当業者が発明の課題を解決できることを認識できるように記載された範囲を超えており

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Herman

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Jun 25, 2017, 5:34:44 PM6/25/17
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This is from a demand for trial and describes the reason for
invalidation of certain claims

したがって、特許権者の主張した技術常識に基づくと、当業者が発明の課題を解決できることを認識できるように記載された範囲を超えており、特許法第36条第6項第1号に違反するものである。

What would be a good way to translate the above? (The sentence would
probably start with "Therefore, based on the technical common knowledge
asserted by the patentee, these claims...")

Incidentally, this references sec. 2.2.1.2 of the 審査基準, which states

実質的な対応関係についての審査は、請求項に係る発明が、発明の詳細な説明において発明の課題が解決できることを当業者(3.2(1)参照)が認識できるように記載された範囲を超えるものであるか否かを調べることにより行う。発明の課題が解決できることを当業者が認識できるように記載された範囲を超えていると判断された場合は、請求項に係る発明と、発明の詳細な説明に発明として記載したものとが、実質的に対応しているとはいえず、第36条第6項第1号の規定に違反する。
(http://www.jpo.go.jp/shiryou/kijun/kijun2/pdf/tjkijun_all.pdf)

WFIW, there is a semi-official (and semi-nonsensical) translation of the
above at https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/Guidelines/1_1.pdf
which reads

"Examination for the substantial correspondence relationship is
performed by looking into whether or not the claimed invention
exceeds the scope stated in the detailed explanation of the
invention in such a way that a person skilled in the art
(refer to 3.2(1)) could recognize that a problem to be solved
by the invention would be actually solved. In case determining
that the claimed invention exceeds the scope stated in the
detailed explanation of the invention in such a way that a
person skilled in the art could recognize that a problem to be
solved by the invention would be actually solved, the claimed
invention and the invention stated in the detailed explanation of the
invention are not corresponding with each other and the application
doesn’t comply with the requirement under Article 36(6)(i)"


Herman Kahn

Matthew Schlecht

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Jun 25, 2017, 6:50:43 PM6/25/17
to Honyaku
On Sun, Jun 25, 2017 at 5:34 PM, Herman <sl...@lmi.net> wrote:
This is from a demand for trial and describes the reason for invalidation of certain claims

したがって、特許権者の主張した技術常識に基づくと、当業者が発明の課題を解決できることを認識できるように記載された範囲を超えており、特許法第36条第6項第1号に違反するものである。

What would be a good way to translate the above? (The sentence would probably start with "Therefore, based on the technical common knowledge asserted by the patentee, these claims...")

My suggestion:

Therefore, based on the technical common knowledge asserted by the patentee, [these claims] exceed the stated scope by which a person skilled  in  the  art  could  recognize  that  the  problem to  be  solved  by  the  invention could actually be solved, which contravenes Article 36(6)(i) of the [Japan] Patent Act.

Matthew Schlecht, PhD
Word Alchemy Translation
Newark, DE, USA
wordalchemytranslation.com

Herman

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Jun 25, 2017, 8:36:20 PM6/25/17
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On 25/06/17 15:50, Matthew Schlecht wrote:
>
> したがって、特許権者の主張した技術常識に基づくと、当業者が発明の課題
> を解決できることを認識できるように記載された範囲を超えており、特許法
> 第36条第6項第1号に違反するものである。
>
>
> My suggestion:
>
> Therefore, based on the technical common knowledge asserted by the
> patentee, [these claims] exceed the stated scope by which a person
> skilled in the art could recognize that the problem to be
> solved by the invention could actually be solved, which contravenes
> Article 36(6)(i) of the [Japan] Patent Act.
>

I do not understand the English wording above. What is the scope by
which a person could recognize something?

Herman Kahn






Matthew Schlecht

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Jun 25, 2017, 10:17:37 PM6/25/17
to Honyaku
     At somewhat of a disadvantage here because some context is obviously in the surrounding text that is not supplied in your initial posting. For example, you mentioned "claims", but there is nothing in your source text that corresponds to the word "claims".
     My best guess is that this demand concerns a refiling or amended patent application, with a rewritten claims section, some of which or some portions of some of which exceed the scope of the original application.
     Patent law dictates that in an amended application, claims can be reworded if they still fall within the original scope; some claims can be dropped or narrowed, but no claim can be made that exceeds the scope of the original application.
     The claims matter must be detailed enough for one skilled in the art to be able to reproduce the invention; one could say that by reading the claims, one skilled in the art recognizes that the information provided therein is sufficient to achieve the object of the invention (i.e., solve the problem).  That said, if the claims are rewritten in greater detail while the original amount of detail was sufficient to enable one skilled in the art to reproduce the invention (recognize that the object could be achieved), then that additional detail is outside the original scope; it goes beyond the enabling matter, and according to the cited law is inadmissible.  The additional detail must either be removed, or the new/amended application is invalidated, or at least must be filed as a new application and lose the earlier priority date.

