Patent practitioners frequently encounter scenarios where examiners reject claims by asserting that specific technical features constitute "common technical means in the field," thereby negating inventiveness. Drawing from successful response cases, this article shares insights on addressing such objections.
I. Case Overview
The inventive concept of the application lies in configuring a protective cover as a framework + skin structure. While this innovation was emphasized during the first office action response, the examiner dismissed it as "a conventional approach in the field."
In the second response, the strategy shifted to identifying distinctive technical features from the cited prior art (Comparison Documents 1 and 2). These distinctions were systematically linked to refute the examiner’s assertion of conventionality.
II. Distinctive Technical Feature 1: Framework + Skin Structure
Neither Comparison Document 1 nor 2 discloses a protective cover combining a framework and skin. However, the examiner maintained this was "common knowledge." To counter this:
1. Analysis of Comparison Document 2
o The core innovation of Document 2 lies in its grouting hole 6, which requires precise alignment with the casing grouting port (see [0013], [0015], and [0017] of Document 2).
o The grouting hole is positioned on the main protective cover (1). To accommodate this feature, Document 2’s protective cover cannot adopt a framework structure as claimed in the application.
§ The framework in the application comprises a rectangular/circular base frame (15) with interstitial gaps, which inherently lacks the structural integrity to support a grouting hole.
§ Document 2’s solution necessitates a 3–5 mm thin-walled sheet metal structure to ensure grouting hole strength, directly contradicting the lightweight framework-skin configuration claimed in the application.
2. Technical Implications
o Document 2’s emphasis on grouting hole integrity provides a teaching away from the framework-skin structure.
o Neither Document 1 nor 2 suggests using a framework-skin configuration, rendering the examiner’s "common technical means" assertion untenable.
III. Distinctive Technical Feature 2: Construction Sequence
The application’s construction sequence differs fundamentally from Document 1:
· Application: Align the hammer’s vertical axis with the steel casing center before installing the protective cover.
· Document 1: Install the dust cover first, then position the hammer and drill rod.
Technical Effects
· Document 1’s sequence inherently prevents alignment verification, failing to achieve the dual benefits of mud splash prevention and improved drilling accuracy claimed in the application.
· The examiner dismissed this distinction as "basic drilling knowledge," but this overlooks the causal link between the framework-skin structure and the novel construction sequence.
IV. Synergistic Argumentation
By connecting Distinctive Features 1 and 2, the rebuttal demonstrates non-obviousness:
1. Document 2’s grouting hole requirement precludes adopting a framework-skin structure.
2. The lightweight framework-skin design enables manual relocation via handles (vs. Document 1’s crane-dependent installation), preserving alignment integrity.
3. Even if combining Documents 1 and 2, a skilled artisan would not arrive at the claimed solution due to these technical contradictions.
V. Response Strategy
When facing "common technical means" objections:
1. Analyze cited prior art to identify teachings that discourage the claimed feature.
2. Interlink multiple distinctions (e.g., structure + process) to amplify non-conventionality.
3. Highlight causal relationships between features (e.g., structural design enabling novel workflows).
This approach strengthens the case by demonstrating that the "conventional means" assertion lacks technical basis in light of the cited references.
Conclusion
A targeted analysis of prior art teachings, coupled with logical integration of technical distinctions, effectively counters superficial "common knowledge" rejections. Patent practitioners should leverage the inherent contradictions in cited documents to establish inventive step persuasively.
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