CHANG TSI
Insights
Outcome: An invention patent application in the field of structures was rejected for "lack of inventive step" even after two rounds of responses to Office Actions. We filed a request for reexamination, and the original examination department agreed to withdraw the rejection at the pre-reexamination stage. On that basis the collegiate panel issued a decision revoking the rejection, and the case returned to the substantive examination procedure for further prosecution.
This case falls within the field of electronic device structures. In simple terms, two types of functional modules are installed side by side inside the device housing, and the two differ in height — for ease of description, they are referred to below as the tall module and the short module.
Under the conventional approach, the top surface of the housing follows the contour of the internal modules: the portion corresponding to the tall module is raised and the portion corresponding to the short module is lowered, so that the top surface forms a step. That step creates two practical problems: the device is not convenient to stack and transport steadily, and the overall appearance of the finished product lacks integrity.
The solution proposed by the present application is to make the top surface a single complete plane and to absorb the height difference inside the housing. Specifically, the housing top is divided into two separately formed parts. The outer cover plate member has an outer surface that is a complete plane, while its inner surface is divided into two regions, one of which encloses, together with the housing bottom, a taller accommodating space for mounting the tall module. The inner connecting member is a three-dimensional frame body enclosed by a connecting plate and surrounding side plates; it is assembled in the other region of the inner surface of the cover plate member, supports the cover plate from below by means of its side plates while sinking downward as a whole, and encloses, together with the housing bottom, a shorter accommodating space for mounting the short module.
In general terms, a sunken three-dimensional frame body in the inner layer "lowers" the local headroom, so that both the tall and the short module can be accommodated beneath a single flat top. In addition, because the two parts are formed separately, the originally complex one-piece contour is broken down, the machining difficulty of the housing is reduced, and the manufacturing yield is improved.
During substantive examination, the examiner issued two successive Office Actions, both holding that the application lacked inventive step, and issued a decision of rejection after we filed the second response. We were then entrusted to file a request for reexamination. The decision of rejection in this case was withdrawn at the pre-reexamination stage.
The real difficulty in this case did not lie in any particular technical issue being hard to explain, but in the fact that the basis of the examiner's reasoning kept changing across three rounds. After each response, we had to reorganize our line of argument around a new point of dispute.
First Office Action: the distinguishing feature was generalized into a single phrase — "a routine arrangement."
The reference cited in the first Office Action (hereinafter D1) was a structural document in the same field. D1 recorded two embodiments: in the first, tall and short modules coexist and the top plate is locally raised; in the second, the two types of module are of equal height and the top plate is flush throughout. On that basis the examiner held that the only difference between the present application and D1 was that "the top surface is planar," summarized the technical problem actually solved as "how to improve the integrity of the appearance," and concluded that "designing a planar housing on the basis of the frame is a routine arrangement in the art."
The crux of this finding was the level of abstraction applied to the distinguishing feature. Once the difference is elevated to "forming a plane," its apparent obviousness is greatly reinforced. Accordingly, our response did not argue about the result of "a plane" as such. Instead, we introduced into the claims the specific subordinate structures in the description that genuinely embody the inventive concept, so that the difference came to rest once again on a set of mutually cooperating structural designs for the housing top.
At the same time, we pointed out that under the analytical framework of the "three-step approach," only one of the two embodiments recorded in D1 could be taken as the closest prior art; the two could not be arbitrarily pieced together in the absence of any technical teaching. Nowhere does D1 record or suggest a technical motivation to combine the two embodiments.
Second Office Action: the closest prior art was replaced.
In the second Office Action the examiner no longer treated D1 as the closest prior art for the present application. A supplementary search produced a further document (hereinafter D2), which was adopted as the new closest prior art for a fresh assessment of inventive step.
In other words, we had successfully persuaded the examiner to abandon D1, but at the same time the examiner had located D2, a document even closer to the present application.
What made D2 troublesome was that it shared two external features with the present application: the top surface of its housing was already flat, and modules of differing heights were indeed installed inside the housing. More importantly, the examiner mapped a baffle plate fixed at the front end of the housing in D2 directly onto the inner connecting member of the present application, and held on that basis that D2 had already disclosed both the two-piece inner and outer housing-top structure and the positional relationship between the two parts.
