In a landmark case, the Supreme People's Court (SPC) IP Tribunal clarified that two reference documents which disclosed technical solutions that point to the same prior art could not be combined in an assessment of claim novelty because such a combination would create a prior art that had not been disclosed by either document yet existed in the mind of the assessor. This ruling established a unified jurisprudence on the need for separate comparison processes in such cases.
On 27 March 2019 the SPC IP Tribunal upheld the lower court's decision to repeal the China National Intellectual Property's (CNIPA's) invalidation decision in TONG Kening v Zhejiang Shuang Yu Industrial Ltd. The case was selected as one of the SPC IP Tribunal's guiding cases in 2019 and an SPC exemplary case on 16 April 2020.
On 10 May 2017 TONG Kening filed a request to invalidate Zhejiang Shuang Yu Industrial's invention patent (201410312457.6) before the CNIPA. On 23 October 2017 the CNIPA upheld the petition and declared that all of the patent's claims were invalid.
The patent at issue concerned a spray nozzle for cooling high-temperature fumes (eg, in a scrubbing tower). Claim 1 of the patent contained the following disputed feature:
a pair of inclined guiding walls 414 is provided on an inner wall of said annular spray nozzle base 41 relative to an end of a spiral recess 412, for guiding liquid to two liquid-diffusing guiding surfaces 413 at two sides of said annular spray nozzle base 41.
The patent embodiment (Figure 1) showed a triangular protruding plate (labelled 415 in Figure 1) within inclined guiding walls (labelled 414 in Figure 1).
Figure 1: embodiment of the patent at issue
The CNIPA held that:
- Reference Document 1 (Figure 2), which was a patent document, disclosed all of the features of Claim 1 of the patent at issue except for the inclined guiding walls; and
- Reference Document 2, which was from a periodical, disclosed the same spray nozzle as Reference Document 1 based on the similarity of the two spray models.
Figure 2: Reference Document 1
Although Reference Document 2 failed to describe the inclined guiding walls, the CNIPA opined that:
- the drawing in Reference Document 2 showed inclined guiding walls; and
- the spray effect of the model in Reference Document 2 was identical to that of the patent embodiment.
Therefore, the CNIPA inferred from Reference Document 2 that the spray nozzle shown in Reference Document 1 featured inclined guiding walls and concluded that Claim 1 was not novel in light of Reference Document 1.
The patentee challenged the invalidation decision before the Beijing IP Court.
The Beijing IP Court held that:
- Reference Document 1 failed to disclose the disputed feature, on the grounds that the similarity of the spray nozzles featured in the reference documents did not necessarily indicate that the spray nozzle configurations were identical;
- the reference documents failed to describe the disputed feature and a person skilled in the art would be unable to infer the disputed feature's presence directly and unambiguously from the drawings in Reference Document 2; and
- the fact that the spraying effects of the nozzles featured in Reference Document 2 and the patent embodiment were similar did not necessarily mean that such nozzles had an identical configuration.
On 26 February 2019 the Beijing IP Court concluded that Claim 1 was novel and revoked the CNIPA's decision.
The petitioner and the CNIPA appealed before the SPC IP Tribunal. The dispute focused on whether Claim 1 of the patent at issue was novel in light of the combination of the two reference documents.
The SPC IP Tribunal opined that where a claim's novelty is assessed through separate comparisons of prior art, the separate comparison principle should be observed. Even where evidence shows that the technical solutions disclosed in two reference documents point to the same prior art, the two documents may not be combined in a claim novelty assessment. This is because the technical solution disclosed in each prior art is independent. The combination of two documents which point to the same prior art in a claim novelty assessment would change the reference objects into a third technical solution which neither of the documents disclose but is instead created by their combination. This would blur the boundary between novelty and inventiveness and result in the erroneous identification of a reference object that exists merely in the mind of the assessor.
In this case, Reference Document 1 was a US patent document and Reference Document 2 was from a periodical. They were different documents which disclosed different technical content. Therefore, the SPC IP Tribunal found that such documents could not be combined in the claim novelty assessment, thereby creating a new technical solution, simply because both pointed to the same product. No evidence existed to prove that the two reference documents disclosed the same spray nozzle configuration.
The SPC IP Tribunal found that the CNIPA's findings were erroneous because they resulted in the de facto combination of the content disclosed in the two reference documents and therefore the formation of a new technical solution, which breached the separate comparison principle. Further, the SPC IP Tribunal stated that if the two reference documents disclosed spray nozzles that were of the same configuration and had been publicised before the filing date of the patent at issue, the petitioner should submit a complete technical solution as a prior art rather than combining multiple reference documents to form a new technical solution.
As defined by Article 22 of the Patent Law, 'novelty' refers to the property of a claimed invention or utility model that:
- is not part of any prior art; and
- is not disclosed in any existing Chinese patent application which has been filed prior to, but publicised later than, the filing date of such invention or utility model.
To assess novelty, the patent examination guidelines establish the separate comparison principle. This provides that each claim must be compared separately against the technical content disclosed in each prior art or previously filed and later published patent, rather than against a combination of such content or several technical solutions disclosed in one reference document.
The same guideline provides that the technical content disclosed in a reference document includes not only the technical content expressly described in such document but also the 'clearly and unambiguously inferred content' (ie, the implied technical content that a person skilled in the art can directly and unambiguously derive).
Although the guideline expressly prohibits the combination of reference documents in claim novelty assessments, it does not address the circumstance in which two reference documents point to the same product or object. The SPC IP Tribunal clarified that such documents cannot be thus combined and further stated that where multiple reference documents point to the same object, the petitioner should use a complete technical solution as a prior art rather than combining multiple reference documents to form a new technical solution.
