Translated by Rechwise Source from SIPO website
The PRB of SIPO made the decision No. 13643 of reexamination on June 12, 2008, with the application No. 03147052.1 and the application date of September 3rd , 2003.
During the substantive examination, the examination departments of SIPO made the rejection notification on February 16th, 2006. The claims 1, 29, 33 and 34 in Claims related to the rejection decision were as follows:(omitted)

The applicant (the reexamination requester) did not satisfy the rejection decision, and filed the request for reexamination on May 31, 2007. During the reexamination, the requester did not amend any documents. The collegiate panel thought the claims of such patent summarized a more broaden protection scope and the solution drafted in the description was implemented by a specific means. The requester submitted the following grounds for reexamination: (1) the table 2-5 of the application was just merely the design instances for realizing the above function, just as illustration, and the invention was not limited to these, the date in table 2-4 showed the instances for the lens with aperture of specific value and focus distance for lights with specific wavelength, while table 5 was utilized to manifest the effects of the lens of table 4; (2) according to the invention, the design made the lens inclined to produce the coma, and as the angular of the light incident to the lens altered, the coma would be happened, as such the incidence angular could be adjusted to correct the coma occurred by the inclination of the lens. Refer to table 2-4, it could be known that parameters for geometry shapes such as radius of curvature, thickness etc., of the surfaces of images surface of the objective lens surfaces of the lens were designed and some special material was utilized, and the above said function could be realized, furthermore the manners for designing the shape parameters of the surfaces and using the special material were common sense by the person skilled in the art, which was the procedure for geometry calculation and selection, so the description did not draft it.
The collegiate panel made the decision, in which it pointed out that (1) claim 1 was not supported by the description, which was not conformity with the provisions of article 26.4 of China patent law. The functional definition in claims that “at least one of the objective lens was deployed as......(omitted) ” summarized a broaden protection scope. According to paragraph 3.2.1 of section 2 part 2, while based on the description of this application, the objective lens which may achieve the function was implemented by the data in table 2-table 4 in the description, that was the objective lens was implemented by the specific manner. And the person skilled in the art could not understand such function could be performed by the other alternative means which were not drafted in the description, as so the technical feature of functional definition was not allowable, and claim 1 was not supported by the description. Based on the same reasons, claims 25, 28, 30, 33 and 34 were not supported by the description, and not conformity with the provision of article 26.4 of China patent law.
(2) The requester deemed that the data in the table 2-5 were merely for illustration, and the parameters for shape of the objective lens designed in table 2-4 was the common sense for the person skilled in the art, which was the procedure for geometry calculation and selection. With respect to this, the collegiate panel deemed that: firstly the requester manifested, in the observation, the application described that the lens was inclined to produce coma, and the coma would be occurred when the incidence angular which the lights were incident to the lens was changed, through design parameters for geometry shapes such as radius of curvature, thickness interval etc., of the surfaces of images surface of the objective lens surfaces of the lens were designed and some special material was utilized, so the incidence angular was adjusted to collect the coma which was induced by the lens’ inclination. It can be seen that how to design the parameters of the objective lens was the key for performing the above function. However, the description of such application did not mention any geometry calculation and selection determination to realize the shape parameters of objective lens and the utilization of specific materials, and the requester did not provide any evidences to prove the shape parameters for designing objective lens and the utilization of specific material was the common means by the person skilled in the art, and the description merely illustrate several tables for realizing the above function. So the person skilled in the art did not understand utilizing other alternative means unmentioned in the description to realize the said function, and the requester did not provide sufficient grounds.

Case analysis
Whether the specific means referred in the description could be broadened to function definition.
The technical solution of the claims to solve the technical problem was defined by the function definition, and did not define the structure of the product for implementing this function. Paragraph 3.2.1, chapter 2 part II of the examination of guideline stipulates that “usually, for product claims, features of function or effect shall be avoided as far as possible to be used in defining the invention. It is only when a certain technical feature cannot be defined by a structural feature, or it is more appropriate to be defined by a feature of function or effect than by a structural feature, and the function or effect can be directly and affirmatively verified by experiments or operations as stated in the description or by customary means in the art, the definition by features of function or effect in a product claim can be permissible”, and “technical feature defined by function in a claim shall be construed as embracing all the means that are capable of performing the function”. Therefore, the collegiate panel firstly considered that whether the application was supported by the provision of article 26.4 of China patent law in respect of claims.
The application presented the technical solution “……”, however, from the description, the herein “objective lens” did not mean all the objective lens, but the objective lens which needed to be designed especially, that is, to design the parameters for geometry shapes such as radius of curvature, thickness etc., of the surfaces of images surface S1S2S3S4S5S6 of the objective lens surfaces of the lens and to use specific materials to realize the above solution. Several tables contains the above parameters were illustrated in the embodiments of the description, then using the objective lens which had the parameters in these table could realize the above function. However, besides these tables, the description did not mention any geometry calculation and selection to realize parameters for shape of the lens surfaces and the procedure of utilizing the specific materials. Then the person skilled in the art could not know that how to design parameters of the objective lens to realize the function of this application. In other words, the person skilled in the art could not know any alternative data could be used to realize this function to substitute the data drafted in the several tables of the description. Even if have, the person could not understand how to obtain this substitute data. In the case where the requester did not provided any evidences to prove that the shape parameters for designing the surfaces of the objective lens and the utilizing of specific materials to realize the above function were the common means known by the person skilled in the art, such function definition obviously was not conformity with the provision of the guideline of examination, therefore, the PRB upheld the decision under the ground that such application did not conform to article 26.4 of China patent law.
In fact, since the structure of the optical picker was a relatively mature technology, with respect to the invention for application in the field of optical disc, the application for structure of the optical picker related to small changes and parameters of objective lens of the optical pickers relative to prior art. Under this condition, if the applicant was required to draft the concrete parameters into the claim, this would result in the claims protected narrower scope, so the function definition in claims in this field could be treated case by case. The applicant should make sufficient description in the specification, to inform that the person skilled in the art may use the substitute means which are not mentioned in the description, for examples, make description by examples about the implementing means which were common in the field and make abundant examples, if there are many manners, we can give examples in category and if there are some means which could not solve the problem, the applicant should pointed out, and the function definition of claims should exclude these means, or the description excluded these means by clear definition

(Intellectual Property Newspaper, Author: ZHANG Wei)

Source from SIPO website09-08-28
Translated by Rechwise