In patent applications for inventions involving compositions, experimental data is almost indispensable. Its role is to support the technical effects alleged in the Description. Whether the overall arrangement of experimental data is rational and whether it can fully sustain the effects alleged in the Description not only affects the scope of protection that the patent can obtain during the examination process, but also directly relates to the difficulty of obtaining a patent grant.

This article analyzes this issue by combining a practical case handled by the author herself.

I. The Overview of the Present Application

This case pertains to an adhesive composition, which comprises two independent claims and four dependent claims.

Claim 1 specifies the types of four components in the composition, and also defines the structural formula of a specific type of epoxy resin mentioned in the following text.

Dependent claims 2 to 5 further specify the content ratios of each component and the content ratio relationship of the reactive groups.

Independent claim 6 protects a semiconductor device manufacturing method using this adhesive composition.

II. Examination Process

This application underwent three Office Actions, one Decision of Rejection, and one Notification of Re-examination before finally being granted. During the Second and Third Office Actionsand theNotification of Re-examination stages, the claims were amended respectively. Whereas, during the response to the First Office Actionand the submission of the re-examination request, the claims were not amended; only the opinions were stated.

■First Office Action

The examiner cited two reference documents and believed that none of the claims is non-obvious.

When responding to the First Office Action, no amendments were made to the claims, only arguments were presented.

■Second Office Action

The examiner did not introduce any new reference documents. However, she still indicated that all the claims lack inventive step. The examiner also believed that the effect data of the examples and comparative examples in the Embodiment of the Invention of the Description of the present application did not sufficiently prove that the improvement of the adhesive residuephenomenon was brought about by the specific structure of the epoxy resin. Therefore, the applicant's opinion statement lacked persuasiveness.

When responding to the Second Office Action, based on the description in the Description, a feature related to the glass transition temperature range of the adhesive layer formed by the adhesive composition was added to claim 1, and it was argued that: Reference Document 1 did not disclose this feature; although Reference Document 2 disclosed a similar glass transition temperature range, its purpose was to improve low-temperature adhesion, in contrast to this, thepresent application enabled the adhesive layer to achieve high elastic modulus by adjusting the glass transition temperature, accordingly, improved the adhesive residue phenomenon during peeling,thus achieved an unexpected technical effect.

■Third Office Action

The examiner did not introduce any new reference documents. She continued to indicate that all the claims lack an inventive step and believed that none of the examples or comparative examples of this application measured the glass transition temperature of the adhesive layer, thus unable to prove what better effects the selected temperature range brought about in this application.

When responding to the Third Office Action, additional features related to components of the adhesive composition were further added to claim 1, and it was alleged that this feature was not disclosed by any reference documents.

■Decision of Rejection

In the Decision of Rejection, the examiner held that the aforementioned added features were conventional technical means in the field and their effects were predictable to those skilled in the art.

When conveying the Decision of Rejection, the author, while providingthe client with the argument reasons, suggested that the client maysubmit supplementary experimental data, such as conducting effect testing after replacing the epoxy resin in the examples of this application with the type of epoxy resin described in the Reference Document 1, in order to prove the superiority of the technical effect of this application.

When submitting the request for re-examination, no amendments were made to the claims. Only opinions were presented. At the same time, the client submitted the following supplementary experimental data:

3 sets of data obtained from re-testing the examples in the Description of Reference Document 1using the effect test method described in the Description of the present application;

1 set of data obtained from re-testing a example in the Description of Reference Document 2 using the effect test method described in the Description of the present application;

3 sets of data obtained from effect re-testing after replacing the epoxy resin in the examples of the present application with the epoxy resin in Reference Document 1.

The results showed that none of the seven supplementary experimental cases achieved the desired effect of reducingadhesive residue.

■ Notification of Reexamination

In the Notification of Reexamination, the examiner did not raise the issue of inventive step again. Instead, she merely pointed out a deficiency that the claims lacked support from the description. When responding to the Notification of Reexamination, we made appropriateamendments to claim 1 based on the examiner's opinions. As a result, this application was ultimately granted a patent right.

III. Conclusion

This case demonstrates that experimental data play an irreplaceable role in the determination of the inventive step of the applied invention. It is not only an important basis for examiners to evaluate the inventive step, but also powerful evidence for applicants to refute the examination opinions. In this case, by replacing the epoxy resin in the examples of the present application with the epoxy resin from Reference Document 1 and conducting re-testing, it was successfully proved that the effect of improving the adhesive residue phenomenon was brought about by the epoxy resin with the structure defined in the present application. This allegation was ultimately recognized by the examiner.

Based on this, when dealing with patent applications that contain experimental data, it is recommended to focus on the following three points:

(1) When adding technical features to the claims, one should be cautious about using technical features whose expected effects are difficult to infer from the Description and lack experimental data support. This avoids the situation where the examiner refuses to accept them on the grounds that the effects have not been verified.

(2) If the Description lacks experimental data that supports the applicant's allegation, supplementary experimental data can be considered. Patent attorneys can also suggest to the applicant providing such data to enhance the persuasiveness of the argument. However, it should be noted that the supplementary experimental data must meet the conditions stipulated in the Examination Guidelines, namely, "The technical effect demonstrated by the supplementary experimental data should be something that a person skilled in the art can obtain from the disclosure of the patent application."

(3) When alleging the technical effects of this application based on supplementary experimental data, it is recommended to compare the experimental data in the prior art with the data of the examples of this application. Try to avoid merely comparing the internal examples of this application.

We hope the above content can provide useful references for handling patent applications for invention involving experimental data.