Under this mapping of features, the difference between the present application and D2 was compressed into "the tall–short relationship is reversed" — that is, in D2 one type of module is shorter and the other taller, whereas in the present application the position is exactly the opposite. Correspondingly, the examiner summarized the technical problem actually solved as "how to adjust the positions of the two types of module," and ultimately held that such an adjustment amounted to no more than a routine design choice for a person skilled in the art.
One detail here is easily overlooked: in mapping the features, the examiner in fact swapped the correspondence of the two accommodating regions as a whole. The examiner had therefore effectively acknowledged that a wholesale mirror transformation exists between the present application and D2, while taking the further view that such an inversion did not itself call for inventive effort.
Decision of rejection: the center of the dispute shifted once more.
In responding to the second Office Action, we did not amend the claims and filed observations only. That strategy was adopted after full consultation with the client: the client wished to preserve as broad a scope of protection as possible and was therefore reluctant to add further structural limitations. The response accordingly concentrated on the inventive-step argument itself. In hindsight there was nothing wrong with that trade-off, but it also meant that, if the examiner did not accept the arguments, the dispute would ultimately return to the wording of the claims.
The examiner then issued a decision of rejection, adding two further grounds on top of the earlier opinions.
First, the examiner introduced two documents concerning movable positioning protrusions as evidence of common general knowledge, in order to show that "providing a separate component to fill the gap between a module and the inner wall, so as to serve appearance integrity, reliable fixing of the module and ease of assembly at the same time, is a conventional technical means in the art."
Second, the examiner identified what was seen as the core problem with the claims, namely that the two-piece inner and outer split design "cannot be directly derived from the wording of claim 1." At the same time, however, the examiner conceded that it was likewise impossible to establish clearly whether the corresponding part in D2 was of one-piece construction.
On its face the second point appeared unfavorable to the applicant, but in fact it exposed the key gap in the grounds for rejection. The examiner did not, on technical grounds, deny the role and value of the split design itself; the problem actually identified was that the existing claims had not yet expressly captured that technical contribution in their wording. That was precisely the line of attack we chose at the reexamination stage.
1. Amending the independent claim to embody the core concept in the claim wording
We selected from the original dependent claims those technical features capable of reflecting the split structure and the assembly relationship, and incorporated them into the independent claim. Which features to incorporate, and to what extent, was the question calling for the most careful balancing at this stage. Our aim was not to narrow the scope of protection by piling on limitations, but to articulate clearly the core structural relationship of "split inside and outside, layered above and below" while introducing as few technical features as possible.
Everything ultimately incorporated into the independent claim was a limitation on structural relationships — for example, the connection between the inner connecting member and the outer cover plate member, the positional relationship of the side plates, and the manner in which the upper and lower spaces are formed. The amended claim therefore still retained a relatively broad scope of protection.
2. Dismantling the examiner's central finding on feature correspondence at three levels: structure, spatial position and function
The foundation of the entire rejection was the finding that "the baffle plate at the front end of D2 is equivalent to the inner connecting member of the present application." We made a three-tier comparison around that finding, relying as far as possible on the text of D2's own description as counter-evidence: D2 itself states that the baffle is mounted at the front of the housing in order to block another module and prevent it from slipping forward.
Structurally, the inner member of the present application is a three-dimensional frame body enclosed by a connecting plate and surrounding side plates, with the side plates supporting the cover plate from below — a layered load-bearing structure. The baffle of D2 is merely a flat plate, with no connecting plate, no surrounding side plates and no upward support; it is essentially a single-layer blocking piece.
In terms of spatial position, the inner member of the present application lies on the inner side of the cover plate, spans the interior of the housing and divides the vertical space within the housing into an upper and a lower layer. The baffle of D2 is confined to a small area at the very front of the housing; it neither extends into the housing nor spans it, does not divide the height, and therefore cannot delimit accommodating spaces of two different heights at all.
