treatise03

1. What is the best claim?

(1) What is the best claim?

(Assuming that substantive requirements such as novelty and inventive step are satisfied,) a claim that maximizes the scope of rights for an invented creation and satisfies the requirement of “clarity of the invention for which a patent is sought” as stipulated in Article 36, Paragraph 6, Item 2 of the Patent Act.

An “invention” is defined as a creation of a technical idea (Patent Law Article 2, Paragraph 1), and the meaning of “the invention is clear” means that the “technical idea” is clearly stated in the claims. The scope of rights is the scope of the technical idea disclosed in the claims. The specific embodiments disclosed in the specification do not define the scope of the rights.

(2) Claims capturing the essence of the invention

Describing an invention as broadly as possible means avoiding unnecessary limitations when describing the invention. This means not including unnecessary elements or describing them using unnecessary subordinate concepts.If a claim can be drafted without any completely unnecessary limitations, the invention concept defined by that claim is the “essence of the invention.” In other words, if a claim accurately captures this “essence of the invention,” it is the best claim.

The concept of “essential elements of the invention,” which is used as the criterion for determining the first requirement for the application of the doctrine of equivalents, is also considered to be the concept obtained by excluding unnecessary limitations from the invention described in the claims.In other words, the application of the doctrine of equivalents is affirmed when an object (method) that is not included in the scope of the invention defined by the language of the claims is recognized as an infringing object (method), and in such a case, the claims contain unnecessary limitations that are not part of the essence of the invention.First, the essential elements of the invention are extracted by excluding such unnecessary limitations, and then it is determined whether the essential elements are common to the subject matter (method). This is the determination of the first requirement mentioned above.

In other words, if the parts of the object’s structure that differ from the patented invention’s structure constitute the essential part of the patented invention, the object does not incorporate the essential part of the patented invention and thus does not infringe the patent. If the differing parts are not essential parts, they share the essential part of the patented invention, and other requirements for equivalence are assessed.

If such “essential elements of the invention” can be extracted and used to create claims, those claims would be the ultimate claims that leave no room for the application of the doctrine of equivalents (or where such application is unnecessary, as they can be addressed by literal infringement). This is because, once the first requirement is satisfied and it is determined that there are no differences in the essential elements, the subject matter (method) falls within the scope of literal infringement, having incorporated all the elements of the claims.

(3) The difficulty and possibility of claiming only the essential elements of an invention

Is it possible to create such an ultimate claim at the time of filing?

In the first place, at the time the inventor completes the invention, the essential and non-essential parts of the invention are not already identified within the invention.

The difficulty of accurately claiming only the essence of the invention stems from the difficulty of expressing the essence in words, as well as the fact that the technical level (prior art) necessary to grasp the essence of the invention is not yet clearly established at the stage of infringement litigation.

In other words, even if the invention is accurately understood, it is possible to inadvertently add unnecessary limiting elements or overly narrow the scope of the invention when describing its elements. Additionally, it is not uncommon for new prior art examples that were unknown to the inventor or applicant to be presented during the post-filing process.

If the first requirement of the doctrine of equivalents is affirmed in an infringement lawsuit and the other requirements are also satisfied, it is affirmed that the invention concept defined by the claim language includes both “essential elements” and non-essential elements of the invention. This means that it is necessary to extract the essence of the invention from the claim description, i.e., to exclude certain “limiting elements” described in the claim or to grasp the elements of a lower-level concept as part of a higher-level concept.For example, this would involve interpreting “U-shaped groove” as simply “groove” or ‘rubber’ as “elastic member.”

At the time of determining whether infringement has occurred, the essential elements of the invention are identified. Therefore, it is possible to extract the essential elements of the invention corresponding to prior art known at the time of filing, and thus it should not be impossible to create ultimate claims at the time of filing.

(4) Claims using functional expressions or claims based on higher-level concepts

One approach to creating ultimate claims that capture only the essence of an invention is to create claims using functional expressions or to create claims based on higher-level concepts.This involves describing the means (function + means) functionally rather than describing specific components, or describing the operation functionally (so that it becomes…), and also describing the claim using higher-level concepts of the components of the embodiment.

