In patent prosecution before the China National Intellectual Property Administration (CNIPA), the quality of a response to an Office Action (OA) on patentability is critical, as it often directly determines whether an application will be allowed. A well-crafted response should not be limited to mechanically replying to each objection raised by the examiner. Instead, it should aim to persuasively demonstrate the novelty, non-obviousness, and technical contribution of the invention over the prior art. Set out below are several key considerations and strategies that may help increase the likelihood of allowance when preparing an OA response.

I. Analyzing the “Motivation to Combine” in Multi-Document Inventiveness Rejections

When an examiner cites multiple prior-art documents in combination to challenge inventiveness, the response should focus on whether a reasonable technical motivation exists that would have led a person skilled in the art to combine the teachings of those documents to arrive at the claimed invention.

In practice, many seemingly plausible combinations suffer from discontinuities in technical fields or problem orientations. For example:

Differences in technical fields. If the      technical field of a cited reference is remote from that of the claimed      invention, a person skilled in the art would generally lack motivation to      seek solutions across such disparate fields. This distinction should be      proactively identified by the applicant or inventors, as it is often      overlooked—whether inadvertently or deliberately—by the examiner.

Differences in technical problems      addressed. The same technical feature may be used to solve entirely      different problems in different references. Combining such features      without regard to their respective technical contexts often reflects      hindsight reasoning rather than a genuine technical motivation existing at      the time the invention was made.

In these circumstances, the key to an effective response lies in rigorously demonstrating that the proposed combination is neither logically justified nor driven by practical technical needs.

II. Emphasizing the Integrity of the Invention When Addressing “Conventional Technical Means” Rejections

Rejections asserting that certain features “belong to conventional technical means in the field” or are “easily conceivable by a person skilled in the art” have become increasingly common in CNIPA examination reports. Such assertions are often made without citation to specific prior-art documents.

A simple denial is generally insufficient to overcome these objections. Instead, it is necessary to deconstruct the examiner’s reasoning and establish non-obviousness from the perspective of the invention’s overall technical concept. Specifically, one should examine whether each step of modification—from the closest prior art to the claimed technical solution—truly constitutes a routine and straightforward choice requiring no inventive effort, as alleged by the examiner.

In many cases, these assertions oversimplify or fragment the invention, ignoring its internal unity as an integrated technical solution. Accordingly, the most persuasive rebuttal is to return to the essence of the invention by clearly explaining the non-obvious synergistic effects achieved by the overall technical solution, or by demonstrating the organic interrelationships among the claimed features. Taken together, these features often serve a technical objective that cannot be readily conceived through conventional thinking or simple aggregation.

III. The Role of Artificial Intelligence in OA Responses: From Auxiliary Tool to Analytical Assistant

Artificial intelligence (AI) has gradually been introduced into various aspects of OA response preparation. Initially, AI was primarily used as an efficiency-enhancing tool—for example, to translate foreign-language references or assist with grammar and stylistic review—thereby reducing preparation time. Its greater potential, however, lies in its evolution into an analytical and strategic assistant.

By leveraging big data analysis, AI can help patent attorneys rapidly identify relationships among technical features and may even provide preliminary assessments of the potential effectiveness of different response strategies. AI can also evaluate the logical coherence of a proposed response (for example, by applying the three-step test) and identify potential weaknesses that an examiner might challenge in subsequent examination stages, such as whether newly added features derived from the description represent routine choices in the field.

Although AI cannot replace human expertise in making final judgments on inventiveness, it can significantly reduce the burden of routine analytical tasks. This allows attorneys to focus more effectively on the core objective: crafting a compelling and well-reasoned argument in support of non-obviousness.