1. Scope of the Patent Claims
“…A laser processing apparatus comprising a silicon wafer in which the slot along the aforementioned scheduled cutting line is not formed in the silicon single crystal structure portion…”
2. Excerpts from the Judgement
〈Part of Judgement concerning Addition of New Matter〉
Figures 1 and 3 of the specification etc. are plan views in which the line to be cut on the workpiece 1 is illustrated, but in both Figure 2, a cross-sectional view along the ⅠⅠ- ⅠⅠ line in Figure 1, and Figure 3, a cross-sectional view along the Ⅳ- Ⅳ line in Figure 3, it can be seen that no grooves are formed. …It can be said that the specification, etc., describes a laser processing apparatus capable of cutting a silicon wafer having no grooves along the scheduled cutting line in the silicon single crystal structure portion. In this regard, Amendment 1 does not introduce any new technical matter in relation to the matters described in the specification etc. …According to Figures 1 to 4, the “scheduled cutting line” is described, but the “groove” is not…If the invention before the correction is premised on the existence of a “groove,” then it is unnatural to describe a “scheduled cutting line” but not a “groove. …This correction satisfies the correction requirements.…
〈Part of Judgement concerning Inventive Step〉
It cannot be assumed that a person skilled in the art having access to the A11 document would discard from the substrate 201 the grooves 203 that cause internal stresses used for cutting semiconductor wafers. Not only is there no motivation to employ a substrate 201 without grooves along break lines as the object to be processed and to modify the surface of the substrate 201 without grooves on its surface so as to form a processing transformation portion formed on the internal side of the substrate 201, but also there should be rather a hindrance in such modification, and thus the composition of the invention 1 in relation to difference 2 is not reached from the A11 invention….
3. Some Consideration
1) Amendment, correction, division, priority claim based on drawings (addition of new matter)
In relation to inventions that can be read from the drawings in the patent gazette, at best, in a situation where “relationship of large and small”, “positional relationship”, “arrangement/direction”, “shape”, and “existence” can be read in some cases and not in others, and there are no court cases where “dimensions” can be read.
The trend in court cases is that elements related to the subject matter of the invention tend to be depicted with particular care and accuracy, making them easy to read, but do not expect too much. If the drawings incorporate some technical concept, it should be verbalized in the priority basis application.
Under these circumstances, this judgement is a court case of great significance because it found the “absence” of a groove from the drawings in the specification and determined that the requirements for correction of the excluded claims were satisfied.
2) “Excluded Claims” and Inventive Step
The case in which inventive step is recognized by excluded claims is limited to the case in which the difference between the invention and the primary reference is the very principle of solving the problem of the primary reference, and there is a hindrance to prevent the exclusion of the difference.
It is difficult to accept from the Examination Guidelines for patent and utility model by the JPO, and there have been only three cases in which this has been successful in court. Therefore, excessive expectations for excluded claims should be avoided. In addition, looking at the three court cases and the Examination Guidelines in Japan, it appears that amendments, corrections, etc. of excluded claims to secure inventive step are different from amendments, corrections, etc. to avoid violation of prior art effect, and that a basis in the specification of the application is required in order to satisfy the amendment, correction, division requirements without becoming an addition of new matter. All three cases concluded that an amendment or correction of excluded claims did not constitute “addition of new matter”, but they did consider the disclosure in the specification and applied it to the case.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
Attorney at Law & Patent Attorney
Nakamura & Partners
Room No. 616, Shin-Tokyo Building,
3-3-1 Marunouchi, Chiyoda-ku,
Tokyo 100-8355, JAPAN