This is a common practice. When a particular component of an invention cannot be expressed by a single specific component, i.e., when specifying a specific component would result in excessive limitation, functional expressions or higher-level concepts are used to more accurately express the invention (technical idea).

However, this does not mean that all unnecessary limitations can be avoided through such functional descriptions or descriptions of higher-level concepts. For example, in the case of functional expressions, since functions also have higher-level and lower-level concepts, there is the difficulty of selecting the highest-level function within the scope of the invention. Nevertheless, it is at least possible to describe the invention using broader concepts than specific structural components.

When such functional expressions are used to bring claims closer to the ultimate best claims without unnecessary limitations, the boundary between clear claims and ambiguous claims that are deemed unclear becomes an issue. The goal of broadening the scope of rights as much as possible means avoiding limitations based on specific matters of narrow concepts, and the difference between the best claims and ambiguous claims is often very subtle.

Below, we will discuss the requirements for claim descriptions under patent law, then examine two court rulings while considering the boundary between the best claims with a broad scope of rights and ambiguous claims that cannot serve as a basis for defining the scope of rights.

The two district court judgments discussed here were issued nearly ten years apart, but their logical reasoning is consistent, concluding that the claims merely restate the problem or objective and cannot serve as a basis for defining the scope of rights.

2. Requirements for the description of claims under the Patent Act

Patent Act Article 36

Paragraph 5: The claims must specify, divided into individual claims, all matters deemed necessary to identify the invention for which the patent applicant seeks a patent. In this case, it is not prohibited for the description of an invention relating to one claim to be identical to that of another claim. (This does not constitute a ground for rejection, objection, or invalidity.)

Paragraph 6: The description of the claims must comply with the following items:

Item 1: The invention for which a patent is sought must be described in the detailed description of the invention.
Item 2: The invention for which a patent is sought must be clear.
Item 3: The description of each claim must be concise.
Item 4: The description must be made in accordance with other matters specified by the Ministry of Economy, Trade and Industry.

According to the Examination Guidelines, the purpose of the above provision in Item 2 of Paragraph 6 is that if the invention is not clearly understood, it is impossible to accurately determine patent requirements such as novelty and inventive step, and the technical scope of the patented invention is also difficult to understand.

In applying this provision, the description of the invention is first understood by considering the specification, drawings, and technical common knowledge.Here, “technical common knowledge” refers to matters that are generally known to those skilled in the art or evident from rules of experience. Therefore, technical common knowledge includes methods such as experiments, analysis, and manufacturing, provided they are generally known to those skilled in the art. Whether something is generally known to those skilled in the art is not determined solely by the number of documents describing the technology, but also by considering the level of attention paid to the technology by those skilled in the art.Furthermore, “technical common knowledge” is a broader term than “well-known or conventional technology.” (Extracted from the “Examination Guidelines for Patents and Utility Models” compiled by the Japan Patent Office and published by the Japan Institute of Invention and Innovation)

Furthermore, the examination guidelines state that “in the case of an invention relating to a product, matters used to specify the invention may include the combination of products or the expression form of the structure of products, as well as various other expression methods such as functions, properties, characteristics, methods, uses, and so on.Similarly, in the case of an invention relating to a method (a certain act or operation including temporal elements), in addition to using the form of expression of the combination of methods (acts or operations) as matters for identifying the invention, other forms of expression, such as the objects used in the acts or operations, may also be used.“ In such cases, ”whether the scope of the invention is clear when the claims include the identification of an object based on functions, characteristics, etc., is determined as follows.

If a person skilled in the art, taking into account the technical knowledge at the time of filing (including technical knowledge that can be understood as existing at the time of filing based on the description or drawings), can conceive of a specific object having the specified function, characteristic, etc., based on the matters specified in the claims for identifying the object in question(e.g., when it is possible to provide examples of specific objects with the same functions or characteristics that are well known, when it is possible to easily conceive of specific objects with the same functions or characteristics, or when the object is specified by means commonly used in the technical field to specify objects), the scope of the invention is considered clear.”

