Translation Errors and Issues Rejections to Specification/claims because the Examiner

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2. Translation Errors and Issues • Rejections to Specification/claims because the Examiner • cannot understand the translation clearly. • Errors may be corrected when the PCT national stage is still • pending, however, bad translation raises the cost of prosecution. • Indefiniteness Rejections • Antecedent basis: “a” and “the” • Inconsistence throughout the specification/claims • a Chinese word may be translated to different • English words. • Use “may” rather than “will,” “should,” and “do(es).” • Use the phrase “this invention.” • avoid future tense in application. • avoid “consisting of” • Best to ask a US attorney/specialist to review the translation.

3. Drafting Errors and Issues • Specification Issues: • Enablement/written description • Especially problematic for utility model patents • Best mode required in US. • Fail to describe figures separately • “as shown in Figs. 1 to 6...” • Fail to label the Figs. with proper numbers and fail to use • the numbers consistently throughout the specification. • Often labels only appear in one figure. • The specification often fail to cite the numbers in Figures • Background sometimes is too long. • Too much detail in describing prior art. • US patent applications do not want to define the prior • art with too much detail, this could lead to estoppel/inventor’s • admission issues.

4. Drafting Errors and Issues • Too much detail in Summary part. • In US, Summary can be just a general description, • plus one independent claim and a few dependent claims. • Too little detail in Specification and Figures. • In US, claims can rely on anything in the specification • and features in the figures (even the feature is not described in • the specification.) • Features: A, B, C, D, E, F, G, H described anywhere • in the specification, summary, detailed description, figures • then claims may be any combination of A-H. • Detailed specification may provide multiple fall back • positions. Often the patentable feature may not necessarily • be a major feature. • Too few claims. • 20 claims are allowed in US. • should include more dependent claims as fall back positions.

5. Drafting Errors and Issues • Multiple dependent claims. • In US, allowed but require extra fees. • In US, claim language does not have to be identical to the • specification. The standard is the understanding of “one of ordinary • skill in the art.” • Often ignore continuous applications. • Often ignore method claims.

6. Response to Obviousness Rejections • Claim: features A, B and C. • Rejection: Reference 1 teaches A and B, reference 2 teaches • C; one of ordinary skill in the art would combine 1 and 2. • Rebuttal arguments: • Challenge that 1 and 2 teach all the limitations. • Challenge that one skilled in the art would combine 1 and 2. • Argue that 1 or 2 teach away the combination of 1 and 2. • Argue that the claimed invention yields unexpected results.

7. Response to Obviousness Rejections • Claim: features A, B and C. • Rejection: Reference 1 teaches A, B and D, reference 2 teaches • C and C is a simple substitute for D, therefore one of skilled in • the art would have substituted C with D. • Rebuttal arguments: • Argue one would not substitute because the result is not • predictable. • Argue one would not have combined 1 and 2.

8. Response to Obviousness Rejections • Claim: features A, B and C. • Rejection: Reference 1 teaches a similar device as claimed, • reference 2 teaches a comparable device that improved in the same • way as the claimed invention; and one of ordinary skill in the art • would have applied the improvement. • Rebuttal arguments: • Argue that Office Action err in making the statement. • Argue that the skill required to apply the improvement is • beyond the ordinary skill in the art.

9. Response to Obviousness Rejections • Claim: features A, B and C. • Rejection: Reference 1 teaches a similar device as claimed, • reference 2 teaches a technique that is applicable to the device, and • one of ordinary skill in the art would have applied the technique to • the device. • Rebuttal arguments: • Argue that Office Action erred in making the statement. • Argue that the skill required to apply the technique is • beyond the ordinary skill in the art.

10. Response to Obviousness Rejections • Claim: features A, B and C. • Rejection: There is a recognized need to solve a problem, • Reference 1 teaches a finite number of potential solutions, and it • is obvious for one of ordinary skill in the art to try the solutions. • Rebuttal arguments: • Argue that Office Action erred in making the statement. • Argue that one of ordinary skill in the art would not have • tried the solutions.

11. Response to Obviousness Rejections • Claim: features A, B and C. • Rejection: There is a recognized need to solve a problem, • Reference 1 teaches a finite number of potential solutions, and it • is obvious for one of ordinary skill in the art to try the solutions. • Rebuttal arguments: • Argue that Office Action erred in making the statement. • Argue that one of ordinary skill in the art would not have • tried the solutions.

12. Response to Obviousness Rejections • Claim: features A, B and C. • Rejection: There is an analogous device in the same or different • field, the difference between the claimed invention and the device is • encompassed in known variations, there is a design incentive to • Implement the claimed variation of the prior art. • Rebuttal arguments: • Argue that Office Action erred in making the statement. • Challenge there is a design incentive to implement the • Variation. • Challenge the claimed invention may be resulted from • Application of the prior knowledge in a predictable manner.

13. Response to Obviousness Rejections • Claim: features A, B and C. • Rejection: There is an analogous device in the same or different • field, the difference between the claimed invention and the device is • encompassed in known variations, there is a design incentive to • Implement the claimed variation of the prior art. • Rebuttal arguments: • Argue that Office Action erred in making the statement. • Challenge there is a design incentive to implement the • Variation. • Challenge the claimed invention may be resulted from • Application of the prior knowledge in a predictable manner.

14. Response to Obviousness Rejections • Claim: features A, B and C. • Rejection: There is some teaching, suggestion or motivation to • modify the reference or to combine the teachings of references, and • there is reasonable expectation of success. • Rebuttal arguments: • Argue that Office Action erred in making the statement. • Challenge one of ordinary skill in the art would have been • motivated to modify. • Challenge there is reasonable expectation of success. • Refute the examiner’s assertion of what would be obvious • To one skilled in the art. • Argue why the modification has never done before.

15. Thank you!谢谢！ Hamre, Schumann, Mueller & Larson, P.C. 45 South Seventh Street, Suite 2700Minneapolis, MN 55402 USAwww.hsml.commail@hsml.comTel: 612.455.3800 Fax: 612.455.3801