One Case a Day | China: Does Expanding the Scope of Protection in a Divisional Application Necessarily Constitute Amendments Beyond the Original Disclosure? – "Air Sampling System" Case, Reexamination Decision No. 1454541 (2023)

Case Introduction

There has been a trend towards stricter scrutiny of voluntary divisional applications. Rumors suggest that if there is no lack of unity, divisional applications should not be permitted, especially when seeking a broader scope of protection, which is often viewed unfavorably. During examination and invalidation proceedings, parties typically engage in intense debate over whether amendments exceed the original disclosure.

From the case shared today, we can see that, first, unlike the restriction in invalidation proceedings that amendments to claims must not broaden the scope of protection, divisional applications can seek a broader scope of protection. Second, deleting features does not necessarily lead to exceeding the scope of the parent application's disclosure. Third, the determination of whether amendments exceed the original disclosure should be based on the claims, specification, and drawings submitted on the filing date of the parent application, assessing whether the amendments introduce new technical information that cannot be directly and unambiguously derived from the original application documents.

Case Information

• Parent Application: 201580046619.9 (PCT/US2015/046365)
• Application Number: 201911107305.1
• Invention Title: System Based on Programmable Logic Controller and User Interface for Air Sampling in Controlled Environments
• Reexamination Request Information: 1F453481
• Reexamination Decision Information: No. 1454541
• Decision Date: October 31, 2023

Key Points of the Decision

Amendments to claims in a divisional application may sometimes lead to substantive defects such as exceeding the scope of the original disclosure of the parent application or lack of support from the specification due to an unreasonably broadened scope of protection. However, this does not mean that when judging whether amendments exceed the scope of the original disclosure of the parent application, one can adopt the reasoning used to determine whether the scope of protection is broadened or whether the claims are supported by the specification. Instead, one should follow the legal provisions of Article 43, Paragraph 1 of the Implementing Regulations of the Patent Law and Article 33 of the Patent Law, as well as their fundamental principles: from the perspective of a person skilled in the art, and based on the original application documents of the parent application (including the claims and specification), determine whether the amendments introduce new technical information that cannot be directly and unambiguously derived from the original application documents.

Views of the Parties

The disputed Claim 1 of the divisional application protects a system for sampling air at multiple locations in a controlled environment. The system includes:

• Multiple air sampling devices, each configured to monitor and test a volume of air within the controlled environment;
• Multiple vacuum connections, each configured to receive the volume of air from one of the multiple air sampling devices;
• A vacuum pump configured to draw the volume of air from the multiple air sampling devices through the multiple vacuum connections;
• A contactor configured to deliver and control power to the vacuum pump; and
• A flow center including a programmable logic controller configured to monitor and control the mass flow rate of air received by the multiple vacuum connections;

wherein the system is configured to disconnect power to the vacuum pump in response to determining that the mass flow rate of the volume of air received by one of the vacuum connections in fluid communication with the vacuum pump falls below a predetermined threshold.

The rejection decision pointed out: Compared to independent Claim 1 of the parent application, independent Claim 1 of this divisional application omits "multiple flow control valves," "multiple flow sensors," and "an operator interface terminal," adds "vacuum pump" and "contactor," and further defines the system configuration. The original specification consists of only one set of embodiments and does not reflect the scheme recorded in Claim 1 of this divisional application. The above amendments delete parts of the content from the specification, resulting in the amended claims exceeding the scope of the original specification and claims. Consequently, the changed technical scheme cannot be directly and unambiguously determined from the content recorded in the original specification and claims. Therefore, Claim 1 does not comply with Article 43, Paragraph 1 of the Implementing Regulations of the Patent Law.

The reexamination requester argued: ... (2) According to the provisions of the Patent Examination Guidelines, independent claims should record the essential technical features for solving the technical problem. The technical features deleted from the independent claim of this divisional application are not essential technical features. (3) The technical features added to the independent claim of this divisional application can be directly obtained from the content recorded in the specification of the parent application, satisfying the provision of "being obtainable from the content sufficiently disclosed in the specification." ...

Reexamination Decision

Article 43, Paragraph 1 of the Implementing Regulations of the Patent Law stipulates: "For a divisional application filed in accordance with the provisions of Article 42 of these Implementing Regulations, the filing date of the original application may be retained; where priority is claimed, the priority date may be retained, provided that the divisional application does not go beyond the scope of disclosure contained in the original application."