– Are the claims in the Locker Rental Case and the Magnetic Media Reader Case the best claims?

3. First Example [Rental Locker Case]

(Case No. 2564 of 1975 (Wa) Utility Model Infringement Prohibition, etc. Claim Case)

(1) Claim Description

(Filed in 1968, single-item system)

<Drawings>

Insertion Drawing 1

(4) Claims Using Functional Expressions or Claims Based on Higher-Level Concepts

When creating the ultimate claim that captures the essence of such an invention, one possible approach is to create claims using functional expressions or to create claims based on higher-level concepts.This involves describing the means (function + means) functionally rather than specifying specific structural components when describing the structure of the invention, or describing the operation functionally (e.g., “so that it becomes…”), and also describing the claims using higher-level concepts of the structural elements of the embodiments.

This is a common practice. When a particular component of an invention cannot be expressed by a single specific component, i.e., when specifying a specific component would result in excessive limitation, functional expressions or higher-level concepts are used to more accurately express the invention (technical idea).

However, this does not mean that all unnecessary limitations can be avoided through such functional descriptions or descriptions using higher-level concepts. For example, in the case of functional expressions, since functions also have higher-level and lower-level concepts, there is the difficulty of selecting the highest-level function within the scope of the invention. Nevertheless, it is at least possible to describe the invention using broader concepts than specific structural components.

When such functional expressions are used to bring claims closer to the ultimate optimal claims without unnecessary limitations, the boundary between clear claims and ambiguous claims that are deemed unclear becomes an issue. The goal of broadening the scope of rights as much as possible means avoiding limitations based on specific matters of narrow concepts, and the difference between optimal claims and ambiguous claims can be as thin as a sheet of paper.

Below, we will discuss the requirements for claim descriptions under patent law, then examine two court rulings while considering the boundary between the best claims with a broad scope of rights and ambiguous claims that cannot serve as a basis for defining the scope of rights.

The two district court decisions discussed here were issued nearly ten years apart, but their logical reasoning is consistent, concluding that the claim merely restates the problem or objective and cannot serve as the basis for defining the scope of rights.

(3) Judgment in the invalidity trial (from Reference Material 3)

The following is an excerpt from the decision in Case No. 4937 of 1975, rendered on May 2, 1977.

“The applicant first argues that the intermediate mechanism for transmitting motion between the action of inserting or removing a key and the action of moving a shielding plate, which is an indispensable structural element of the registered utility model in question, is not included in the scope of the utility model registration claim, and therefore the utility model registration violates Article 5, Paragraph 4 of the Utility Model Act. We will now examine this point.

Article 5, Paragraph 4 of the Utility Model Act stipulates that the scope of the utility model registration claim must only include matters that are indispensable to the structure of the invention as described in the detailed description of the invention, and there is no provision requiring the specific structure of the implementation example to be described. Therefore, it is not necessarily required to describe such matters, and it is also possible to describe a higher-level concept that encompasses the specific structure of the implementation example.Therefore, the fact that the intermediate mechanism is not described in the registered utility model in question does not constitute a violation of the provisions of Article 5, Paragraph 4 of the Utility Model Act, and the registration cannot be deemed invalid.”

(4) Consideration

(A) The judgment of the invalidity trial and the judgment of the district court
The decision of the invalidity trial mentioned above is a decision dismissing the claim (maintaining the patent). The judgment of the Tokyo District Court regarding the requirements for the description of the claims, which was made immediately after this decision, can be said to be the opposite of the judgment of the invalidity trial.

The decision held that the above claim does not violate the statutory requirements for description, while the district court’s judgment held that the description of the claim merely presents the problem, and that the expression is abstract, such that the content of the invention cannot be understood solely from the description in the scope of the utility model registration claim, and therefore cannot be deemed to indicate any solution to the problem.In other words, while the District Court did not explicitly state that the claim violated the description requirements, it effectively found the description to be deficient.

