One Case a Day | China: Judgment of Combination Motivation - (2022) Supreme People's Court Zhixing Zhong No. 132 (Part 2)

Case Introduction
Yesterday, we shared "One Case a Day | China: Determination of the Actual Technical Problem Solved - (2022) Supreme People's Court Zhixing Zhong No. 132 (Part 1)." Today, we will study the content of this case regarding combination motivation, same technical field, and determination of conventional means.

The challenged invalidation decision and the first-instance judgment identified the same actual technical problem solved, yet reached different conclusions on inventiveness. The first-instance and second-instance judgments reached the same conclusion on inventiveness, but identified different actual technical problems solved. These different understandings and approaches are precisely the daily work content that every practitioner faces. Only by deeply understanding the essence within can one skillfully handle various challenges.

Furthermore, the relevant invalidation decision in this case used three pieces of prior art (Evidence 1 + Evidence 2 + conventional means) in combination to evaluate the inventiveness of the utility model patent. How the lower statutory standard of inventiveness for utility models is reflected in the validity determination stage still requires ongoing attention.

Case Information

• Application Number: 201520631644.0
• Title of Invention: A High-Efficiency Self-Generating Electrochemical Current Linkage Press Needle
• Request Date: October 22, 2020
• Invalidation Decision Number: No. 45693
• First-Instance Judgment: (2020) Jing 73 Xing Chu No. 14640
• Second-Instance Judgment: (2022) Supreme People's Court Zhixing Zhong No. 132
• Judgment Date: October 25, 2023

Key Points of the Case
The involved Claim 1 is as follows:

1. A high-efficiency self-generating electrochemical current linkage press needle, characterized in that: the high-efficiency self-generating electrochemical current linkage press needle consists of a press needle device (1) and a conductive medical adhesive tape (2) for fixing the press needle device (1) and connecting and adhering other press needles. The aforementioned conductive medical adhesive tape (2) is made of conductive adhesive (3) and coated fabric (4). The press needle device (1) should be fixed on the conductive medical adhesive tape (2) for fixing the press needle device (1) and connecting and adhering other press needles. The coated fabric (4) of the conductive medical adhesive tape (2) is a coated fabric with conductive properties.

The above technical solution focuses on how to utilize the inherent characteristics of human skin, through a point-to-surface approach, to achieve the function of electrochemical current linkage within the range where the medical adhesive tape fits the skin in the absence of external current input, thereby improving the efficacy of press needles.

Evidence 1, aiming at defects such as the small size of existing press needle devices and limited electrochemical effects and range, provides a press needle electrochemical plaster that significantly improves the interaction and complementary effects between press needles and plasters during treatment, enabling press needles and plasters to jointly generate electrochemical and electromagnetic functions. The press needle electrochemical plaster consists of a press needle device (1) and a plaster and/or magnetic patch (2). The press needle device (1) is fixed on the plaster and/or magnetic patch (2). The plaster and/or magnetic patch (2) can be made by mixing various medical adhesives and various required external substances and/or magnetic substances, respectively, for fixing and adhering press needles and skin, and for interactive and complementary electrochemical and electromagnetic therapy between press needles and plasters.

Evidence 2 discloses an iontophoresis patch with dual functions of iontophoretic drug delivery and transdermal drug reception. The patch includes medical conductive fabric (1), conductive protrusions (2), medical conductive adhesive (3), etc. One side of the medical conductive fabric (1) exposes the conductive protrusions (2), while the other side is coated with medical conductive adhesive (3).

Distinguishing Technical Features and Actual Technical Problem Solved
Compared to Evidence 1, the distinguishing technical features are: the conductive medical adhesive tape (2) for connecting and adhering other press needles; the aforementioned conductive medical adhesive tape (2) is made of conductive adhesive (3) and coated fabric (4); the coated fabric (4) of the conductive medical adhesive tape (2) is a coated fabric with conductive properties.Regarding the actual technical problem solved, both the invalidation decision and the first-instance court believed that the actual technical problem solved was how to generate electrochemical current linkage over a large range. The second-instance court believed that the actual technical problem solved was how to utilize the inherent characteristics of human skin to improve the efficacy of press needles through electrochemistry.