     If this is still unclear, I could cobble together an elementary example, but I didn't want to insult anyone's intelligence.

Mark Spahn

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Jun 25, 2017, 11:28:04 PM6/25/17
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On 6/25/2017 10:17 PM, Matthew Schlecht wrote:
On Sun, Jun 25, 2017 at 8:35 PM, Herman <sl...@lmi.net> wrote:
On 25/06/17 15:50, Matthew Schlecht wrote:
...

     If this is still unclear, I could cobble together an elementary example, but I didn't want to insult anyone's intelligence.

Matthew Schlecht, PhD
Word Alchemy Translation
Newark, DE, USA
wordalchemytranslation.com

- - - - - - - - - - - - - -
Aw, go ahead.  Intelligence insults welcome.  An example makes things clearer.
“I had a scheme, which I still use today when somebody is explaining something
that I’m trying to understand: I keep making up examples.”

Source:  http://studysuccessful.com/5-life-lessons-learn-richard-feynman/
-- Mark Spahn (West Seneca, NY)

Herman

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Jun 26, 2017, 1:32:11 PM6/26/17
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I think you misunderstood my question.

Article 36(6)(i) of the Patent Act stipulates that an invention recited
in the patent claims must also be described in the detailed description
of the invention, so contravening Article 36(6)(i) would mean that the
claimed invention has not been described in the detailed description,
and one specific type of case of "not being descried in the detailed
description" is stipulated in section 2.2.1.2 of the JPO examination
guidelines, which states

実質的な対応関係についての審査は、請求項に係る発明が、発明の詳細な説明において発明の課題が解決できることを当業者(3.2(1)参照)が認識できるように記載された範囲を超えるものであるか否かを調べることにより行う。発明の課題が解決できることを当業者が認識できるように記載された範囲を超えていると判断された場合は、請求項に係る発明と、発明の詳細な説明に発明として記載したものとが、実質的に対応しているとはいえず、第36条第6項第1号の規定に違反する。


This language is more or less verbatim quoted in the document I am
working on, which reads
"したがって、特許権者の主張した技術常識に基づくと、当業者が発明の課題を解決できることを認識できるように記載された範囲を超えており、特許法第36条第6項第1号に違反するものである。"

This does not have to do with an amendment exceeding the scope of the
originally filed application, but rather relates to cases where the
language of the claim is too broad and/or the detailed description is
too narrow, such as when a broad class of substances is claimed as
having a certain effect, but the detailed description only provides test
data or the like for one such substance, and a person skilled in the art
has no reason to assume (cannot recognize) that all the other substances
in the class will also have that effect (will be able to solve the
problem of the invention).

For the problematic part, "当業者が発明の課題を解決できることを認識できるように記載された範囲を超えており",
I put

"(these claims) exceed the scope of what has been described in such a
way as to allow a person skilled in the art to recognize that the
problem of the invention can thereby be solved"

I think the above is an accurate translation, but it seems rather clumsy
to me, so I was wondering if there is a better alternative.

I find the language "exceed the stated scope by which a person skilled
in the art could recognize..." to be unclear.

Herman Kahn


Alan Siegrist

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Jun 26, 2017, 2:09:10 PM6/26/17
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Herman writes:

> For the problematic part, "当業者が発明の課題を解決できる
> ことを認識できるように記載された範囲を超えており",
> I put
>
> "(these claims) exceed the scope of what has been described in such a
> way as to allow a person skilled in the art to recognize that the problem
> of the invention can thereby be solved"

This is much more understandable than the language in the semi-official English translation you posted earlier, but as you say, it is still a bit clumsy. Let's try some improvement:

"(these claims) exceed the scope of the description (in the Detailed Description section) that allows a person skilled in the art to recognize that the problem(s) to be solved by the invention can actually be solved thereby"

I hope that this is helpful to you.