 It should be noted that the description requirements applicable to the claims in this case differ from the current standards mentioned in the above “2.” Specifically, the requirement is that “only matters indispensable to the configuration of the invention as described in the detailed description of the invention must be described,” rather than the current requirement that “the invention must be clear.”However, since the invention can be understood if the description includes only the matters that are indispensable to the structure of the invention as described in the detailed description of the invention, this difference in the description requirements is not considered a significant issue in this analysis.
（B) Regarding the District Court’s findings
(i) What is the problem with the “coin insertion port opening/closing device for a rental locker” in the present invention?

Whether the description of the claim is merely “a statement of the problem” must first be determined by accurately identifying the problem of the “coin insertion port opening/closing device for a rental locker” in the present invention.

The problem is to “prevent accidental coin insertion while the locker is in use, and to allow additional coin insertion by the user during use without opening the door by turning the key.” (How to solve this problem? Is the solution immediately apparent upon recognizing the problem?)

(ii) Can the above claim be said to directly state such issues or objectives?

If the claim were to state, “The feature of the invention is that the coin insertion port is open when the locker is not in use, closed when the locker is in use, and opened without unlocking when additional coins are inserted…,” this would merely restate the issue and would be no more than a statement of the issue.

However, the provision in the claims of the present invention that “a cover for opening and closing the coin insertion port is provided in conjunction with the action of inserting or removing the key” goes beyond merely presenting the problem and constitutes the disclosure of one “technical idea” for solving the problem.Whether it is merely a statement of the problem should be determined by first assessing whether the idea described in the claim could be immediately derived from the problem of the present invention without engaging in any creative activity. In this case, it is believed that the idea in question cannot be immediately derived.

(iii) Consideration based on current examination criteria

Under the current examination criteria, the question of whether a person skilled in the art could easily conceive of an embodiment of the invention based on the claims is difficult to deny in this case.

The interlocking of the “key insertion” operation and the opening operation of the “shielding plate,” as well as the interlocking of the “key removal” operation and the closing operation of the “shielding plate,” as understood from the claims, are considered to be capable of being conceived without assuming the level of skill of the skilled person. Furthermore, by referring to the specific examples (implementation examples) described in the specification, it is considered that the conception of other configurations of the same level would be further facilitated.

In other words, the intermediate mechanism is within the scope that can be specifically imagined based on the claim description and considering technical common knowledge. Furthermore, if the related structure between the operating rod 6 or crank rod 7 moved by the key (the intermediate mechanism) and the cover plate is presented, and a general explanation of force transmission mechanisms is provided, it is believed that even non-experts could conceive various mechanisms in a short time.

The district court ruling states that it is unclear from the claim description what kind of “intermediate mechanism” is required to link the action of inserting or removing the key with the action of operating the shield plate. However, it is also questionable whether the “intermediate mechanism” is considered essential as an embodiment of the present invention.

For example, by designing the shape of the key so that its tip or side directly presses a component with the function of the shielding plate, even the simplest mechanism with the fewest components could be considered possible. Additionally, the “biasing means” used in the examples is not essential, and it is also within the scope of the invention to ensure the normal shielding state of the shielding plate without using such means (e.g., a rotating mechanism with a weight).

In this way, if one understands the matters described in the claims (presentation of the problem-solving concept), it is possible to envision the examples of implementation, and if, by examining the examples of implementation in the specification, other configurations that are in a parallel relationship with them can be easily recalled, the claims should be considered to satisfy the requirements of the current provisions and examination criteria.

(C) Distinction from the assessment of inventive step
In the examination process for the present application, U.S. Patent No. 3050169 was cited. This technology shares the common feature of preventing coin insertion while the locker is in use (locked state), but it differs from the present invention in that the coin slot is not opened unless the key is not only inserted but also rotated.

