How the Transition from Potential Rejection to Granting of Patent Rights was Achieved

A certain case involves lifting tools and lifting process of side plates of sintering machine. In the first office action, the examiner regarded the comparative document D1 as the closest prior art, in conjunction with the comparative document D2, concluded that all claims of the present invention lacked inventive step. Given the relative simplicity of the invention's technical solution, a tendency towards rejection was apparent.


In the first response, our agent modified the claims, merging two dependent claims into the independent claim 1, so that the new independent claim 1 further highlighted the invention points of the present invention. It was elucidated in the statement of response that the lifting tool of the present invention is suitable for the side plates with a specific structure and shape, which is distinct from those disclosed in D1 and D2. The structure of the lifting tool of the present invention is specially designed to adapt to the side plate, and the technical solutions of D1 and D2 cannot achieve the clamping and fixing of the side plate mentioned in the present invention. Although D1 and D2 both adopt a locking structure, the structure and function of the locking structure are different from those of the present invention.


In the second office action, the examiner maintained that all the claims of the present invention lacked inventive step. D2 was deemed the closest prior art. The examiner noted that both D2 and the present invention utilized hinged lifting tools, which clamped the lifted objects with flanges/edges, and split the distinguishing technical features into distinguishing feature (1) and distinguishing feature (2). For distinguishing feature (1), the examiner pointed out that the lifting tool in D2 was used to lift tires, and both sides of the tire had a rim akin to the edges in the present invention. Consequently, it was surmised that the lifting tool for lifting tires in D2 could also be used to lift the side plate with edges, and the difference in application objects was easy to think of. As for distinguishing feature (2), the examiner noted that D1 revealed the technical means of using bolts to achieve locking, and the effect of this technical means was the same as that of the locking structure in the present invention. Hence, D1was perceived to inspire the locking structure in D2. This led to the continuation of a marked tendency toward rejection in the second office action.


In summary, this invention has undergone two office actions, with a clear tendency towards rejection being evident. Our agent's analysis suggests that the present invention substantially differs from the current comparative documents; thus, rejection based on these documents would be unjustified. However, the examiner appears to have developed a subjective inclination to reject this invention. The challenge in subsequent phases will be to alter the examiner's perception and shift this inclination towards acceptance. The strategy and wording of the subsequent response are very critical, as two office actions have already been issued without substantial changes in facts, reasons, and evidence. Improper handling of the second response could easily lead to the direct rejection of the invention.


Moving forward, to circumvent a possible arbitrary rejection by the examiner, we opted to modify the claims, that is, to change the examination facts. However, these modifications were deliberately minimal to safeguard the applicant's rights. In the second response, we introduced a minor technical feature to Independent Claim 1, a feature that does not significantly alter the scope of protection offered by the claim. In our statement, we maintained that the overall structure of the lifting clamps and lifting tools disclosed in D1 and D2 is distinct from that of the present invention. All three are designed based on specific lifted objects, and their use are not interoperable. The bolt locking method mentioned in D1 is not applicable to the hinged lifting tool of D2, negating any suggestion of combined motivation from D1 and D2. Moreover, the bolt locking structure of the present invention can not only lock the lifting tool but also has an adjustment function to adapt to side plates with different sizes. In contrast, the bolt in D1 is solely for locking the glass plates. This distinction indicates that the locking bolt in D1 is different from the present invention and cannot offer technical inspiration.


In the third office action, the examiner still stated that all the claims of the present invention are not inventive. However, the examiner’s opinion has subtly changed. While still of the opinion that the lifting tool in D2 could lift the side plate of the present invention, the examiner lessened the emphasis on D1 providing technical inspiration for the inclusion of a locking mechanism, instead suggesting that implementing such a locking structure is a routine technical approach in this field. According to our agent’s analysis of the third office action, the examiner’s rejection intention is not as strong as before. Given that the locking structure is one of the invention points of this invention, the examiner's characterization of it as conventional technical means seemed unconvincing. We saw this as a potential breakthrough for securing authorization for the invention.


When making a response to the third office action, our agent did not modify the claims. Instead, in the statement of argument, we continued to emphasize that the lifted objects and working principles disclosed by the present invention and D2 are different. The lifting tool in D2 cannot achieve the technical effect of the present invention when lifting the side plate. At the same time, we underscored that the bolt locking method mentioned in D1 cannot be used for the present invention, and it cannot be improved on this basis. Therefore, there was neither a suggestion of combining the two nor could it be considered a conventional technical means in this field. Finally, following our response to the third office action, the examiner accepted our agent’s statement and authorized this invention.