-
-
Services
-
-
22
2026-03
One Case a Day | China: Novelty of Implicit Disclosure - Invalidation Decision No. 17388 (2011)
Case Introduction
A few days ago, we shared a case on the determination of implicit limitations for missing essential technical features, which left considerable room for discussion. Building on this, we will focus on the theme of "implicit disclosure" and continuously share cases involving the examination of "implicit disclosure" or "implicit limitations" in relation to novelty, inventiveness, and amendments beyond scope. This aims to help everyone develop a comprehensive understanding of the fundamental principles defining "implicit" disclosure in the patent system.
Today's case is drawn from the collection of typical cases published by the Reexamination Board. It uses "unless otherwise specified" to determine the customary practices of a person skilled in the art and treats such practices as implicitly disclosed content in the prior art.
Case Information
- Application Number: 2004100260378
- Invention Title: A Traditional Chinese Medicine Preparation for Treating Acute and Chronic Nephritis
- Filing Date: April 12, 2004
- Invalidation Decision Number: No. 17388
- Case Numbers: 4W02451, 4W02573
- Decision Date: October 11, 2011
Key Points of the Decision
When assessing the novelty of a claim, the technical content disclosed in the prior art shall prevail. This technical content includes not only what is explicitly recorded in the prior art but also what is implicit and can be directly and unambiguously determined by a person skilled in the art.
Case Summary
The involved patent protects a traditional Chinese medicine preparation for treating acute and chronic nephritis. Claim 2 defines the production process, which includes the step of "mixing and decocting with water twice" for multiple herbal ingredients.
The prior art cited by the requester (Evidence 1) only discloses the technical feature of "decocting with water twice" for the relevant ingredients, without explicitly recording the "mixing" step.
The controversial issue in this case is whether Evidence 1 has explicitly disclosed the "mixing" feature.
Examination Decision
The requester argued: Although the preparation method in Evidence 1 does not explicitly mention "mixing," a person skilled in the art would consider it implicitly disclosed as mixed decoction.
The patentee argued: Evidence 1 does not disclose the mixing and decocting of medicinal materials. Counter-evidence 1 proves that the extraction of traditional Chinese medicine compound prescriptions requires compound mixed extraction, which is of substantive significance for the efficacy and safety of the drug.
The Collegial Panel Pointed Out:
Article 22, Paragraph 2 of the Patent Law stipulates that novelty means that the invention or utility model is not part of the prior art and has not been publicly disclosed in publications at home or abroad before the filing date, publicly used domestically, or otherwise made known to the public.
When assessing the novelty of a claim, the technical content disclosed in the prior art shall prevail. This technical content includes not only what is explicitly recorded in the prior art but also what is implicit and can be directly and unambiguously determined by a person skilled in the art.
In this case, although Evidence 1 does not explicitly record the "mixing" of the relevant medicinal materials, it implicitly discloses the step of mixing and decocting these materials to obtain their decoction. Regarding the patentee's argument, combined with Counter-evidence 1, emphasizing the importance of "mixed decoction" for the efficacy of compound preparations, the collegial panel held that based on the expression in Evidence 1 and common knowledge in the field, unless specifically noted for separate decoction operations, a person skilled in the art would not consider decocting multiple medicinal materials separately twice and then tediously combining all decoctions. The decoction method disclosed in Evidence 1 is essentially mixed decoction. Although Counter-evidence 1 records that the composition and content of medicinal materials are affected by factors such as harvesting season and medicinal parts, for this case, it does not prove that Evidence 1 does not implicitly disclose the fact of "mixed decoction." Therefore, the patentee's arguments are not persuasive.
undefined
Contact Us
No. 93, Ganjiang West Rd., Suzhou, 215002, P.R.C.
Business Area
Follow Us