The prior art disclosed in the cited U.S. patent serves as the basis for determining whether the present invention possesses inventive step over the prior art, and it is inappropriate to use it as a standard for assessing the claim’s disclosure requirements.In other words, based on the configuration described in the above prior art documents, it is deemed appropriate to conclude that the configuration of linking the “shielding” to the action of inserting or removing the key does not go beyond the scope of presenting the problem, and therefore, it is not appropriate to raise an issue regarding the requirements for claim description.The requirements for claim disclosure are determined based on whether the invention can be understood to the extent necessary to assess novelty and inventive step, as set forth in the aforementioned examination criteria. They are not determined based on the relationship with prior art discovered during examination. Such relationships with prior art should be considered as part of the assessment of inventive step.

(D) Regarding the scope of rights of the present invention
In the district court’s judgment, based on the assumption that the claims were inadequately described, the scope of rights was determined based on the detailed description in the specification and the contents of the drawings. Therefore, the conclusion was reached that the technology corresponding to one of the embodiments of the invention described in the claims falls within the scope of free use.

As mentioned above, assuming that the claim description clearly defines the invention and is not deficient, the subject device falls within the scope of the invention as described in the claims and constitutes literal infringement.

During the examination and trial process, the invention as described in the claims was deemed clear, and the scope of the invention (technical concept) as understood from the claims was examined, resulting in a determination that it possesses novelty and inventive step.The examination was not limited to the technical aspects of the examples of implementation. Therefore, the scope of the rights should be recognized within the scope of the invention as understood from the claims. If that scope is sufficiently broad, it would mean that the claims were well-drafted without unnecessary limitations.
(E) Summary of the subsequent proceedings of this case, which is not well known
This case was subsequently appealed, and a settlement was reached under favorable conditions for the plaintiff in the appellate court.Additionally, the invalidity trial concluded with the patent being upheld.

While the district court’s decision in this case has left the claims in question with the reputation of being a poor example—specifically, claims that were vague and thus narrowed the scope of protection—given the subsequent developments, this is not necessarily the case. The claims in question can be evaluated as good claims that secured a broad scope of protection consistent with the requirements for description, even during the trial and invalidity proceedings.

4. Second Case [Magnetic Media Reader Case]

(Heisei 8 (Wa) No. 22124 Damages Claim Case)

(1) Claim Description

<Drawings>
Inserted drawing 2

(2) Judgment on the scope of the claims

On December 22, 1998, the Tokyo District Court ruled that

“when the magnetic head is in the downward position, restricting the rotation of the magnetic head” merely describes the purpose of the present invention, which is to ensure that the magnetic head remains in a normal position even when it stops at the home position or end position,and that the abstract term “rotation restriction means” merely expresses the function or effect of the present invention, and does not clarify the specific configuration necessary to achieve the purpose and effects of the present invention.

Furthermore, as a general principle regarding the interpretation of claims drafted using functional or abstract expressions, the court stated as follows:

“If it is interpreted that all configurations capable of achieving the function or effect described in the claims are included within the technical scope of the invention, even configurations not disclosed in the specification that belong to the technical concept of the invention may be included within the technical scope of the invention, which could result in granting utility model rights beyond the scope of the invention as intended by the applicant.such a result would contradict the principle of the Utility Model Act, which holds that the exclusive right granted to the inventor under a utility model right is granted as compensation for disclosing the invention to the public.Therefore, when the scope of the utility model registration claim is described in the manner described above, the technical scope of the invention cannot be determined solely based on the description itself. Instead, the technical scope of the invention should be determined by referring to the detailed description of the invention in the specification and based on the technical ideas disclosed in the specific configurations described therein.However, this does not limit the technical scope of the invention to the specific examples described in the specification. Even if not described as an example, if the configuration can be implemented by a person skilled in the art (hereinafter referred to as “the skilled person”) based on the content of the description of the invention disclosed in the specification, it should be deemed to fall within the technical scope of the invention.

(3) Consideration

(A) Regarding the District Court’s findings
(i) The aforementioned judgment simply characterized the claim as “merely stating the purpose.”

First, what was the problem that the “magnetic media reader” of the present invention sought to solve?

