Outline

This article discusses how to accurately determine the technical problem actually solved by an application in response to rejections for not involving inventiveness, by taking reexamination decision No.109833 related to invention application CN 200910175855.7 as an example.

Brief Description

Patent Application Number: CN 200910175855.7
Title: Unlocking a device by performing gestures on an unlock image
Filing date: November 30, 2006
Priority date: December 23, 2005
Reexamination Petitioner: APPLE INC.

Examination Decision:
The CNIPA’s decision to reject this application on April 09, 2013 is revoked. The CNIPA’s substantive examination department continues the examination process of this application based on the text on which the reexamination decision was made.

Main Points:
In the process of determining whether an application involves inventiveness, if it is found that multiple distinguishing technical features exists after comparing the claim to the closest prior art, it is necessary to consider the relationship(s) between the distinguishing technical features after accurately grasping the inventive concept, and objectively determine whether these distinguishing technical features should be considered as a whole or individually according to the relationship(s) therebetween, to determine the technical problem actually solved by the application.

Moreover, the determination of the technical problem actually solved by the application should be made based on the objective technical effects achieved by these distinguishing technical features in the application, rather than on the guidance of the technical solution provided by the application for solving the technical problem.

On this basis, the claim will be deemed to be inventive if these distinguishing technical features are neither disclosed by the other cited reference documents, nor pertain to the common knowledge in the art, and the technical solution containing these distinguishing technical features can bring about advantageous technical effects.

Reasons for the Decision:
The technical solution recited in claim 1 differs from the contents disclosed in Reference Document 1 in two distinguishing technical features. In view of this, we should accurately grasp the technical concept of the present invention, consider the relationship between the two distinguishing technical features, and then determine the technical problem actually solved based thereon.

The technical concept of the present invention is to unlock an electronic device by moving the unique unlock image on a touch-sensitive display from a first predetermined position to a predetermined unlock area. If the unlock image is dragged to the designated unlock area, the device will be unlocked. However, if the image is not dragged to the predetermined unlock area, the device will remain locked and the unlock image will be returned to the first predetermined position, which thereby reduces the risk of accidental unlocking while facilitating the unlock process.

According to the above analysis of the inventive concept of the present application, it is seen that the distinguishing technical features (1) and (2) are technically interrelated, they are mutually related and jointly solve the technical problem of improving the convenience of unlocking handheld electronic devices and avoiding accidental unlocking. They should, therefore, be considered collectively as a whole. On this basis, it can be determined, from distinguishing technical features (1) and (2), that the technical problem actually solved by the technical solution of “Claim 1” is how to improve the convenience of unlocking handheld electronic devices and avoid accidental unlocking.

Reference Document 1 is essentially a password scheme that uses a sequence of dragged icons to unlock certain functions, which cannot solve the above-mentioned technical problem. Reference Document 2 only uses drag-and-drop to exchange icon content which has nothing to do with the unlocking of a device and thus fails to teach or suggest to solve the technical problem of improving the convenience of unlocking handheld electronic devices and avoiding accidental unlocking.

To sum up, it is determined that Claim 1 involves inventiveness as defined by Article 22. 3 of the Chinese Patent Law.

Conclusion
The above case illustrates that when there are multiple distinguishing technical features between a claim and a cited reference document, it is necessary to accurately understand the inventive concept, and determine whether the multiple distinguishing technical features are interrelated or independent based on the inventive concept, so as to determine whether these distinguishing technical features are to be considered as a whole or individually, and then make a determination on the technical problem actually solved by the invention, thereby accurately determine the technical problem actually solved.

In summary, when replying to an office action, if there are multiple distinguishing technical features between a claim of the application and a cited reference document, it is suggested to firstly determine the inventive concept of the application on basis of the background and the defects exist in the prior art as described in the application, the technical means adopted by the application to address the defects, and the technical effects corresponding to the technical means. Then, based on the inventive concept, it should be determined whether there is a technical relationship between these technical features, in other words, whether the technical effect achieved by the application requires mutual support and interaction among these features. Subsequently, based on the interrelationship between these technical features, consider them as a whole to deduce the actual technical problem solved by the application.

It is possible that the technical problem so determined is different from that presented in the office action. If there is a difference between the two, it is likely that the examiner has either identified a technical problem that is too broad or has overlooked the technical relationship between the distinguishing technical features, thus causing the technical problem to be defined too narrowly. In any case, an inaccurate determination of the technical problem would adversely affect the analysis of the distinguishing technical features and could potentially lead to an incorrect conclusion.

Therefore, it is suggested to start from the technical problem actually solved by the invention, and thus analyze and reply to the examiner's comments on the distinguishing technical features.

Reference:
Accurately grasp the inventive concept to determine the technical problem actually solved by the invention - Comments on reexamination of the invention patent application “Unlocking a device by performing gestures on an unlock image”, China National Intellectual Property Administration, December 26, 2017.