Chapter 2 Procedures of Examination
Sections 1 to 6 of this chapter explain the general aspects of the examination. The reconsideration by examiner before appeal proceedings is explained in Section 7. With regard to handling of Notice of Reason for Refusal accompanied by the notice under Article 50bis, see 3. and 4. in "Part VI Chapter 1 Section 2 Notice under Article 50bis".
Section 1 Specifying Claimed Invention
1. Overview
The examiner must first identify and recognize the technical content of the invention. This work is referred to as specifying an invention, which serves as the basis or presupposition for determination of the requirements of patentability of the invention (See “Part III Patentability”).
2. Specifying Claimed Invention
The examiner specifies the claimed inventions based on the claims. The examiner takes the description, drawings and the common general knowledge at the time of filing into consideration in interpreting the meanings of words in the claims.
Also, the examiner should carefully read the description, claims, and drawings of the application concerned and sufficiently understand the technical content of the claimed invention in this finding.
When any amendment is made to the description, claims, or drawings (in this part, hereinafter referred to as "the description, etc." throughout this Part), the examiner should sufficiently understand the content of the amendment.
Part I Chapter 2 Section 2 Prior Art Search and Determination of Novelty, Inventive Step, etc.
Section 2 Prior Art Search and Determination of Novelty, Inventive Step, etc.
1. Overview
The examiner conducts the prior art search in relation to determining novelty, inventive step, etc. of the claimed invention.
When the prior art search is to be conducted, the examiner first decides the invention regarded as the subject of the prior art search (in this part, hereinafter referred to as "subject of search" through this Part) from among the claimed inventions of the application concerned.
Also, in cases where information on relevant prior art documents is disclosed in the detailed description of the invention or search results and examination results of any foreign patent office, or search results of any registered search organization or prior art information provided by third parties is available, the examiner considers the content of such information and conducts the prior art search.
The examiner renders determination of novelty, inventive step, etc. on the basis of the results of the prior art search.
2. Subject of Search
2.1 Decision regarding subject of search
In the first round of examination, the matters of the claimed invention (Note) falling within the range to be
"Part II Chapter 2 Section 5 Ministerial Ordinance Requirement on Statement of Claims", "Part II Chapter 3 Unity of Invention" and 3. in "Part IV Chapter 3 Amendment Changing Special Technical Feature of Invention".
(Note) With regard to the claimed invention whose matters for specifying the invention (in this part, hereinafter referred to as "matters specifying the invention" throughout this Part) are expressed in the form of alternatives, the term "claimed invention" refers to the invention that is
recognized from the alternatives. The same applies to the subsections 2 and 3 of this section.
2.2 Matters to be considered in deciding subject of search
(1) The examiner takes into consideration the embodiments of the claimed invention as the subject of search.
(2) The examiner takes into consideration the matters reasonably expected to be added to claims by an amendment as the subject of search in view of the efficiency of the procedures until a decision to grant a patent is rendered.
2.3 Invention that may be excluded from the subject of search
Inventions that fall under any one of the following cases (i) to (vi) (in this part, hereinafter referred to as the "subject of exclusion" throughout this Part) may be excluded from the subject of prior art search.
However, with regard to the inventions for which the examination of the requirements other than Article 36(6)(iv) and Regulations under the Patent Act Article 24ter(v), Article 37 and Article 17bis(4) is to be conducted, the examiner should give due consideration such that the least number of inventions are excluded from the subject of the prior art search.
(i) Invention to which new matters have been clearly added (non-compliance with the requirements of Article 17bis(3))
(ii) Invention clearly directed to a category of unpatentable invention (violation of the provisions of Article 32)
(iii) Invention clearly not falling under the "invention" defined in Article 2 or invention clearly not industrially applicable (violation of the provisions of the main paragraph of Article 29(1))
(iv) Claimed invention whose statement is so unclear that the invention cannot be recognized even by taking into consideration the detailed description of the invention, drawings and common general technical knowledge as of the filing (non-compliance with the requirements of Article 36 (6)(ii))
(v) In a case where it is obvious that the statement in the detailed description of the invention is unclear or insufficient for a person skilled in the art to carry out the claimed invention, the invention directed to the part that cannot be carried out by the person skilled in the art due to unclear or insufficient statement in the detailed description of the invention (non-compliance with the requirements of Article 36 (4)(i))
(vi) In a case where it is obvious that the claimed invention exceeds the extent of disclosure in the description to which a person skilled in the art would recognize that a problem to be solved by the invention, the invention directed to the part that “exceeds the extent of disclosure in the detailed description of invention” (non-compliance with
Article 36(6)(i))
2.3.1 Points to note
(1) Even when the invention falls under the subject of exclusion from the prior art search due to clerical errors or minor deficiencies in the recitations of the claims, the examiner conducts the prior art search on the basis of the recognized invention as long as the invention that is not the subject of the exclusion can be recognized in light of the detailed description of the invention, drawings, or common general technical knowledge as of the filing.
