IP NEWS:SOEI Patent & Law Firm

Recently, the descriptive requirements for the claims in Japan have become stricter. Here, we introduce an objection that we received recently using the following simplified claim as an example:

1. A method of manufacturing a semiconductor device comprising:
forming a semiconductor layer on a substrate at a first temperature; and
heating the semiconductor layer at a second temperature higher than the first temperature.

The Examiner determined that the claim did not satisfy the descriptive requirements for the claims under Article 36 (6) (ii) of Japanese patent law that requires claims to be described clearly enough to identify the claimed invention.

This objection is due to the description “a second temperature higher than the first temperature.” Please note that the specification explains that an object of the invention is to provide a semiconductor device with a certain technical advantage. The above description includes the possibility that there is only an extremely small difference between the first and second temperatures. However, according to the Examiner’s comments, careful reading of the specification failed to make clear how the technical advantage is provided by this extremely small difference. Thus the Examiner asserted that it was impossible to understand a technical idea underlying this claim.

Many practitioners may find this objection difficult to understand because the description of the claim itself is quite clear. The examiner suggested that it would be necessary to limit the difference between the first and second temperatures to a specific numerical range that would provide the technical advantage described in the specification.

Indeed, the specification only discloses an embodiment that uses the second temperature that is higher than the first temperature by a certain range of temperatures such as 200-300 ?C to obtain the technical advantage. The specification also explains that it is possible to obtain the technical advantage by using a second temperature that is higher than the first temperature, but does not provide any theoretical reasons or experimental results that show the advantage can be obtained at all the possible values of the second temperature.

This example shows how examiners in Japan usually take into account the technical advantage of the invention when they evaluate whether a claim is appropriately clear or not. If the claims are written too broadly to ensure that the technical advantages described in the specification will certainly be obtained in all situations within the scope of the claimed invention, the claims will probably need to be limited during the prosecution.