Regards,

Alan Siegrist
Orinda, CA, USA

Herman

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Jun 26, 2017, 2:39:53 PM6/26/17
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On 26/06/17 11:09, Alan Siegrist wrote:
> Herman writes:
>
>> For the problematic part, "当業者が発明の課題を解決できる
>> ことを認識できるように記載された範囲を超えており",
>> I put
>>
>> "(these claims) exceed the scope of what has been described in such a
>> way as to allow a person skilled in the art to recognize that the problem
>> of the invention can thereby be solved"
>
> This is much more understandable than the language in the semi-official English translation you posted earlier, but as you say, it is still a bit clumsy. Let's try some improvement:
>
> "(these claims) exceed the scope of the description (in the Detailed Description section) that allows a person skilled in the art to recognize that the problem(s) to be solved by the invention can actually be solved thereby"
>

The wording "the description that allows" is problematic, since the
point is that there is no such description, so perhaps this can be
further improved as follows (although I still don't find this entirely
satisfactory):

"(these claims) exceed the scope of description that would allow a
person skilled in the art to recognize that the problem to be solved by
the invention can actually be solved thereby"

Herman Kahn

Matthew Schlecht

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Jun 26, 2017, 2:59:04 PM6/26/17
to Honyaku
     You're right, I misunderstood your question.
     How about:

"(these claims) exceed the described scope that would enable a person skilled in the art to recognize that the problem to be solved by the invention can actually be solved thereby"

     "Enable" is more familiar patentese, and "記載された範囲" looks a lot like "described scope" to me, especially since you mention there is no "description" per se.

Alan Siegrist

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Jun 26, 2017, 3:03:35 PM6/26/17
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Herman Kahn writes:

> >> For the problematic part, "当業者が発明の課題を解決できる
> >> ことを認識できるように記載された範囲を超えており",
> >> I put
> >>
> >> "(these claims) exceed the scope of what has been described in such a
> >> way as to allow a person skilled in the art to recognize that the
> >> problem of the invention can thereby be solved"
> >
> > This is much more understandable than the language in the semi-official
> > English translation you posted earlier, but as you say, it is still a bit clumsy.
> > Let's try some improvement:
> >
> > "(these claims) exceed the scope of the description (in the Detailed
> > Description section) that allows a person skilled in the art to recognize that
> > the problem(s) to be solved by the invention can actually be solved thereby"
>
> The wording "the description that allows" is problematic, since the point is
> that there is no such description

There presumably some sort of description in the Detailed Description section that supposedly describes how the problem(s) are solved. The problem here is that the description is not broad enough, i.e., the claims recite some element or combination of elements that supposedly solve the problem, but this claim to solve the problem is not backed up by a good enough (or adequate) description in the Detailed Description.

Thus, the description is inadequate and not broad enough in scope to back up the claims.

> so perhaps this can be further improved as
> follows (although I still don't find this entirely satisfactory):
>
> "(these claims) exceed the scope of description that would allow a person
> skilled in the art to recognize that the problem to be solved by the invention
> can actually be solved thereby"

For the sake of clarity, you might consider adding a phrase like "and thus the description is inadequate to corroborate these claims" if you can take enough liberties in your translation to do so.

Herman

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Jun 26, 2017, 4:02:42 PM6/26/17
to hon...@googlegroups.com
On 26/06/17 11:58, Matthew Schlecht wrote:
>
> "(these claims) exceed the scope of description that would allow a
> person skilled in the art to recognize that the problem to be solved
> by the invention can actually be solved thereby"
>
>
> "(these claims) exceed the described scope that would enable a person
> skilled in the art to recognize that the problem to be solved by the
> invention can actually be solved thereby"
>
> "Enable" is more familiar patentese, and "記載された範囲" looks a
> lot like "described scope" to me, especially since you mention there is
> no "description" per se.
>

Yes, "enable" would be better here.

As to 記載された範囲, I don't think it is appropriate to translate this as
"described scope", since the phrase ...認識できるように記載された範囲 does not
mean 範囲を記載して、当業者が発明の課題を解決できることを認識できるようにする,
i.e. 範囲 is not the direct object of 記載する. The unstated but contextually
implied direct object is 発明の詳細な説明.

