts of 2,4,6-tris (dimethylaminomethyl) phenol, 1-5 parts of coupling agent, 10-30 parts of chlorinated polypropylene solution, and 50-60 parts of xylene.

Under the combined action of the amine curing agent, such as 203 polyamide and diethylenetriamine, and curing accelerator, such as 2,4,6-tris (dimethylaminomethyl) phenol, first, the epoxy group of bisphenol A epoxy resin has a ring-opening reaction to generate –OH, then, on one hand, the bisphenol A epoxy resin has a cross-linking reaction to form a three-dimensional cross-linked network, and on the other hand, reacts with –OH on the sheet, which is equivalent to anchoring the epoxy cured material on the surface of the sheet subjected to the surface flame treatment;….

Reference document 1 and reference document 2 do not provide a technical motivation relating to the technical solution of the present application. In particular, the activation of the surface of the plastic sheet by the compatibilizer and the synergistic effect among the various components cannot be obtained from reference documents 1-2 which have no technical teachings. The overall technical solution is to solve a specific technical problem, which is not common knowledge to a person skilled in the art. Therefore, the technical solution of claim 1 is non-obvious, as compared with combination of reference documents 1-2 and common knowledge.
,,,,,,
In this response, the patent attorney made full use of the schematic diagram to fully explain the principle, discussed the formulation as a whole technical solution, and emphasized the synergistic effect amongthe components to eliminate the technical prejudice and misunderstanding of the examiner and successfully made the invention allowed.

2. Conclusion
In the response to the inventiveness of chemical patents, the schematic diagram can intuitively and clearly help the examiner understand the technical solutions deeply, to eliminate the prejudice and misunderstanding, which is advantageous for the patent allowance.