CHANG TSI
Insights
Traditional containers represent a relatively mature category in the mechanical field, where a vast amount of prior art literature exists, examination standards are stringent, the threshold for inventiveness is high, and the overall grant rate is relatively low.
The background of this case was even more unusual: the patent right granted for the parent application had been invalidated in invalidation proceedings, and the first-instance administrative litigation did not alter that outcome. Against this backdrop, the examiner relied on the same prior art references when examining the divisional application. Although the claims were amended, all claims were still found to lack inventiveness in two successive Office Actions.
For the client, this was far more than an ordinary reserve patent. Based on the same technical solution, the client had already filed applications and obtained multiple invention patents in various overseas countries and regions. Products incorporating the technology held a significant share of the market, and numerous suspected infringing products of varying forms had already appeared on the market.
Whether this patent could ultimately obtain stable protection was directly related to the advancement of the client’s global enforcement efforts.
Faced with repeated negative conclusions, the team did not respond by merely narrowing the claims through additional limitations derived from the specification. Instead, the team returned to the starting point of inventive-step analysis, reconstructed the existing claims, and carefully reviewed the reasoning process underlying the Office Actions feature by feature.
Where did the problem lie?
The Office Actions evaluated separately those technical features in the application that were functionally supportive of and interacted with one another. In other words, an integrated technical solution was fragmented into isolated technical features, and corresponding disclosures were then individually sought in the prior art.
Although this approach formally completed feature mapping, it overlooked the fact that these features functioned together as a synergistic whole within the application. As a result, the “actual technical problem solved” was generalized and oversimplified. Once a technical problem is generalized, it often becomes possible to find seemingly “obvious” answers from the vast body of prior art.
In responding to the second Office Action, the team developed its arguments step by step in accordance with the “three-step approach”:
Overall Assessment — Technical features that are functionally supportive of and interact with one another should be assessed as a whole with respect to their combined technical effects, rather than being dissected feature by feature.
Redefinition of the Technical Problem — Based on an accurate identification of the distinguishing technical features, the response pointed out the examiner’s improper characterization of the technical problem and reformulated the actual technical problem solved by the application as a specific problem that the prior art had failed to solve and for which a person skilled in the art lacked motivation to address.
Demonstration of Non-Obviousness — From both the flaws in the examiner’s reasoning and the technical barriers involved in combining the two prior art references, the response demonstrated that the claimed solution was not a result derivable from the teachings of the prior art.
In addition to the “three-step approach,” the team further strengthened the argumentation framework by invoking supplementary considerations relevant to inventive-step assessment.
No One Had Proposed the Combination of the Two Prior Art References for More Than Twenty Years
The two prior art references had been filed more than twenty years ago. If their combination had truly been obvious as alleged in the Office Action, someone in the industry would reasonably have proposed and implemented such a combination during those two decades. In reality, however, no such combination had ever been proposed. A technical gap that remained unfilled for such a long period strongly suggested that the combination was not an easily conceived conventional choice.
The Invention Overcame Technical Prejudice
The two prior art references were based on fundamentally conflicting technical concepts. Their combination was not a simple aggregation of features, but instead required overcoming the technical mindset formed by persons skilled in the art based on the existing technology. This obstacle constituted a teaching away, fundamentally negating any motivation to combine the references.
Unexpected Technical Effects and Commercial Success
The solution achieved technical effects in practical application that exceeded expectations. Products incorporating the technology achieved commercial success and prompted imitation by competitors, leading the client to initiate multiple enforcement actions. The appearance of infringing products in the market objectively reflected the inventive contribution and commercial value of the invention.
Avoiding Impermissible Hindsight
Reasoning backward from a known technical solution to characterize it as “obvious” suffers from methodological flaws. If such reasoning were allowed without restraint, virtually any genuine invention could later be described as an “obvious combination,” contrary to the legislative purpose of the patent system, which is to encourage innovation.
When adopting a claim amendment strategy during the response to the second Office Action by incorporating certain features from dependent claims, the team did not focus solely on obtaining allowance. Instead, an important consideration was whether the amended claims could effectively cover the principal forms of suspected infringing products already appearing on the market.
Every inclusion or exclusion of a feature, and every adjustment to the scope of protection, was repeatedly checked against the physical infringing products, their structural drawings, and the resulting claim scope.
As a result, the ultimately granted claims not only rested on a stable legal foundation, but also possessed practical enforcement value, thereby providing a basis for subsequent administrative complaints, judicial litigation, and enforcement actions on e-commerce platforms.
The value of this grant extended far beyond the patent itself:
For Confirmation of Rights in the Parent Case — The inventive-step analysis and examination conclusions in the divisional application may provide factual and argumentative support for the ongoing administrative litigation involving the parent patent, helping to reverse the unfavorable first-instance result.
For Global Patent Strategy — The grant reinforces, and is reinforced by, the grant status of the corresponding overseas family patents, helping maintain consistency in the protection of the technical achievements worldwide.
For Market Enforcement — The patent provides a more targeted legal basis for addressing the large number of suspected infringing products, directly supporting the protection of the client’s market share.
The ultimate fate of a patent often depends on whether, in the face of adverse circumstances, patent counsel is willing to conduct one more layer of in-depth analysis and one more round of rigorous argumentation.
From the invalidation of the parent patent to the eventual grant of the divisional application, the phased success in this case stemmed from an accurate understanding of the technical solution, a systematic grasp of examination rules, and full consideration of the client’s commercial objectives.
The work is still ongoing. The administrative litigation concerning the parent patent and the client’s global enforcement efforts both require continued investment and attention. We will continue working closely with the client to pursue better outcomes and ensure that genuine innovation receives the protection it deserves.