(2) Even when the invention falling under the subject of exclusion from the prior art search, the examiner conducts the prior art search on the basis of the reasonably expected invention when it is reasonably expected that the invention will be excluded from the subject of exclusion as a result of any amendment changing the categories of invention or minor amendment to the statement in the claim.
(3) The examiner must not apply the above type (iv) to a case where the invention can be clearly recognized in light of the detailed description of the invention, drawings or common general technical knowledge as of the filing.
(i) Examples of inappropriate exclusion from the subject of search)
(i-1) A case where the claimed invention is not described in the detailed description of the invention due to a clerical error but the invention(s) not to be excluded from the subject of the prior art search can be correctly recognized in light of the description, drawings or common general technical knowledge as of the filing.
Example 1:
[Claim]
"An automatic brake system characterized by the fact that automatic braking control is performed in response to a distance d between a traveling own vehicle and a preceding traveling vehicle satisfying the following condition: d ³ th(v) wherein th(v) is a threshold determined in accordance with a speed of the own vehicle."
[Detailed description of the invention)
It is described that control of automatic braking is performed when d £ th(v) is satisfied.
(Explanation)
Since the direction of the inequality symbol of the claimed invention is different from that described in the detailed description of the invention, the recitation of the claimed invention is in appearance not described in the detailed description of the invention. However, it is found that the inequality symbol in the claim is a clerical error taking into account the statements of the detailed description of the invention as well as the common general technical knowledge as of the filing that the automatic braking control is carried out in response to the distance between the own vehicle and the preceding vehicle becoming equal to or less than a predetermined distance, so that the symbol should correctly be read as d £ th(v). Accordingly, the claimed invention is so recognized as such and the prior art search is conducted on the basis of the above.
(i-2) A case where the claimed invention is not an industrially applicable invention but the examiner can reasonably expect that the claimed invention be modified into an invention that is not to be excluded from the subject of prior art search.
Example 2:
[Claim]
"A method of treatment of disease A of humans using a pharmaceutical containing ... as an active ingredient."
(Explanation)
Since the claimed invention is a method of treating humans, it is not an "industrially applicable invention." However, it is reasonably expected that the claimed invention will be modified into an invention that is not the subject of exclusion from the prior art search by virtue of an amendment changing the categories of invention, such as "A pharmaceutical for treatment of disease A containing ... as an active ingredient." Therefore the examiner recognizes the claimed invention as such and conducts the prior art search based on the above finding.
(i-3) A case where the claimed invention is not clear but can be recognized in light of the detailed description, drawings or common general technical knowledge as of the filing.
Example 3:
[Claim]
"A hybrid car whose energy efficiency during electric traveling is from a% to b% wherein the energy efficiency is measured by an X test method."
(Detailed description of the invention)
The detailed description of the invention only describes a hybrid car including a controller that performs Y-control for a belt type continuously variable transmission, and it is stated therein that the energy efficiency of the hybrid car during electrical traveling falls within the range from a% to b% when the energy efficiency is measured using the X test method. Also, the belt type continuously variable transmission is a more specific concept of the continuously variable transmission, and it is described in the description that the controller performing the Y-control may be adopted in any continuously variable transmissions other than the belt type.
The definition of the X test method is also provided in the description.
(Explanation)
Even when the invention cannot be clearly recognized though the terms described in the claims are interpreted taking into account the description, drawings as well as common general technical knowledge as of the filing, it can be recognized, in light of the description, that the claimed invention is at least directed to a hybrid car comprising a controller performing Y-control for the continuously variable transmission, wherein the energy efficiency of the hybrid car falling within the range of a% to b% during electrical traveling wherein the energy efficiency is measured using the X test method. Accordingly, the claimed invention is so recognized in the prior art search and subjected to the search.
