One Case a Day | China: Support of the Specification for Upper-Level Generalization in Claims – "Electric Tool" Case, Invalidation Decision No. 580809 (2024)

Case Introduction

If an embodiment uses "copper" and the claims attempt to protect "metal," it is necessary to determine whether this upper-level generalization can be supported by the specification. Otherwise, granting an overly broad scope of protection to the right holder would be inappropriate, as this examines the upper limit of the protection scope of the claims.

Similarly, if the solution in the claims must use the copper metal from the embodiment to solve the corresponding technical problem, another legal issue is triggered: lack of essential technical features ("missing essential features"). The examination of missing essential features addresses the lower limit of the protection scope of the claims.

Both support from the specification and missing essential features are closely related to the claimed technical problem to be solved. For the case introduced today, interested partners can try reviewing it again from the perspective of missing essential features.

Case Information

• Application Number: 202022011818.7
• Invention Title: An Electric Tool
• Invalidation Request Information: 5W135482
• Invalidation Decision Information: No. 580809
• Decision Date: August 15, 2024

Controversial Focus

To address the technical problem in the prior art where vortices formed between the motor cover and the motor air outlet prevent hot air from being discharged smoothly, Claim 1 of the involved patent provides a technical solution for an electric tool, including:

• A motor assembly [20], which includes a heat dissipation component and a rear end cover [22], with the rear end cover [22] provided with an air outlet [223]; and
• A housing, which is provided with a heat dissipation cavity [112], with the rear end cover [22] placed inside the heat dissipation cavity [112], the air outlet [223] communicating with the heat dissipation cavity [112], and the heat dissipation cavity [112] provided with an exhaust outlet [121] and air guide ribs [123], with the air guide ribs [123] and the rear end cover [22] combining to form an air guide channel [125], one end of the air guide channel [125] connecting to the air outlet [223], and the other end connecting to the exhaust outlet [121].

Controversial Focus: Whether the upper-level generalization of the air guide ribs [123] as the isolation ribs [1231] and blocking ribs [1232] in the claims can be supported by the specification.

Views of the Parties

The invalidation requester pointed out that Claim 1 defines the technical feature "the air guide ribs [123] and the rear end cover [22] combine to form an air guide channel [125], one end of the air guide channel [125] connecting to the air outlet [223], and the other end connecting to the exhaust outlet [121]." However, an air guide channel cannot be formed solely by the air guide ribs and the rear end cover, and the technical problem claimed by the patent cannot be solved. Therefore, Claim 1 is not supported by the specification.

The patentee argued: The patent aims to solve the technical problem where heat dissipation air forms vortices, preventing hot air from being discharged. In Claim 1, the heat dissipation cavity, along with the air guide ribs and the rear end cover forming the air guide channel, can solve the technical problem of the patent.

Invalidation Decision

The purpose of requiring claims to be supported by the specification is to ensure that the protection scope defined by the claims matches the technical contribution of the invention to the field. Therefore, the generalization of the claims relative to the specification should be sufficient to solve the technical problem of the invention. If a person skilled in the art, based on the content disclosed in the specification and their general technical knowledge, cannot foresee that the solution protected by the claims can solve the technical problem of the invention, then the claims are not supported by the specification.

Thus, when determining whether the claims are supported by the specification, the following steps should be taken: first, clarify what technical problem the patent aims to solve; second, based on the technical means recorded in the embodiments of the specification for solving the relevant technical problem, analyze what technical teachings the disclosed content of the specification provides; and third, further determine whether a person skilled in the art, based on these technical teachings and their technical knowledge, can generalize to obtain the technical solution defined by the claims and solve the relevant technical problem.

First, Clarify the Technical Problem to Be Solved by the Patent

Paragraph 0004 of the patent clearly states that the patent aims to solve the technical problem where vortices formed between the motor cover and the motor air outlet prevent hot air from being discharged smoothly.

Second, Analyze the Technical Teachings Provided by the Disclosed Content of the Patent Specification

First, according to the records in the specification, the air guide ribs [123] include isolation ribs [1231] and blocking ribs [1232]. The isolation ribs [1231] surround the non-air outlet area [222] to separate the air outlet area [221] and the non-air outlet area [222]. This setup effectively reduces the retention time of hot air in the heat dissipation cavity [112] and shortens the path for hot air to flow from the air outlet [223] to the exhaust outlet [121].

One end of the blocking ribs [1232] connects to the isolation ribs [1231], and the other end connects to the side edge of the exhaust outlet [121], ensuring that hot air discharged from the air outlet [223] cannot circulate within the air guide channel [125]. This setup effectively avoids the problem of vortex air forming between the motor cover [12] and the rear end cover [22]. The isolation ribs, in coordination with the side walls of the heat dissipation cavity, define the area of the air guide channel, while the blocking ribs restrict the path of hot air in the air guide channel, allowing hot air to be discharged in only one direction and preventing it from circulating within the heat dissipation cavity.

As mentioned earlier, the patent aims to solve the technical problem where vortices formed between the motor cover and the motor air outlet prevent hot air from being discharged smoothly. A person skilled in the art knows that vortices refer to rotating airflow formed by gas circulating in space. Therefore, based on the above records in the patent specification, a person skilled in the art can derive the following teaching from the specification: To solve the technical problem of the patent, the claims must include technical features that prevent hot air from circulating within the heat dissipation cavity. The patent should include an air guide channel formed by the heat dissipation cavity, the motor rear end cover, and the air guide ribs, and the air guide ribs in this channel can prevent the hot air in the heat dissipation cavity from circulating.

Third, Whether a Person Skilled in the Art Can Solve the Technical Problem Based on the Records in the Claims

However, Claim 1 of the patent only defines that the heat dissipation cavity has air guide ribs, which, together with the motor rear end cover, form an air guide channel. The two ends of the air guide channel connect to the exhaust outlet and the air outlet, respectively. However, a person skilled in the art knows that not all air guide ribs [123] can prevent hot air in the heat dissipation cavity from circulating (for example, only the blocking ribs [1232] in the embodiment of this patent cannot prevent hot air circulation). A person skilled in the art cannot clearly understand what alternative structures, other than the air guide ribs composed of the blocking ribs [1231] and isolation ribs [1232] in the embodiment of this patent, can be used to solve the technical problem of this patent.

Therefore, Claim 1 of this patent does not reflect how the air guide ribs prevent hot air in the air guide channel from circulating. Thus, the technical solution defined by Claim 1 cannot solve the technical problem to be solved by this patent. It generalizes an overly broad protection scope and is not based on the specification, failing to comply with the provisions of Article 26, Paragraph 4 of the Patent Law.

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Feng Shangjie (Gasoll Feng)