Herman Kahn

Matthew Schlecht

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Jun 26, 2017, 4:14:41 PM6/26/17
to Honyaku
     Then perhaps:

"(these claims) exceed the scope that describes how a person skilled in the art would be enabled to recognize that the problem to be solved by the invention can actually be solved thereby"

Herman

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Jun 26, 2017, 4:35:05 PM6/26/17
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On 26/06/17 12:03, Alan Siegrist wrote:
>>> "(these claims) exceed the scope of the description (in the Detailed
>>> Description section) that allows a person skilled in the art to recognize that
>>> the problem(s) to be solved by the invention can actually be solved thereby"
>>
>> The wording "the description that allows" is problematic, since the point is
>> that there is no such description
>
> There presumably some sort of description in the Detailed Description section that supposedly describes how the problem(s) are solved. The problem here is that the description is not broad enough, i.e., the claims recite some element or combination of elements that supposedly solve the problem, but this claim to solve the problem is not backed up by a good enough (or adequate) description in the Detailed Description.
>
> Thus, the description is inadequate and not broad enough in scope to back up the claims.

That is correct, but the wording "the description that allows..." would
be logically inappropriate, since in this case, "the description does
not allow...."

Thus, in this case, wording such as "the scope of description that would
allow..." or "the scope of description enabling..." would be more
appropriate, albeit still somewhat awkward.

Perhaps another option is "the scope of matters which have been
described in such as a way as to enable..."

> For the sake of clarity, you might consider adding a phrase like "and thus the description is inadequate to corroborate these claims" if you can take enough liberties in your translation to do so.

That would be going too far.

Herman Kahn

Alan Siegrist

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Jun 26, 2017, 5:36:32 PM6/26/17
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Herman writes:

> Subject: Re: 当業者が発明の課題を解決できることを認識
> できるように記載された範囲を超えており
I understand that. But the problem with this clause seems to lie in that, for clarity in English, it might be best to state clearly that the description is inadequate to cover the claims (rather than convoluted language stating the opposite). So perhaps the clause can be reversed into something like this:

"the description (in the Detailed Description section) is of a scope inadequate to allow a person skilled in the art to recognize that the problem(s) to be solved by the invention can actually be solved (by the invention according to these claims)"

Stating it this way, it is very clear that the claimants claim that either the scope of the description must be expanded or the scope of the claims must be reduced.

I don't see the difference between "allow" and "enable" but certainly you can use "enable" instead if you prefer.

Matthew Schlecht

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Jun 26, 2017, 5:48:22 PM6/26/17
to Honyaku
On Mon, Jun 26, 2017 at 5:36 PM, Alan Siegrist <AlanFS...@comcast.net> wrote:

I don't see the difference between "allow" and "enable" but certainly you can use "enable" instead if you prefer.

Alan Siegrist

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Jun 26, 2017, 6:35:28 PM6/26/17
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Matthew Schlecht writes:

 

On Mon, Jun 26, 2017 at 5:36 PM, Alan Siegrist <AlanFS...@comcast.net> wrote:


I don't see the difference between "allow" and "enable" but certainly you can use "enable" instead if you prefer.

 

 

Thanks for the references, but I think this “enabling” or “enablement” is a different term of art in patents than the matter currently under discussion.

 

We are discussing whether the description is adequate to allow a person skilled in the art to realize or recognize that the claimed invention solves the problem. We are not touching on the issue of whether a disclosure enables the person skilled in the art to make and use (or “practice”) the claimed invention.

 

While I am no expert, it seems unwise to use a specific term of art (“enable”) where an ordinary English word (“allow”) seems sufficient and apt. There is a danger that a patent attorney or agent might mistake the issue for one of enablement, which it is most definitely not.

 

Best,

Herman

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Jun 26, 2017, 6:54:58 PM6/26/17
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On 26/06/17 14:36, Alan Siegrist wrote:

>
> I understand that. But the problem with this clause seems to lie in that, for clarity in English, it might be best to state clearly that the description is inadequate to cover the claims (rather than convoluted language stating the opposite). So perhaps the clause can be reversed into something like this:
>
> "the description (in the Detailed Description section) is of a scope inadequate to allow a person skilled in the art to recognize that the problem(s) to be solved by the invention can actually be solved (by the invention according to these claims)"
>
> Stating it this way, it is very clear that the claimants claim that either the scope of the description must be expanded or the scope of the claims must be reduced.

The requirement is applied separately to each claim, so this would still
logically have to be formulated in terms of the claim.

The only way to achieve greater clarity and eliminate the awkwardness in
the English that I can see would be to change the "allow/enable" to the
negative or imperative form, e.g.

"The claimed invention exceeds the scope of the description, which does
not allow a person skilled in the art to recognize that the problem to
be solved by the invention can actually be solved thereby."

or

"The claim exceeds the scope of the detailed description, which must
enable a person skilled in the art to recognize that the problem to be
solved by the invention can actually be solved thereby."


