New era for new matter?

Identifying new matter is a critical aspect of patent prosecution in China ‒ a juristiction with comparatively strict identification criteria. Any discrepancy involving new matter can result in a patent application being rejected, or even a granted patent being invalidated. However, there are signs that evaluations are becoming more flexible, with examiners approving amendments based on information provided in figures and specific examples.

New matter
The new matter issue is set out in Article 33 of the Patent Law, which stipulates that:

“An applicant may amend [an] application for a patent, but the amendment to the application for a patent for invention of utility model may not go beyond the scope of disclosure contained in the initial description and claims.”

The scope of disclosure in the initial description and claims includes:

• the content explicitly described in the initial description and claims; and
• the content determined directly and unambiguously according to both the content described in the initial description and claims and the drawings of the description.

Amendment based on disclosed figure
Although the original disclosure of a patent application also encompasses figures, disclosures made thereafter are seldom incorporated into claims during prosecution. However, in the evaluation of Chinese Patent CN201010187743.6, an amendment which incorporated information in a figure was permitted.

The amendment added the following technical feature to the original claim: “the deoxidizing device comprises two Roots blowers, and the two Roots blowers are in parallel connection”. While not literally described in the original specification, this feature had been represented in a figure which showed:

• two Roots blowers in parallel connection; and
• three components ‒ a can, a valve and a pressure gage ‒ arranged between the deoxidising tower and blowers.

The three components were not delimited in the original claim.

Under past procedure, an examiner would likely have identified the difference between the deoxidising device disclosed by the figure and that of the original claim (ie, the three components between the deoxidising tower and the Roots blowers) as new matter. However, in this instance, the examiner permitted the amendment, reasoning that the figure clearly disclosed that the deoxidising device comprised two Roots blowers and the two Roots blowers were in parallel connection.

Further, as described in the specification, the three components were not closely associated with and had no synergic effect on other components in the deoxidising device. Therefore, the feature (ie, "the deoxidizing device comprises two Roots blowers, and the two Roots blowers are in parallel connection") was not necessarily associated with the technical solution disclosed in the figure and could apply to the original claim.

Amendment of numerical range based on specific example
Traditionally, re-generalising new embodiments by extracting technical features from specific examples has been prohibited. However, in the evaluation of Chinese Patent CN200910034899.8, a numerical range was redefined based on a specific example (referred to as 'Example 2').

The claim related to a method for efficiently and rapidly producing marsh gas using the anaerobic fermentation of crop straws. The method required a solid alkali, which could be:

• an organic solid alkali, inorganic solid alkali or compound of organic and inorganic solid alkalis; or
• a mixture of two of organic solid alkali, inorganic solid alkali or a compound of organic and inorganic solid alkali in any proportion.

Example 2 described a specific method for producing marsh gas using the anaerobic fermentation of crop straws, wherein the weight of Na/Al2O3 (an inorganic solid alkali) was 2 grams (g) and the weight of D301 macroporous weak base anion exchange resin (an organic solid alkali) was also 2g.

The amendment added the following feature to the original claim: “the solid alkali is a mixture of Na/Al2O3 and D301 macroporous weak base anion exchange resin with the weight ratio 1:1”. The weight ratio was not explicitly described in the initial specification.

Under past procedure, an examiner would likely have identified this amendment as new matter because the 1:1 weight ratio referring to the two components was not literally described in the initial claim or specification. Example 2 described only a specific method wherein the weight of Na/Al2O3 was 2g and the weight of D301 macroporous weak base anion exchange resin was also 2g. However, in this instance, the examiner permitted the amendment on the basis that:

• the initial claim had disclosed that the solid alkali could be a mixture of two of organic solid alkali or inorganic solid alkali in any proportion; and
• the specific example (ie, that the weight of Na/Al2O3 was 2g and the weight of D301 macroporous weak base anion exchange resin was 2g) demonstrated that the 1:1 weight ratio of the two components could be determined directly and unambiguously.