In the course of prosecution of a patent application, the applicant may attempt to amend the claims or specification in order to address the issues raised by the Examiner and to, in turn, secure a patent at the earliest possible opportunity. There is a restriction, however, imposed by the current Patent Act that any amendment performed during prosecution should not go beyond the disclosure of the specification submitted at the time of filing.
In practice, a significant proportion of claim amendments are pinpointed to traverse the Examiner’s rejection on the ground that the invention as filed does not fulfill the “novelty” requirement or is want of “inventive step.” Moreover, since most of the prior art references cited by the Examiner are those which the applicant did not conceive of at the time of filing, it is rather difficult for the applicant to draft the specification with such prior art laid out in the “background of the invention” section of the specification or shown in the drawings. As a result, to amend the claims without going beyond the original application appears to be a matter of technicality.
On July 29, 2021, the Intellectual Property and Commercial Court (IPC Court) rendered a Judgment which can shed some light on the issue mentioned above. .
Application No. 106122799 (hereafter referred to as the “divisional application”) was divided from Application No. 105109832 (hereinafter referred to as the parent application) by taking the benefit of the filing date of the latter. The claims of the divisional application are directed to a projector with the technical feature that “ a mixture in which the wavelength conversion substance is mixed with the scattered reflective substance.” During prosecution, the applicant, with a view to traversing a rejection in view of two prior art references adduced by the Examiner, restricted the scope of the independent claim by specifying that “a single layer mixture in which the wavelength conversion material is mixed with the scattered reflective substance.” Moreover, the applicant stressed in the response that the prior art references, alone or in combination, did not disclose or suggest the essential feature of the claimed invention to the effect that “the wavelength conversion substance and the scattered reflective substance are mixed into a single layer mixture.”
The IP Office, however, refused acceptance the claim amendment and, in turn, rejected the divisional application, alleging that a single layer of mixture is not disclosed in the original specification and hence the amendment is not supportable by the disclosure of the original specification.
When the case was appealed to the IPC court, the court held a divided opinion and remanded the case to the IP Office for reconsideration. Hereinafter the writer would like to make an in-depth analysis on the opinions rendered by the IP Office and the Intellectual Property and Commercial Court, respectively, on one and the same issue.
IP Office
The amendment in the claims of the application is directed to “a single-layer mixture”; however, such mixture is not disclosed in the specification, claims or drawings. By definition, “mixture” has a wider sphere than “a single-layer mixture” whilst it cannot be learnt directly and unambiguously from the specification, claims or drawings that the "mixture" referred to in the specification is a "single-layer mixture". As for the embodiment based on which the claims were revised, i.e. the 4th embodiment of Figure 5A-5D, the wavelength conversion structure in Fig. 5A is composed of 190 (i.e. mixture) and 120R1 (120). However, it does not appear from Fig. 5B that 190 is formed by two or more components. Since it is rather difficult to come to a conclusion that the mixture is a single layer mixture, the IP Office is of the view that the claim amendment performed by the applicant eventually goes beyond the original scope of the application.
Intellectual Property and Commercial Court
In determining whether a claim amendment goes beyond the original specification, claims and drawings, apart from the literal descriptions in the specification, all the implied details that can be learned directly and unambiguously by persons having ordinary skill in the art should be taken into account as well.
There are four embodiments in the divisional application. According to the 1st to 3rd embodiments disclosed in the specification, the wavelength conversion substance is provided on the scattered reflective substance 130, and there is no suggestion or teaching that the wavelength conversion material and the scattered reflective substance are mixed into a mixture. As for the 4th embodiment, it is disclosed therein that the wavelength conversion material and scattered reflective material are mixed into a mixture 190 and the mixture 190 has the function of scattering reflection and wavelength conversion. Moreover, according to the 4th embodiment (Figure 5B, 5D), mixture 190 is obviously a single-layer structure which is different from the multi-layer structure disclosed in the 1st to 3rd embodiments of Figures 2B, 2D, 3B, 3D, 4B, 4D (see the figures below). From the reference numbers in Figs. 5A and 5B it can hardly tell that mixture 190 is a single-layer mixture. Nevertheless, since it is disclosed in the specification that “the wavelength conversion material and scattered reflective substances are mixed into a mixture 190”, it is crystal clear that mixture 190 has both the function of scattering reflection and the function of wavelength conversion, which is attributable to solving the problem of poor bonding between layers caused by multi-layer coating. Therefore, mixture 190 is presumably a single-layer structure, not possibly a multi-layer structure.
In view of the foregoing, the IPC Court found that the amendment performed by the applicant does not go beyond the scope of the specification and drawings submitted at the time of filing. The decision rendered by the IP Office is thus vacated and the case is remanded to the IP Office for reconsideration.
According to the IPC court, to determine whether an amendment performed by the applicant is proper, a two-prong test can be used. The first test is: Is the amendment conducted supportable by the specification? If the answer is negative, then the second test is: Are there any implied details in the specification that can be learned directly and unambiguously from the specification able to support the amendment?
Moreover, when it occurs that there is inconsistency among the reference numbers in drawings, the overall technical features of the claimed invention should be carefully reviewed, with cross reference to the inconsistency in the disclosed embodiments so as to determine whether there are any implied details in any embodiments that serve as the basis of the amendment performed by the applicant.