The original problem identified from the entire specification is that “when the magnetic head is in a tilted state after rising and coming into contact with the magnetic recording medium, it takes time for the head to become vertical and begin normal sliding operation, resulting in reduced write jitter and incorrect recording and playback,” and that “there was a risk of the magnetic head colliding with the narrow window opening while tilted” (as detailed in the description).

Therefore, the original purpose of the present invention is to address these issues, enabling normal writing and reading immediately after the magnetic head rises, and preventing collision of the magnetic head with the window frame.

Furthermore, the achievement of this purpose must be based on the premise that the magnetic head is supported in a rotatable manner to follow the target object for recording and reading, which is the passbook.

(ii) If the “problem” and “purpose” are understood as described above, can it be said that the claims merely state those purposes or problems?

If the claims in this case were stated as, “characterized in that the magnetic head is raised to the sliding position and brought into contact with the magnetic recording medium in a non-inclined state…,” they would be considered claims that merely describe the purpose of the invention, as stated in the judgment. In other words, the content of these claims does not disclose any solution to the problem, and the invention cannot be considered clear.

However, the claims in this case are not merely a restatement of the purpose. Rather, the true purpose—to achieve a “magnetic media reader” that can instantly become vertical and begin normal sliding contact when the magnetic head rises and contacts the magnetic recording medium, without the need to widen the window opening—is not something that can be readily conceived merely by recognizing this purpose.The claims of the present case are considered to disclose the technical concept for achieving such a “magnetic media reader,” and therefore, the description of the claims is deemed to clearly disclose the invention.

 However, the reason why the claims were deemed to merely state the purpose in the present judgment is also considered to stem from the inadequacy of the description of the purpose in the specification.The purpose section of the specification states, “The present invention proposes a magnetic media reader that ensures the magnetic head remains in a normal position even when it stops at the home position or end position.” The matters described in this purpose section extend beyond the original purpose to include the technical concept for achieving the purpose, i.e., the solution itself.

In the process of completing an “invention,” it is generally necessary to first recognize the problem, followed by an examination of the causes of the problem. In some inventions, identifying the cause itself may directly lead to the creation of the solution. Therefore, accurately recognizing the cause of the problem can also be considered a part of the inventive process.

In the present case, the cause of the problem was recognized as being the state of the magnetic head at its descent position (the home position or end position where writing or reading does not occur), and the invention was created based on this recognition.Therefore, the statement in the “Purpose” section of the above specification, “to ensure that the magnetic head remains in a normal position even when it stops at the home position or end position,” i.e., to prevent the magnetic head from tilting at the descent position, is a means to achieve the purpose. If the “Purpose” section, which explicitly states the underlying idea for achieving the purpose, is taken as a given, and the original purpose is not assumed, the claims would indeed merely restate the purpose, and the invention could not be considered clear.

However, the true problem or purpose of the invention should be understood based on the prior art and the entire specification, and it is not necessarily required to always base the judgment on the description in the purpose section.

Nevertheless, in the present case, aside from the issue of the purpose section, if the problem is recognized, it may be possible to easily recall various solutions without even examining the claim structure, and thus the issue of inventive step should be considered separately rather than as an issue of claim disclosure (clarity of the invention).
(B) Judgment based on current examination criteria
Based on the current examination criteria, we will examine whether the description of the above claim clearly identifies the invention, rather than merely being a reversal of the purpose as described above.

Based on the invention described in the above claim, can a person skilled in the art easily conceive of an embodiment of the invention?In other words, based on the description of the “rotation control means that restricts the rotation of the magnetic head when the magnetic head is in the downward position and allows the magnetic head to rotate freely when the upper magnetic head is in the contact position with the medium,” can a person skilled in the art envision a specific example of the “rotation control means”?

