Source from SIPO website09-08-13
Translation by Rechwise
The request for reexamination related to an application for invention patent, titled “an erasable water soluble ink with rubber and the writing materials with the same” and No. 99125562.3(hereafter such application). The original examination division rejected such application on the ground that the independent claims 1 and 14 were lack of unity.
The related claims 1 and 14 in the rejection notification went like : 1. an erasable water soluble ink with rubbers for writing material components which includes water, water soluble polar solvent and granular adhesive dying resin, the granular adhesive dying resin includes pigment and adhesive resin, and at least one part of its surface is adhesive, and distribution of particle diameter of the granular adhesive dying resin is the particles within the range of 2～20μm are above 70% of all the particles weight.
14. an erasable water soluble ink with rubbers for writing material components, which includes granular adhesive resin, water, water soluble polar agent, and granular dye resin containing pigment, and distribution of particle diameters of said granular dye resin and granular adhesive resin are respectively the particles ranged from 2μm to 20μm were above 70% of all the particles weight.
The examiner found that in the rejection decision, claims 1 and 14 did not have same or corresponding technical feature, and addressed that (1)the applicant had already stated claims 1and 14 had same technical features “the distribution of particle diameter was the particles in the range of 2～20μm above 70% of all the particles weight by comparing claims, though the applicant ignored the subject of this technical feature, factually this feature was not an entire technical feature. It could be seen from the description that the subject of the above technical feature should be specific subject so as to the invention possessed novelty and creativity over the prior arts; (2)even if this same technical feature added subject (for example the granular adhesive dye resin in claim 1 and granular adhesive resin and granular dye resin in claim 14), such technical features could not be deemed as specific technical feature since granular adhesive dye resin, and granular adhesive resin and granular dye resin were entirely different technical features, for the concept of “granular resin” it occurred two different opinions, and related to two different technical solutions for solving the problems involved in the present invention, and the skilled in the art could not envisage another solution based on one solution. As such, “the distribution of particle diameter was the particles in the range of 2～20μm above 70% of all the particles weight” could not construct the specific technical feature.
The requester did not amend the application upon requesting the reexamination, in which the grounds for reexamination was as follows: (1) claims 1 and 14 had same specific technical feature “the distribution of particle diameter was the particles with the particle diameter in the range of 2-20μm above 70% of all the particles weight”, therefore, the present application had contributed that the distribution of particle diameter of the granular adhesive dye resin, granular adhesive resin and granular dye resin was the particles in the range of 2～20μm above 70% of all the particles weight, over the prior art published the technical solutions of the granular adhesive dye resin, granular adhesive resin and granular dye resin;(2) Even if the specific technical feature of claims 1 and 14 were deemed respectively as the distribution of particle diameter of the granular adhesive dye resin, the distribution of granular adhesive resins and granular dye resins, they should be deemed as corresponding specific technical features, since the present specification had already revealed the granular adhesive dye resin had two functions, one was adhesive, the other was dye, so that the skilled in the art should understand the granular adhesive dye resin and “granular adhesive resin and granular dye resin” had same function after reviewing the specification, and the granular adhesive resin and granular dye resin could be thought based on the technical solution claim 1. Therefore, claims 1 and 14 belonged to a general concept for invention, and they were related to technology.
After examination, PRB made a reexamination decision in which the rejection decision No. 12227 was vacated. The reexamination decision said this application protected solutions of claims 1 & 14 “erasable water soluble ink with rubber”, the technical features which were contributed to the prior arts compared with these two solutions should be initially determined. In accordance with the description in backgrounds of this specification, soluble ink composition meant that one type of ink compositions which included pigment and carrier that could be dissolved into water as main solvent. The US patent 5,661,197 of the prior art disclosed ink composition included dispersal color, while the US patent 5,621,021 disclosed an ink composition which include the resin with the viscosity 5～35mPa/s, film-forming temperature and glass transition temperature not over 0, granular dye resin with particle diameter in the range of 1-20μm and water. In addition, the search report during the examination of the original examination department of SIPO, pointed out the 5,661,197 US patent was recited as background reference. It could be known from these references that the prior arts had wholly disclosed that the ink composition which included water, soluble polar agent, and granular adhesive dye resin and the ink composition which included water, soluble polar agent, granular adhesive resin and granular dye resin, furthermore granular adhesive dye resin per se, and the combination of granular adhesive resin and granular dye resin provided functions of adhesiveness and dying.
