[author: Guangping Zhang]
Under Section 3.1 of Chapter 4, Part II of the Guidelines for Patent Examination, when evaluating whether or not an invention involves an inventive step, the examiner shall consider not only the technical solution itself, but also the technical field to which the invention pertains, the technical problem solved, and the technical effects produced by the invention. The invention shall be considered as a whole.
Intellectual Property Court of Supreme People’s Court released on February 28, 2022 the Substance of Adjudications made by Intellectual Property Court of Supreme People’s Court (2021), pointing out in the case No. 155 ZXZ (2020) of Supreme People’s Court that: in the determination of inventiveness, distinguishing technical features that are closely correlated and interdependent, have coordinate functions in solving the same technical problem, and produce correlated technical effects may be considered as a whole instead of simply being evaluated separately.
With reference to the above-mentioned case and the judgment of the court, this article intends to discuss the application of the principle of holistic consideration in inventiveness determination.
Case Summary
The adjudication relates to a dispute between the appellant Casio Computer Co., Ltd. and the defendant Appotronics Corporation Ltd. over the invalidation of the patent for invention No. 201010293730.7 titled “LIGHT SOURCE DEVICE, PROJECTION DEVICE AND PROJECTING METHOD”.
In the second instance, Supreme People’s Court asserted that: the subject patent is based on the inventive thought of combining a light source with a fluorescent body to improve the light emitting efficiency for each color, avoiding saturation of the fluorescent body while guaranteeing adequate absolute luminosity, so that the image is as bright as possible and is of high color reproduction. As the technical means, the subject patent uses “light source control means configured to control a drive timing for the light source and the light source light emitting means, setting a light emitting period of a light source light of at least one color with relatively high light emitting efficiency to be shorter than a light emitting period of a light source light of a different color” while providing the feature “setting a driving power of the light source upon emitting a light source light of a color of which the light emitting period has been set to be shorter to be larger than a driving power of the light source upon emitting a light source light of a different color”. The above two features jointly effect to solve the technical problem of saturation of the fluorescent body and inadequate absolute luminosity, and produce the correlated technical effect that the image is as bright as possible and is of high color reproduction. Thus, they should be considered as one holistic technical feature or a group of technical feature as a whole.
To the contrary, the light source (extra high pressure mercury vapor lamp) of Reference 1 has a constant power; Reference 1 does not relate to the conversion rate of fluorescent layers of various colors or adjusting the light emitting power based on the proportion of the lights of various colors when combining the lights. Although the technical solution of Reference 1 also discloses a technical means for improving color balance by adjusting the light emitting period for lights of different colors emitted by a color disk to adjust the light emitting amount of lights of three colors within a full unit time period, the adjustment of Reference 1 is not performed in order to cope with the differentiated light emitting efficiency of the fluorescent layers of various colors, and is not directed to simultaneously adjust the driving power for the light source in order to generate lights of different colors. Therefore, Reference 1 does not disclose the technical features working jointly. The sued decision has correctly determined the distinguishing technical features of claim 1 as compared with Reference 1 and should be upheld. The first instance judgment includes inappropriate decision with regard to the distinguishing technical features and is hereby corrected.
Based on the above distinguishing technical features, the technical problem to be actually solved by the subject patent is inadequate absolute luminosity due to deterioration of light emitting efficiency caused by saturation of the fluorescent body. Neither of Reference 2 and Reference 3 provides corresponding technical teaching. Therefore, claim 1 possesses inventiveness.
Since the first instance judgment includes wrong fact findings and legal application in the determination of inventiveness, it is overturned by Supreme People’s Court.
Case Analysis
(1) When various specific technical means used in a technical solution are closely correlated, jointly work to address the same technical problem, and produce correlated technical effects, they should be considered as a single technical feature or a set of technical features in the comparison between the subject patent and the closest prior art. The features forming a holistic technical means should not be assessed separately. Only in this way, the contribution attributed to the joint function of the relevant parts of the technical solution can be noted rather than being overlooked.
In the identified case, the feature “setting a light emitting period of a light source light of at least one color with relatively high light emitting efficiency to be shorter than a light emitting period of a light source light of a different color” and the feature “setting a driving power of the light source upon emitting a light source light of a color of which the light emitting period has been set to be shorter to be larger than a driving power of the light source upon emitting a light source light of a different color” works in coordination rather than independently and non-correlated. They work as a whole to jointly address the technical problem of saturation of the fluorescent body and inadequate absolute luminosity.
(2) The technical problem actually solved by the invention should be determined based on the technical effect of the distinguishing technical features as a whole.
Based on distinguishing technical feature (A), the subject patent can improve the overall light emitting efficiency of the combination of the light source and the fluorescent body, so that the brightness is higher, achieving better reproduction. That is, the technical problem to be solved by the subject patent includes two aspects: when an excitation light at low output rate is irradiated to avoid saturation of the fluorescent body, the absolute luminosity will be inadequate; while when an excitation light at high output rate is irradiated to meet with the light requirement, the light emitting efficiency of the fluorescent body decreases.” The court of the original judgment determines the technical problem to be actually solved by the subject patent as “to adjust the driving power for different fluorescent bodies to achieve better light emitting effect merely based on the feature of “setting a driving power of the light source upon emitting a light source light of a color of which the light emitting period has been set to be shorter to be larger than a driving power of the light source upon emitting a light source light of a different color”, without reasonably determining the distinguishing technical feature. The conclusion reached thereby is obviously incorrect.
(3) In determining whether or not the prior art teaches the distinguishing technical features, it is also necessary to objectively determine whether or not the prior art teaches the distinguishing technical features as a whole. That is, attention should be paid to whether or not the prior art teaches the interdependent correlation between the technical features forming the distinguishing technical feature; the technical features constituting a while technical means should not be assessed separately.
As to the present case, the cited prior art References 1-4 attain to the respective technical effect either by adjusting the light emitting period or by adjusting the light emitting power of the light source. But they each have a different objective, and intend to realize distinct technical effects. The technical solution of the subject patent cannot be obtained by simple addition of the technical features of the prior art references.
As shown above, due consideration should be given to the correlation between technical features in the assessment and determination of inventiveness, as well as to the contribution made by the distinguishing technical features as a whole to solving the technical problem the invention intends to solve, thereby avoiding the hindsight bias.
In a case where the examiner assesses the technical features of a claim separately, as a plausible response, the attorney and the applicant may explain the holistic concept of the claimed technical solution to the examiner to strive for a favorable result.
