After an invention patent application enters the substantive examination stage, as a patent agent, one may receive at any time the first examination opinion notice (hereinafter referred to as "OA1") issued by the National Intellectual Property Administration. A common substantive issue in OA1 is the issue of creativity. Therefore, the focus here is on how to amend the claims and how to argue in the opinion statement during the OA1 process.

I. Situations Where No Amendment to the Claims is Necessary

Amending the claims implies a narrowing of the scope of protection of the claims. In accordance with the principle of maximizing the applicant's interests, amendments to the claims should be avoided whenever possible, especially when authorization can be achieved through argumentation without amending the claims. The following situations should not require amendments to the claims:

1. Evaluating Claim 1 with D1 + Common Knowledge
   In this case, the independent Claim 1 minus the prior art document D1 equals the distinguishing technical feature Q. The notice often vaguely states: "A person skilled in the art, based on Document D1 and in combination with common technical means in the field, would easily think of applying the distinguishing technical feature to Document D1 to arrive at Claim 1." Here, the distinguishing technical feature Q can often be divided into Q1 + Q2 + Q3, for example, Q1 is a compositional feature, Q2 is a methodological feature, and Q3 is a functional feature. Thus, the argument is that there is no record in common knowledge of Q1, Q2, and Q3 being combinable, nor is there any suggestion of combining Q1 + Q2 + Q3 with D1.

2. Evaluating Claim 1 with D1 + D2 + Common Knowledge
   In this case, the independent Claim 1 minus the prior art document D1 equals D2 plus the distinguishing technical feature Q. The notice often vaguely states: "A person skilled in the art, based on Document D1, is capable of finding Document D2 and, in combination with common technical means in the field, would easily think of applying the distinguishing technical feature to Document D1 to arrive at Claim 1." Here, the distinguishing technical feature Q can often be divided into Q1 + Q2, for example, Q1 is a compositional feature and Q2 is a methodological feature. Thus, the argument is that there is no record in common knowledge of Q1 and Q2 being combinable, nor is there any suggestion of combining D2 with Q1, D2 with Q2, or D2 with Q1 + Q2, respectively, with D1.

3. When the Distinguishing Technical Feature of Independent Claim 1 is Masked
   In this case, the product or method protected by Claim 1 is often not in the same technical field as the product or method disclosed in Document D1, or it is a product or method in a related technical field. Here, when comparing Claim 1 with Document D1, the notice often uses features A1, B1, C1, and D1 from Document D1 to "equivalently" match features A, B, C, and D in Claim 1, thereby deriving the distinguishing technical features Q1 + Q2 and determining the technical problem to be solved by Claim 1. In this situation, the agent must carefully analyze the specific circumstances instead of simply accepting the comparison. The analysis involves determining what the results of A - A1, B - B1, C - C1, and D - D1 are, i.e., finding that (A - A1) + (B - B1) + (C - C1) + (D - D1) = Q3. Thus, the distinguishing technical feature of Claim 1 relative to Document D1 is Q1 + Q2 + Q3. Next, the specific analysis involves checking whether Q1, Q2, and Q3 are recorded in Document D1, whether they are recorded and combinable in Document D2, and whether they belong to common knowledge. If necessary, during the argumentation, one can consider comparing A + B, C + D, or A + D, B + C as a single feature with Document D1 again to derive a completely different distinguishing technical feature from that given in the notice, which will be beneficial for the argumentation of creativity.

II. Overcoming Creativity Issues Through Simple Amendments

To achieve rapid authorization and overcome the creativity issues pointed out in the notice, amending the claims is a common approach. The following discusses several scenarios for simple amendments to the claims.

1. When the Notice Does Not Evaluate the Creativity of a Dependent Claim
   If the first examination opinion notice does not evaluate the creativity of a dependent claim, it implies that the dependent claim is creative. If this dependent claim directly cites Independent Claim 1, then Claim 1 can be directly deleted, and the dependent claim can be used as the new Independent Claim 1. If this dependent claim indirectly cites Independent Claim 1, for example, if the dependent claim is Claim 5, which cites Claim 4, which in turn cites Claim 3, which cites Claim 1, then a comprehensive analysis of the notice is required. First, determine whether the technical solution of Claim 5 indirectly citing Claim 1 is creative. If it is, then use the technical solution of Claim 5 citing Claim 1 as the new Independent Claim 1. If not, then determine whether the technical solutions of Claim 5 citing Claim 3 and Claim 5 citing Claim 4 are creative. If the technical solution of Claim 5 citing Claim 3 is creative, then delete Claim 1, merge Claims 3 and 5 as the new Independent Claim 1, and renumber the other claims accordingly. If the technical solution of Claim 5 citing Claim 4 is creative, then delete Claim 1, merge Claims 4 and 5 as the new Independent Claim 1, and renumber the other claims accordingly.

2. When the Notice Cites Multiple Prior Art Documents to Evaluate Creativity
   It is relatively common for the notice to cite multiple prior art documents to evaluate the creativity of the patent application. In this case, generally, the creativity of Claim 1 is evaluated using Document 1 or Documents 1 and 2, and then the limiting features of subsequent dependent claims are evaluated using one of the other prior art documents. At this point, the focus should be on analyzing whether the limiting features of the other dependent claims, apart from those evaluated for Claim 1, can be combined and whether there is any suggestion in the other prior art documents for combining these features. In other words, the agent should first consider merging the dependent claims evaluated for creativity by the other prior art documents in the notice as the new Independent Claim 1. In the argumentation of the opinion statement, it is easier to find reasons for non-combinability or contrary technical suggestions among these other prior art documents. Such arguments are persuasive.

3. Amending Multiple Independent Claims for Products, Methods, and Applications
   For invention patent applications with multiple independent claims, priority should be given to retaining the product claims. However, when the creativity of the product claims is difficult to argue or the prospects are not optimistic, it is necessary to shift focus and consider comprehensive amendments to the method or application claims. By adding features such as time, temperature, pressure, humidity, and environmental atmosphere, the prospects for authorization may improve.

In the process of patent agency, the methods for amending claims and arguing creativity are highly variable. This article only analyzes a few common situations for discussion with peers. Any inappropriate points are welcome for criticism and correction.