Amendments to claims in a divisional application may sometimes lead to substantive defects such as exceeding the scope of the original disclosure of the parent application or lack of support from the specification due to an unreasonably broadened scope of protection. However, this does not mean that when judging whether amendments exceed the scope of the original disclosure of the parent application, one can adopt the reasoning used to determine whether the scope of protection is broadened or whether the claims are supported by the specification. Instead, one should follow the legal provisions of Article 43, Paragraph 1 of the Implementing Regulations of the Patent Law and Article 33 of the Patent Law, as well as their fundamental principles: from the perspective of a person skilled in the art, and based on the original application documents of the parent application (including the claims and specification), determine whether the amendments introduce new technical information that cannot be directly and unambiguously derived from the original application documents.

Specifically for this case, Claim 1 ... complies with Article 43, Paragraph 1 of the Implementing Regulations of the Patent Law. The specific reasons are as follows:

1. Independent Claim 1 protects a system for sampling air at multiple locations in a controlled environment. It specifically defines the air sampling devices, vacuum connections, vacuum pump, contactor, flow center, and the timing for disconnecting power to the vacuum pump.
2. Upon examination, in the claims submitted on the filing date of the parent application, Claim 1 records "multiple air sampling devices," "multiple vacuum connections," "flow center" and its configuration functions. Dependent Claims 10-11 further define "vacuum pump" and "contactor" and their configuration functions, respectively. Claim 13, which depends on Claim 10, further defines "the system is configured to disconnect power to the vacuum pump in response to determining that the mass flow rate of the volume of air received by one of the vacuum connections in fluid communication with the vacuum pump falls below a predetermined threshold." That is, all technical features of independent Claim 1 are recorded in the claims of the parent application. Based on the relevant records in the specification of the parent application, one of the technical problems to be solved by the parent application is: how to prevent physical damage or harm to the "vacuum pump" when a "vacuum connection" or "vacuum sampling device" is blocked. The additional technical features of original Claims 10-13 are related to solving this technical problem.
3. Furthermore, Paragraph 49 of the specification of the parent application further describes technical means related to the above technical problem. These technical means are consistent with the vacuum pump, contactor, and the timing for disconnecting power to the vacuum pump defined in Claim 1. Further considering the specific content described in the detailed description of the embodiments and Figure 2 as a whole, although there is only one embodiment in terms of quantity, it provides specific descriptions for multiple functional modules of the air sampling/monitoring system around the multiple technical problems to be solved by the parent application, including the corresponding components and technical means for solving the technical problem of preventing damage to the vacuum pump. It can be seen that the technical scheme of Claim 1 of the divisional application is formed by combining the corresponding technical features explicitly recorded in the original text of the claims and specification of the parent application. The technical problems to be solved and the technical effects achieved by these corresponding technical features are also explicitly recorded in the original specification. They do not introduce new technical information based on the original text of the parent application. This amended technical scheme does not exceed the set of technical information that can be directly and unambiguously determined from the content recorded in the claims, specification, and drawings of the parent application.
4. Regarding the rejection decision, the collegial panel believes: First, in terms of the basis for judgment, the amended claims of the divisional application should not be compared solely with a specific claim or a specific embodiment of the parent application. Instead, the overall content of the original application documents should be comprehensively considered. Second, in terms of the reasoning for judgment, one should not simply judge by comparing the increase or decrease of technical features relative to independent Claim 1 of the parent application. This reasoning, commonly used to determine whether the scope of protection is broadened, cannot be directly applied to judge whether amendments exceed the scope of the original disclosure. Additionally, when considering whether there is a basis for amendments in the specification, one should not demand that the technical scheme of the claims must be individually recorded in the form of a complete embodiment.
5. Regarding the reexamination requester's arguments about the amendments being supported by the specification, the collegial panel believes: When judging whether the amended claims exceed the scope of disclosure of the parent application, it is not appropriate to adopt the standard for judging whether the claims are supported by the specification. Instead, based on the claims, specification, and drawings submitted on the filing date of the parent application, one should determine whether the amendments introduce new technical information that cannot be directly and unambiguously derived from the original application documents, and whether they exceed the set of technical information that can be directly and unambiguously determined from the documents of the parent application.
6. Thus, the technical scheme protected by Claim 1 does not exceed the scope of disclosure of the parent application and complies with Article 43, Paragraph 1 of the Implementing Regulations of the Patent Law.

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Feng Shangjie (Gasoll Feng)