1.Revised Examination Guidelines of JPO (October 22, 2003)
A quite few Notices of Reasons for Rejection include some objections citing inappropriate description due to a lack of correspondence between the claimed invention and the embodiments.
The revised Examination Guidelines (October 22, 2003) allowed the JPO Examiners to examine for a substantial correspondence between the claimed inventions and the inventions described in the Detailed Explanation of Invention regardless of the formal correspondence under Section 36(6) of Japanese Patent Law (cf.http://www.jpo.go.jp/tetuzuki_e/index.htm, "Examination Guidelines for Patents and Utility Model in Japan", PART 1, Chapter 1, Section 2.2, in Japanese:http://www.jpo.go.jp/shiryou/index_g.htm).
This increase in objections citing inappropriate description may be due to the revision of the Examination Guidelines.
2.Comments
Until recently, patent applications that included a copy of the claimed invention in the Summary of the Invention portion of the specification, did not commonly encounter inappropriate description objections. In practice, it is allowable to generalize from the embodiments in the patent application to the concept of the inventions.
However, as the numerous embodiments to be covered by a claimed invention increase, the less clear the correspondence between the embodiments and the claimed invention become.
Furthermore, it appears that Examiners who are not familiar with the technical field of the claimed invention have greater difficulty in finding the correspondence between a large number of embodiments and the claimed invention.
3.Countermeasures
1) Use identical words in both claims and the embodiments.
2) Include information to help the Examiner to see the correspondence between the claims and the embodiments.
3) Use reference numbers in the embodiments and the claims to show the correspondence between claim elements and the features in the embodiments.
Cf. What's New article "Descriptive requirements for claims in Japan" (Oct. 6, 2006)
