I. Understanding the Legal Framework and Rejection Basis
Article 22(4) of the Chinese Patent Law stipulates that "Practical applicability means that the invention or utility model can be made or used and can produce positive effects." In examination practice, rejections based on lack of practical applicability often focus on claims that the invention is "non-operable" or "incapable of producing positive effects." Effective responses should be anchored in the Patent Examination Guidelines, supported by relevant case law principles, and structured around a logical sequence: "Identify the Grounds – Break Down the Argument – Strengthen with Evidence."
Before drafting a response, it is crucial to precisely identify the examiner's specific objections based on the office action and any cited prior art documents, ensuring a targeted reply. Common rejection grounds generally fall into two categories, each with distinct identification points and response strategies:
1. Non-operable Technical Solution: The examiner often challenges that the "technical solution is vague," "key technical features are missing," or that it is "overly dependent on the skill level and individual variations of the operator." The core of this rejection type is questioning the "reproducibility" of the technical solution in an industrial context – i.e., whether a person skilled in the art can reliably replicate the solution based on the application documents.
2. Lack of Positive Effects: The examiner may argue that the technical solution is "clearly devoid of benefit," "fails to meet societal needs," or that its "effects cannot be verified." When responding, it is vital to distinguish between "imperfect effects" and a "complete lack of effects," avoiding being misled by the examiner's characterization of "defects."
II. Response Strategies for "Non-operability" Challenges
The core objective here is to demonstrate that "a person skilled in the art can reproduce the technical solution based on the application documents." This involves constructing a "complete technical chain" from two key aspects:
Clarity of Technical Features: Address any allegedly vague technical features. Strengthen the support within the specification. If the description lacks explicit detail, argue and provide evidence that the feature constitutes "common general knowledge" in the relevant field.
Feasibility of Implementation Principles: If challenged for "violating scientific principles," directly refute this by clarifying the underlying working principles. Cite authoritative sources such as academic papers or industry standards to substantiate the technical rationale's validity. For solutions involving emerging technologies, consider submitting third-party research institution reports on proof-of-concept to enhance persuasiveness.
III. Response Strategies for "Lack of Positive Effects" Challenges
The core concept is establishing the "predictability of beneficial effects." Positive effects refer to reasonably expected benefits, not perfect or flawless outcomes. Responses should address three dimensions to counter the examiner's logic of "negating effects based on defects":
1. Anchor the Core Value & Prove Effect Existence: Emphasize the primary technical problem solved and the core value of the invention. Demonstrate the existence of beneficial effects, clarifying that minor or secondary defects do not preclude the achievement of the primary inventive objective.
2. Substantiate Effects with Evidence: If the examiner claims "effects lack data support," provide targeted evidence. Beneficial effects can be proven through experimental data, test reports, user feedback, or logical analysis based on established principles.
3. Acknowledge and Contextualize Defects: Argue that "Defects Do Not Negate Practical Applicability." Examiners may cite the presence of defects to deny positive effects. In such cases, it is useful to reference judicial logic, such as that from the Supreme People's Court, which considers whether "the defects are so severe as to render the solution inoperable or incapable of achieving the inventive purpose." Employ a "defect tiering argument":
For "improvable minor defects," explain that these can be addressed through subsequent optimization and that the current solution already meets basic operational needs.
For "trade-off defects coexisting with benefits," emphasize the core value of the invention (e.g., significant accuracy improvement) and position the drawback (e.g., slower speed) as an acceptable trade-off that aligns with the requirements of specific application scenarios.
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