Obviousness Judgment
The invalidation decision held that Evidence 2 discloses a patch with drug delivery function, containing conductive adhesive and conductive fabric used for drug delivery, providing technical motivation for the "electrical" part of the technical problem. The features related to expanding the electrochemical range were considered conventional technical means, thus lacking inventiveness. As the second-instance court commented: summarizing and refining it as "how to generate electrochemical current linkage over a large range" essentially equates technical means with the technical problem to be solved, thus deviating from the specific role and effect of the distinguishing technical features in Claim 1 of this patent. It is difficult to demonstrate and restore the derivation process and logic of technical thinking, failing to objectively and accurately reflect the innovation level that Claim 1 should possess. You might want to check how many examination opinions in your hands directly fill the technical problem column with the distinguishing features.

The first-instance court held that press needle technology belongs to the field of traditional Chinese acupuncture, which differs from the field of iontophoresis using current in Evidence 2. Therefore, even if Evidence 2, which uses conductive adhesive and conductive fabric, is similar to the conductive medical adhesive tape used in this patent, Evidence 2 should not be considered a technical solution in the same technical field as this patent and Evidence 1, and thus should not be combined with Evidence 1 and "conventional technical means" to deem Claim 1 of this patent lacking inventiveness.

The second-instance court held that Evidence 2 does not disclose the distinguishing features and cannot provide the motivation to "combine the distinguishing features with Evidence 1 to obtain Claim 1 of this patent to solve the above technical problem."

First, the technical path regarding current in Evidence 2 is different. In Evidence 2, the conductive adhesive and conductive fabric introduce external current, whereas the current conducted by the medical conductive adhesive tape in Claim 1 of this patent is a chemical current generated by human skin itself. The two differ significantly in current source, intensity, and path. In other words, one cannot assume that prior art provides motivation simply because both utilize "current."

Second, the function and effect of the current in Evidence 2 are different. In the technical solution disclosed by Evidence 2, the purpose of introducing external current is to ensure that drugs pass through the skin into the human body better and faster during "iontophoretic drug delivery and transdermal drug reception," i.e., how to improve the quality and efficiency of drug delivery. In contrast, the technical pursuit of "electrochemical current linkage" in Claim 1 of this patent is to enhance the efficacy of press needles through this electrochemical current linkage, without involving the technical conception of "using electricity to allow drugs to pass through the skin into the human body better and faster." Therefore, their mechanisms of action and achieved effects have substantial differences. Evidence 2 does not provide the technical motivation to solve the above technical problem through the above distinguishing technical features and thus combine with Evidence 1 to obtain Claim 1.

Furthermore, regarding whether the distinguishing technical features of this patent belong to conventional means. The view that "inserting two or more metal needle devices with connected needle handles into the human body to form electrochemical current linkage over a large range is a conventional technical means in the field of acupuncture" lacks sufficient evidentiary support and does not conform to the general cognition of technicians in this field, i.e., the field of acupuncture research and development.

Fourth, regarding the relevant appeal grounds concerning "technical field." The National Intellectual Property Administration and a certain medical technology company appealed, arguing that the first-instance judgment's relevant commentary that "this patent belongs to the category of physical therapy, while the iontophoresis method disclosed in Evidence 2 does not belong to this category" was incorrect, as both belong to the medical category, so there is no obstacle to combination in terms of technical field. In this regard, the court held that, relative to the combination of Evidence 1, 2, and common general knowledge, the key to whether this patent possesses inventiveness does not lie in whether the relevant technical solutions belong to the "physical therapy" category, nor in whether they involve "current," nor in whether they can achieve corresponding therapeutic effects. Instead, it lies in: 1. Whether the principle mechanisms, functional roles, and pursued or achieved technical effects of the distinguishing technical features of this patent and the corresponding technical features disclosed in Evidence 2 are substantially the same in their respective technical solutions; 2. Whether the distinguishing technical features belong to conventional technical means in the "acupuncture" field. If the judgment of inventiveness focuses on what constitutes "physical therapy," whether there is "current," whether it can "treat," and other issues with insufficient relevance, superficiality, or excessive generality, it will deviate from the focus of the dispute in this case and fail to touch the core of inventiveness judgment. Therefore, Evidence 2, being a technical solution in the field of medical devices, can be included by the National Intellectual Property Administration in the prior art literature of this field to evaluate whether this patent possesses inventiveness. However, the reason Evidence 2 cannot provide relevant technical motivation is not that it does not belong to the "physical therapy" category, but that it does not disclose the distinguishing features and cannot provide the motivation to "combine the distinguishing features with Evidence 1 to obtain Claim 1 of this patent to solve the above technical problem." The first-instance judgment's reasoning regarding differences in technical fields was insufficient. The appeal grounds of the National Intellectual Property Administration and the medical technology company regarding technical field, although valid, cannot thereby demonstrate that Evidence 2 has provided the corresponding technical motivation.