Herman Kahn

Joshua Rothenberg

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Jun 27, 2017, 9:17:30 PM6/27/17
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On Mon, Jun 26, 2017 at 1:32 PM, Herman <sl...@lmi.net> wrote:
For the problematic part, "当業者が発明の課題を解決できることを認識できるように記載された範囲を超えており", I put

"(these claims) exceed the scope of what has been described in such a way as to allow a person skilled in the art to recognize that the problem of the invention can thereby be solved"

I think the above is an accurate translation, but it seems rather clumsy to me, so I was wondering if there is a better alternative.

I find the language "exceed the stated scope by which a person skilled in  the  art  could recognize..." to be unclear.


Hi Herman,

This may also be clumsy, and perhaps not ideal for other reasons, but surely if the goal is simply to do whatever is necessary to simplify the grammar so that the result is comprehensible, it would be possible to do so if you are willing to be flexible about the "allow a person skilled in the art"?

For example:

(I suspect that you may not like these specific phrasings, but I am suggesting them as possible approaches to violently reorganizing the grammar of this sentence.)

1) "(these claims) exceed the scope of what has been described so as to be recognized to solve the problem of the invention by one skilled in the art"
(However, this changes "allow... to recognize" to "to be recognized," which you may object to.)

2) "(these claims) exceed the scope of what has been described such that one skilled in the art may recognize it to solve the problem of the invention"
(I don't really like the "this" I have inserted (which is intended to refer back to "what" but may look like an error), but this does allow "may recognize" which I suppose is closer to "認識できる".)

Joshua Rothenberg


Herman

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Jun 27, 2017, 10:18:08 PM6/27/17
to hon...@googlegroups.com
On 27/06/17 18:16, Joshua Rothenberg wrote:
>
> For example:
>
> (I suspect that you may not like these specific phrasings, but I am
> suggesting them as possible approaches to violently reorganizing the
> grammar of this sentence.)
>
> 1) "(these claims) exceed the scope of what has been described so as to
> be recognized to solve the problem of the invention by one skilled in
> the art"
> (However, this changes "allow... to recognize" to "to be recognized,"
> which you may object to.)
>
> 2) "(these claims) exceed the scope of what has been described such that
> one skilled in the art may recognize it to solve the problem of the
> invention"
> (I don't really like the "this" I have inserted (which is intended to
> refer back to "what" but may look like an error), but this does allow
> "may recognize" which I suppose is closer to "認識できる".)

I think option 1) above is pretty good. I find 2) somewhat hard to
understand.

For now, I am going with this more verbose rendering:

"these claims exceed the scope of matters described sufficiently to
enable a person skilled in the art to recognize that the problem of the

Mika Gmail

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Jun 29, 2017, 6:36:19 PM6/29/17
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Sorry for coming in late, but regarding the verboseness, I'm thinking that "broader than the description" should equate to "記載された範囲を超えており."   

Herman

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Jun 29, 2017, 7:48:06 PM6/29/17
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On 29/06/17 15:36, Mika Gmail wrote:
> Sorry for coming in late, but regarding the verboseness, I'm thinking
> that "broader than the description" should equate to "記載された範囲を超
> えており."
>

I don't think "broader" is really appropriate in this case, because the
point here is that the detailed description is not adequate in the
respect of being ...認識できるように記載さている, i.e. a mismatch between the
claims and the detailed description, but not necessarily because the
claims are broader.

Herman Kahn



Mika J.

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Jun 30, 2017, 2:34:46 PM6/30/17
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I see what you mean by a mismatch.

"請求項に係わる発明が、発明の詳細な説明に裏づけされているものであるか否かについて審査するときは、 
「請求項に係わる発明」と「発明の詳細な説明に発明として記載されたもの」との実質的な対応関係について対比して検討される。"

With that said, here's a new fish on our chopping block:

したがって、(これは)
特許権者の主張した技術常識に基づくと、
当業者が発明の課題を解決できることを認識できる
ように[記載された範囲を超えており]、
特許法第36条第6項第1号に違反するものである。

Therefore, 
according to the technical rationales asserted by the patentee,
 (these claims) [are broader than the description] 
which informs those skilled in the art of solving the problems of the invention, 
thus contravening the patent law XXX.