(ii)Examples of excludable subjects from the subjects of search
(ii-1) A case where the claimed invention is unclear and cannot be recognized even in light of the detailed description, drawings as well as common general technical knowledge as of the
filing.
Example 4:
[Claim]
"An invention as described in the description."
(Premise)
The examiner cannot recognize what kind of invention is specifically intended by the recitation of the claim even when the description, drawings as well as common general
technical knowledge as of the filing are taken into account.
(Explanation)
Given the above recitation of the claim, the claim language is not sufficiently clear to the extent that the invention can be clearly recognized even when the statement of the description and drawings or are taken into account. Also, an amendment that would take the claimed invention out of the range of subject of exclusion cannot be reasonably expected. Accordingly, the above claim may be treated as the subject of exclusion.
Example 5:
[Claim]
"My invention which is worth one million dollars"
(Premise)
The examiner cannot recognize what kind of invention is specifically intended by the recitation of the claim even when the description, drawings as well as common general
technical knowledge as of the filing are taken into account.
(Explanation)
Given the above recitation of the claim, the claim language is not sufficiently clear to the extent that the invention can be clearly recognized even when the description, drawings as well as common general technical knowledge as of the filing are taken into account. Also, an amendment that would take the claimed invention out of the range of subject of exclusion cannot be reasonably expected. Accordingly, the above claim may be treated as the subject of exclusion.
The examiner conducts the prior art search taking note of the examination guidelines regarding novelty (Article 29(1)), inventive step (Article 29(2)),secret prior art (Article 29bis) and prior application(Article 39) (see "Part III Chapter 2 Novelty and Inventive Step" to "Part III Chapter 4 Prior Application") and attempts to exhaustively find relevant prior art.
3.1 Procedures of prior art search
3.1.1 Points to note in conducting prior art search
(1) Where information on prior art documents related to the claimed invention is disclosed in the detailed description of the invention, the examiner should consider the content of the prior art documents before the prior art search.
With regard to the requirements for disclosure of information on the prior art documents (Article 36 (4)(ii)), see "Part II Chapter 1 Section 3 Requirements for Disclosure of Information on Prior Art Documents."
(2) Where search results and examination results of any foreign patent office, a report on search results by any registered search organization, and any information made available by the submission of information by third parties can be confirmed with regard to the application concerned, the examiner should consider and effectively utilize the content of the search report and the results of examination, etc.
3.1.2 Methodology of prior art search
(1) Among all documents falling in the relevant technical fields to which each of the claimed inventions pertains (domestic and foreign patent literatures (including those for which international publication has been effected) and domestic and foreign non-patent literatures), the examiner should, because of financial reasons of the prior art search, conduct search of a certain range of documents which the examiner, based on his knowledge and experience, expects and determines that the relevant prior art documents will probably be found in.
(2) The examiner should first search the technical fields in which it is most probable to find relevant prior art documents related to the claimed invention. In general, it is appropriate for an examiner to start the prior art search with the most closely relevant technical fields to the working examples disclosed in the detailed description of the invention, and gradually extends the search to less relevant technical fields.
(3) Whether or not the search should be extended from highly relevant technical fields to less relevant fields should be determined by the examiner with the already obtained search results taken into consideration. Where adequate prior art for reasonably denying novelty or inventive step could not be found as the result of the search of the highly relevant fields, the scope of search should be extended by the examiner to these fields if it is most likely that the prior art documents denying novelty or inventive step are found as the result of the search of less relevant technical fields.
(4) It may be revealed in the course of the prior art search that what was considered to be the subject of search at the beginning of search does not need to be treated as the subject of search (see "Part II Chapter 3 Unity of Invention " and "Part IV Chapter 3 Amendment Changing Special Technical Feature of Invention"). Accordingly, the examiner should evaluate the results of the search as appropriate and, if necessary, redefine the subject of search.
3.1.3 Completion of prior art search
The examiner conducts the prior art search for the invention recited in the claim set taking into account the matters that are reasonably expected to be introduced by an amendment. When a highly relevant prior art documents, etc. are obtained, or when it is determined that the probability that the more significant relevant prior art documents, etc. are found in the scope of the search became extremely low, then the examiner may conclude the prior art search (Note).
subjected to the examination in light of the aspects set forth in 2. in "Part II Chapter 2 Section 5 Ministerial Ordinance Requirement on Statement of Claims" (Article 36(6)(iv)) and 4.