This point cannot be deemed unreasonable, as it is similar to the “rental locker case” in the aforementioned Example 1. Considering the description of this claim, it is believed that those skilled in the art could envision various embodiments by taking into account “technical common knowledge.”Furthermore, referring to the examples described in the specification and drawings would make this even easier. Therefore, in light of the examination criteria, the invention described in the claim is clear. That is, it is clearly specified as the subject of the examination.
(C) Scope of the invention
In the case of the “magnetic media reader” in this case, the “magnetic head” is specified as the subject invention to the extent that it can be examined, such that the rotational regulation means that restricts rotation at the descending position and allows free rotation at the sliding contact position is clearly identified. It was determined that such means did not exist in any form in the prior art and could not be easily created by referring to other prior art, hence the registration was granted.Therefore, assuming that the determination of novelty and inventive step is appropriate, there is no issue with defining the scope of rights within the scope of the invention as described in the claims, and the subject matter constitutes an infringement of the invention as described in the claims.

4. Summary

(1) For the invention (device) described in the claims to be considered clear, it is sufficient that it is clear to the extent that novelty and inventive step can be judged, as stated in the examination criteria, and that the technical scope can be understood after the patent (registration) is granted.

Any further judgment should be made based on substantive requirements. Even if the claims are expressed in terms of functions or include elements of a broad concept (superior concept), the mere fact that they are vague should not be grounds for seeking the basis for the scope of rights in the description of the examples in the specification. This would contradict the purpose of the requirement that “the invention is clear,” as stated in the current law.

Even if a claim describes a broad range of inventions using functional expressions, if the invention can be understood as an idea, examination is possible. Furthermore, since claims that are broadly described make it more difficult to satisfy the conditions of novelty and inventive step, if they are too broad, they should be limited to satisfy those requirements. Such claims should not be deemed to violate the description requirements or be deemed ambiguous claims, resulting in the scope of rights being narrowed after patent (registration).Such a determination would be unfair to the rights holder who obtained the rights by creating claims that were as broad as possible to pass the examination.

Furthermore, claim drafters typically strive to create the ultimate best claims, and if ideal claims that do not require the application of equivalents—i.e., claims that only claim the essential elements of the invention—are easily deemed ambiguous, this could lead to a overall lowering of the level of claim drafting.

In this regard, the claims in the above two cases should be evaluated as good claims, as they at least avoid unnecessary limitations as much as possible. If such an evaluation is not made, it would be necessary to claim all technologies corresponding to the examples, and even if the claims described above are included in the first item and claims corresponding to the examples are included in the subsequent items, there would be limitations.However, if there are issues with the balance between the broad scope of such claims and prior art, this should be considered as an issue of inventive step or novelty, and the scope of the claims should be narrowed.

(2) Flowchart for determining whether a claim is ambiguous or good(Attached to the last page)

First, determine whether the description of the claim (A) is merely a reversal of the problem.

 A claim that is merely a reversal is, as described again in the two examples above, “characterized in that when the locker is not in use, the coin insertion port is opened, when the locker is in use, the coin insertion port is closed, and when additional coins are inserted, the port is opened without unlocking…”or “characterized by ensuring that the magnetic head is in a non-inclined state when it rises to the contact position and comes into contact with the magnetic recording medium…”

For a clearer example, if the conventional technology involves a pencil with a circular cross-sectional shape, a claim stating “characterized by preventing the pencil from rolling…” is merely a restatement of the problem and does not present a solution.

If it is determined that the claim is not merely a restatement of the problem (No), the next step is to determine whether a person skilled in the art, as described in the examination criteria (B), could conceive of an embodiment by considering common technical knowledge. If the answer is yes, the invention as described in the claims is sufficiently clear to be the subject of examination and the basis for the rights.

Even if the claim is determined to be merely a restatement of the problem in the above (A) determination, there are cases where examples can still be imagined. For example, the claim “characterized by preventing a pencil from rolling” could potentially lead to various examples.However, despite not indicating any solution, the problem can be derived from the description, and it is clear that the technology lacks inventive step compared to prior art. Nevertheless, since such a description lacks the clarity required to assess novelty or inventive step, the examination is concluded as insufficient disclosure.

The judgment regarding (C) is not specified in the examination criteria, but even if (B) is determined to be “No,” if other embodiments can be recalled by referring to the description of the embodiment in the specification, it may be considered that the invention is clearly defined by the claim description, based on the relationship between the claim and the specification. This is my personal opinion.