[author: Junda Wu]

In responding to an Office Action, the applicant usually makes an amendment by adding or substituting a technical feature. However, if the intact technical features described in an embodiment are incorporated into a claim, the claim as amended will not only become verbose and complicated but also define an excessively narrow scope of protection, which is obviously disadvantageous to the applicant. Therefore, usually the applicant adjusts or revises the features of the embodiment to be incorporated into the claims, which is referred to as “re-generalization” herein.

Since the re-generalization includes features that are not explicitly disclosed in the text of the original application document, sometimes disputes arise between the examiner and the applicant with regard to whether or not the re-generalization goes beyond the scope of the disclosure contained in the original description and claims.

This article intends to discuss the reason and the solution for the disputes based on actual cases handled by the author.

Exemplary Cases where the re-generalization should be allowed but was rejected by the examiner

i. Re-generalization merely involving a term or concept, without altering the technical content

Case 1

The original description describes that the tilting of the tiling portion stops due to the abutment of the tilting portion and the tiling support portion to each other at a predetermined abutment position. For the purpose of subsequent reference, the applicant adds a concept of “tilting stop mechanism” in incorporating the above feature into the claims, resulting in incorporating the feature “having a tilting stop mechanism, the tilting stop mechanism causing tilting of a tilting portion to stop due to abutment of the tilting portion and the tiling support portion to each other at a predetermined abutment position”. Subsequently the examiner issues an Office Action alleging that the term “tilting stop mechanism” is re-generalization that goes beyond the scope.

In this case, although the re-generalized concept “tilting stop mechanism” is introduced into the claims, the implementation of the “tilting stop mechanism” is specified in the technical solution described in the description. Therefore, the re-generalized is in fact renaming an existing content of the application document, and does not involve introducing a new technical solution that is not disclosed in the original application document. That is, the incorporated definition of “tilting stop mechanism” can be directly and unambiguously determined from the related paragraphs of the description. On this basis, the amendment should not be deemed going beyond the scope.

In Case 1, the main disagreement between the examiner and the applicant is that: the examiner holds that the renamed concept and the technical solution of the embodiment which is specified subsequently in the claim should be considered separately; and the renamed concept will definitely cover stopping solutions other than that of the embodiment; while the applicant believes that the renamed concept and the technical solution of the embodiment which is specified subsequently in the claim are a whole; the renamed concept is explicitly, adequately defined by the technical solution of the embodiment which is specified subsequently in the claim, without going beyond the scope, and thus will not introduce a technical solution other than that disclosed by the original application document. Clearly it is inappropriate of the examiner to consider the closely-correlated features in the claim separately; as stated by the applicant, the renamed concept is defined by the technical solution defined subsequently in the claim. Empirically speaking, most examiners will be convinced by arguing as the foregoing.

ii. Re-generalization involving removal of non-essential technical feature of the embodiment

Case 2

The examiner points out that as compared with an embodiment and the corresponding drawings, the device according to the claim as amended has an additional insulation plate and is short of a metal barrel; and thus, the amendment goes beyond the scope.

However, in this case, the metal barrel is not an essential technical feature of the related technical solution. A further embodiment and the corresponding drawings show that a device without the metal barrel can still fully implement the technical solution for solving the same technical problem, without affecting the technical effect. Furthermore, the description declares that “the foregoing describes the embodiments of the present disclosure. However, the present disclosure is not limited to the described embodiments and can be implemented in various other forms within a scope that does not depart from the principle of the present disclosure” and that “whether or not explicitly mention herein, the first embodiment to the n-th embodiment can be adaptively combined”. Accordingly, in order to solve the technical problem, the technical solution of the amended claim obtained by applying a partial structure (an insulation plate) of an embodiment to another embodiment should be deemed directly and unambiguously determinable from the text of the original description and claims and the drawings attached to the description. Therefore, the amended claim should not be deemed going beyond the scope.

In Case 2, the main disagreement between the examiner and the applicant is that: the examiner considers the technical features as separate and non-correlated features; while the applicant holds that the first embodiment to the n-th embodiment should be considered comprehensively based on the overall technical thoughts. As mentioned above, the description has stated that “the first embodiment to the n-th embodiment can be adaptively combined.” With that said, the examiner’s opinion failing to consider the technical solutions of different embodiments in combination clearly goes against the intention of the description.

In Case 1, the renaming merely aims to facilitate subsequent reference and does not affect the scope of protection. Therefore, the applicant may consider removing the generalized feature in light of cost-saving. Moreover, the applicant may communicate with the examiner before or after submitting a response to learn the attitude of the examiner towards the involved re-generalization.

In Case 2, the applicant may communicate with the examiner to explain the correlation between the features, so as to obtain a favorable result.

Exemplary Cases where the re-generalization is not approved but often desired by the applicant

i. Amendment by typical generalization, e.g., revising a specific type of metal as “metal”

According to the Guidelines for Chinese Patent Examination, this kind of amendment goes beyond the scope of the disclosure contained in the original description and claims and is not allowed. In practice, the applicant usually attempts to make such an amendment in striving for a larger scope of protection.

Therefore, in order to avoid the go-beyond-scope problem, it is recommended that the description is drafted to specify different levels of superordinate and corresponding subordinates. For example, in this specific case, it would be best that the description is drafted to define application of “metal” and further list specific types of metal such as gold, silver, copper, and the like. Based on this drafting manner, the claims may be subsequently amended according to the different levels of the description, without being considered to go beyond the scope. Please note that adequate description should be provided with regard to the characteristics and the technical effect of each level, making it possible to provide sufficient grounds for claiming inventiveness should restrictive amendment occurs in the future and avoid being alleged as “conventional design that can be easily arrive at”.

ii. Amendment by specifying a technical means while the related description containing merely non-specific disclosure, e.g., revising the original feature of “common connection methods” as “welding, riveting”

According to the Guidelines for Chinese Patent Examination, an amendment in which “new contents are introduced by changing indefinite contents into definite and specific contents” is not allowable. However, often an applicant wants to make such an amendment based on the thought that those skilled in the art have the common knowledge that “common connection methods” include “welding, riveting”.

In order to avoid the go-beyond-scope (new matters) problem, it is recommended to take subordinates that are particularly preferable examples into consideration in patent drafting stage, and to adequately describe the specific contents of “common connection methods” and other generalized technical features