According to these references, it could be known that the contribution claims 1 and 14 made to the prior art was not selecting components, but to determine the particles distribution range of the components having some specific function. That is, the specific technical feature of claim 1 was “the particle distribution of granular adhesive dye resin was the particles with the particle diameter in the range of 2-20μm above 70% of all the particles weight” and that of claim 14 was “granular adhesive resin and granular dye resin was the particles in the range of 2～20μm above 70% of all the particles weight”. In these two specific technical features, the particles were different; these two technical features were not the same specific technical features. However, the particles “granular adhesive dye resin”, and “granular adhesive resin and granular dye resin” of these two technical features provided adhesiveness and dying functions, the person skilled in this art could prospected these particles were same substances with same functions and effects in their respective solutions based on the knowledge of the art, and the particle distribution of these particles were satisfied the requirement “the particles with the particle diameter in the range of 2-20μm above 70% of all the particles weight”, this showed the technique were related, so as claims 1 and 14 had correspondence between the contributions to the prior arts. Particularly, the requester addressed that the two technical solutions solved the same technical problems based on the specifications, i.e. the requester believed that the 5,661,197 US patent had the defects that pigment particles were small to be deeply permeated and stuck in the paper resulting in the ink composition was difficult to erase with rubber; and the 5,621,021 US patent also had the defects that the particle diameter of the resin was not proper, which may be deeply permeated in the paper, however the requester found the solution to solve this problem was to provide the particles functioned as dying and adhesiveness with specific particles diameter, as to solve the problem the particles were not deeply permeated in the paper or to easily prevent them from deeply being permeated into the paper. In claim1, the granular adhesive dye resin had the functions of adhesiveness and dye, while in claim 14, the granular adhesive resin and granular dying resin had the same functions. It could be seen that the technical solutions had the association. Therefore, it recognized that the specific technical features of the claims 1 and 14 were corresponding and belonged to a general invention concept based on the contents of the drafting of the specification and the search report. So it complied with the provision of the article 31.1 of China patent law.

Case analysis
This reexamination case related to the determination of corresponding specific technical features during the unity examination.
As for the exception that for one application for invention or utility model should be confined to one invention or utility model, many patent laws in other countries allowed the applicants filed one application for two or more inventions or utility models which belonged to one general inventive concept. However, the inventive concept was a relatively abstracter concept. In many concrete cases, whether multiple solutions belonged to one general concept was difficult to grasp and determine. In order to improve enforcement consistence and operability, in practice, it was stipulated that the technical solutions which did not have the same or corresponding technical features did not possess unity, based on whether two or more inventions or utility models included one or two same or corresponding technical features. However, as one law term adopted in patent law legislation, the vocabulary “corresponding’ basically meant “coordination with each other or correlating with each other” in the “xiandaihanyu” dictionary, while the specific technical features among multiple technical solutions coordinating with each other or correlating with each other was one case where multiple solutions had unity. Additionally, as for inherent content of the unity, the “corresponding” specific technical feature should not be defined to the technical feature “coordinating with each other or correlating with each other”. Therefore, it was essential to further discuss the term “corresponding specific technical feature”. Such reexamination case gave us a proper chance and typical trouble to discuss, and the 12227 decision addressed different technical solutions belonged to the invention creation which had corresponding specific technical features so as to possess the unity.
In such case, the technical feature “the particles with the particle diameter in the range of 2-20μm above 70% of all the particles weight” in claims 1 and 14 was not a complete technical feature, so it could not be thought as a specific technical feature which realized the unity of two independent claims. Considering the background technology and the current status of prior art, the technical feature contained in claim 1 was “the particle distribution of granular adhesive dye resin was the particles with the particle diameter in the range of 2-20μm above 70% of all the particles weight” and that of claim 14 was “granular adhesive resin and granular dye resin was the particles in the range of 2～20μm above 70% of all the particles weight”. As affirmed in the Decision 12227, since the particles in these two technical features were different, so these two technical features were not same.
As for whether these two technical features belonged to “the corresponding specific technical feature”, the technical field, the technical problem and the technical means and its technical effects achieved by the technical solution defined by these two technical features should be wholly considered. From the description and the prior art drafted in the portfolio, the technical problem solved was exactly the problem settled in US patent 5,661,197 to solve that the small particles deeply permeated and stuck in the paper resulting in the ink composition was difficult to erase with rubber; and that in US patent 5,661,197 to solve the particle diameter of the resin was not proper, which may be deeply permeated in the paper. And in order to solve this problem, the particles distributed in specific diameter in claim 1 was granular adhesive dying resin, while in claim 14 the particles distributed in specific diameter was granular dying resin and adhesive resin, and the technical effects realized by these two technical solutions were the particles may not deeply permeated in the paper or easily prevent them deeply permeated in the paper. Summarized, the inventive concepts of claim 1 and claim 14 adopted the particles which had the functions of dying and adhesiveness, to solve the same problem in the background art, and possessed the same technical features, that was, these two features both contributed to particles with specific diameter distribution. Therefore, these technical features in claim 1 and 14 belonged to similar nature, solved the same problems, and had same contribution to the prior art, which should be affirmed as “the corresponding specific technical feature”.

(Intellectual Property Newspaper, Author: CUI Guozhen HE Leelee)