II.IT IS IMPROPER TO IMPORT CLAIM LIMITATIONS FROM THE SPECIFICATION
“For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” 

"Goes beyond the scope" is another option, but is a bit boring for the sake of the argument....

Kirill Sereda

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Jul 1, 2017, 2:30:48 PM7/1/17
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Standing on the shoulders of giants (Matthew, in this case):

Therefore, [these claims] exceed the stated scope by which a person skilled in the art could recognize that the problem to be solved by the invention could actually be solved based on the technical common knowledge asserted by the patentee, which contravenes Article 36(6)(i) of the [Japan] Patent Act.

I think that "特許権者の主張した技術常識に基づくと、当業者が発明の課題を解決できること" should be taken as a whole.

Kirill Sereda
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Kirill Sereda

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Jul 1, 2017, 2:31:07 PM7/1/17
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特許権者の主張した技術常識に基づくと、当業者が発明の課題を解決できることを認識できるように記載された範囲

My parsing of the phrase is as follows:

"scope (範囲), within which [the invention] is described (記載された) such that (ように) it can be recognized that (ことを認識できる) a person skilled in the art (当業者が) can solve the problem of the invention (発明の課題を解決できる) based on (に基づくと) the common technical knowledge asserted by the patentee (特許権者の主張した技術常識)"

In other words, this is a certain range/scope of description. As long as the description remains within this range, the examiner can recognize that a person skilled in the art (PSITA) will be able to solve the problem based on prior art. When the description leaves this range, the examiner will say that the PSITA won't be able to solve the problem.

Kirill Sereda

-----Original Message-----
From: hon...@googlegroups.com [mailto:hon...@googlegroups.com] On Behalf Of Herman

Marc Adler

unread,
Jul 1, 2017, 2:31:35 PM7/1/17
to honyaku
On Sun, Jun 25, 2017 at 4:34 PM, Herman <sl...@lmi.net> wrote:
This is from a demand for trial and describes the reason for invalidation of certain claims

したがって、特許権者の主張した技術常識に基づくと、当業者が発明の課題を解決できることを認識できるように記載された範囲を超えており、特許法第36条第6項第1号に違反するものである。

This does look like it was written in a kind of shorthand way (the writer knows that the reader knows what he's talking about), but if your client allows a little iyaku leeway, this might work: 

​Accordingly, in light of the common technical knowledge asserted by the patentee, the claim goes beyond what is described in the specification in a way that would make it impossible for a person skilled in the art to recognize that the problem of the invention could be solved thereby, and thus violates Patent Law Article 36(6)(1).  


robincapps

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Jul 1, 2017, 2:32:10 PM7/1/17
to Honyaku E<>J translation list
To borrow language already suggested:

"(these claims) exceed the scope set forth in the detailed description of the invention that serves the purpose of enabling a person skilled in the art to recognize that the problem to be solved by the invention can actually be solved thereby"



-Robin Capps

Mika J.

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Jul 1, 2017, 6:09:54 PM7/1/17
to hon...@googlegroups.com
Could someone explain why the word "actually" is used by so many?  I know it's from the semi-nonsensical reference 'translation', but I don't see it in the source text.

したがって、特許権者の主張した技術常識に基づくと、当業者が発明の課題を解決できることを認識できるように記載された範囲を超えており、特許法第36条第6項第1号に違反するものである。

Mika Jarmusz 清水美香
      

Herman

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Jul 1, 2017, 6:26:00 PM7/1/17
to hon...@googlegroups.com
"these claims exceed the scope of matters described sufficiently to
enable a person skilled in the art to recognize that the problem of the
invention can actually be solved thereby"

The Japanese source has an implied topic 当該請求項に係る発明は, based on which
it is clear that 発明の課題を解決できる means 当該請求項に係る発明によって発明の課題を解決できる,
whereas the English requires an explictly reference ("thereby"), because
otherwise the text would imply that the problem can be solved not
specifically by this invention but in general, by whatever means.

However, "that the problem of the invention can be solved thereby" would
suggest that the point of the phrase is to say that "it is this
invention (and not something else) that can solve the problem", whereas
the intended sense is to say that "this invention can, in fact (indeed,
actually), solve the problem". Adding "actually" makes that sense clear.

Herman Kahn

Mika J.

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Jul 1, 2017, 7:46:27 PM7/1/17
to hon...@googlegroups.com
Yes, I can see the role "thereby" plays in the English output, although it is not found in the source text, either.   :)
  

Mika Jarmusz 清水美香
        English to Japanese Translator
        http://inJapanese.us

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