Functionally, the inner member of the present application is the core component forming the two accommodating spaces of different heights, whereas the baffle of D2 performs the single function of preventing detachment and plays no part whatsoever in defining the height of any accommodating region.
On this basis we further pointed out that the technical mechanism by which D2 forms spaces of different heights is itself different. In D2 the height difference arises passively, by stacking another module above a lower module; in the present application, the upper and lower layers of headroom are actively delimited by the split frame structure of the housing top. That is, the height difference in D2 originates from module stacking, while that of the present application originates from the housing structure itself. Since the mechanisms of formation are entirely different, the matter cannot simply be reduced to "an exchange of positions" or "a routine adjustment." The examiner's conclusion of "routine adjustment" in fact rested on a misreading of the technical solution of D2.
3. Analyzing whether the newly added "common general knowledge" evidence truly corresponds
As to the two positioning-protrusion documents newly introduced in the decision of rejection, we did not simply deny that "a split structure is common general knowledge." We focused instead on whether that evidence genuinely corresponded to the fact to be proved.
What the two documents disclose are, in essence, small local retaining structures whose only role is to fill a local gap or restrict the position of a single module; the problem they solve is one of local retention. The solution of the present application, by contrast, does not make local compensation by adding small auxiliary parts. It divides the housing top that carries the modules of the entire device into two mutually independent assemblies, each enclosing its own space, so as to solve simultaneously a set of interrelated problems: a flat top surface, accommodation at two heights, guidance and support for the modules, and machinability of the structural parts.
The point in this case, therefore, was not to deny that "splitting" is in itself common. It was to show that the technical proposition the examiner's evidence was capable of proving and the technical proposition the examiner sought to prove were not at the same level.
In the end, the effect of this line of response was reflected directly in the procedural outcome: the original examination department withdrew the earlier decision of rejection of its own motion at the pre-reexamination stage. Ordinarily, a dispute in a reexamination case still has to go before the collegiate panel; here, our submissions were accepted before the collegiate procedure was ever reached.
Beware of the technical problem actually solved being "downgraded."
Formulations of the technical problem that are highly abstract and divorced from the specific structure — such as "how to improve the integrity of the appearance" or "how to adjust the positions of the modules" — tend naturally to lead to a conclusion of "routine arrangement" or "routine adjustment." When arguing inventive step, therefore, the attorney should always start from the technical effects that the distinguishing features actually produce in the application, redefine the technical problem on that basis, and present as fully as possible the multiple effects achieved.
In this case, the technical solution did not merely make "the top surface flat." It simultaneously achieved a flat appearance, reliable fixing of the modules, ease of assembly and easy machining of the structural parts. Only by presenting these interrelated technical effects as a whole can over-abstraction of the technical problem be avoided and the basis for a "routine adjustment" conclusion be undermined.
Breaking down an incorrect feature correspondence calls for analysis at three levels: structure, spatial position and function.
Denying a feature correspondence merely by reference to names or functions invites the simple retort that the two are "substantially the same." An argument that really works must go further and explain how the structural difference gives rise to a different spatial-positional relationship, and how that difference in spatial position in turn determines the difference in function.
In other words, structure, position and function should form a complete chain of logic, rather than stopping at "they look different" or "they do different things." In practice, the most powerful arguments often come not from the applicant's own characterization but from the text of the reference itself. Making full use of the technical descriptions in the opposing evidence is usually more persuasive than subjective assessment alone.
Avoid having the overall inventive concept evaluated piecemeal.
Across the three rounds of response we consistently emphasized that the split frame, the partitioned inner surface of the cover plate and the sunken inner member are not isolated local designs, but an integrated structural solution in which the elements cooperate with and support one another, all directed to solving the same set of mutually constraining technical problems.
In structural cases, inventive step often lies not in any single feature but in the overall cooperative relationship formed among several structures. It is therefore important to avoid having the examination break the overall solution down into a number of isolated features and then judge each separately for obviousness. Building the argument around the overall inventive concept is usually one of the most effective ways of meeting a "feature-by-feature dissection" approach to inventive step.
