Trilateral Project 24.1-Biotechnology 074

Generally, with respect to an application having a claim defined by a result to be achieved and a disclosure of only one specific means to achieve the result, the enablement requirement is judged regardless of the existence or absence of other later developed means.

With regard to the clarity of claim, see 1.1.1.1(1).

Even though a claim is clear and has no violation of the Patent Law Section 36(6)(ii), if "a person skilled in the art" who is supposed to have ordinary skill cannot understand how to carry out the invention on the basis of teachings in the specification (excluding claims) and drawings taking into consideration the common general knowledge as of the filing, such detailed description of invention should be deemed insufficient for enablement requirement. For example, if a large amount of trials and errors or complicated experimentation are needed to find a way of carrying out the invention beyond the reasonable extent that can be expected from a person skilled in the art who is supposed to have ordinary skill, such a description should not be deemed sufficient. (Implementing Guidelines I-1-3.2 (Note 2))

It should also be deemed insufficient for enablement requirement that a claim is directed to a generic concept with only a specific concept of the generic concept being described enablingly in the detailed description of the invention, and there is a concrete reason that the description of the mode for carrying out the specific concept do not make another specific concept covered by the claim to be carried out by a person skilled in the art, even taking into consideration common general knowledge as of the filing. (Implementing Guidelines I-1-3.2.2.2(1))

Inventive step of the claimed invention which defines a product solely by a result to be achieved should be denied when the result to be achieved is a well-known technical problem and a certain product to be defined by the result is either known to or easy-to-invent to a person skilled in the art as of the filing, unless otherwise inventive step can be positively inferred by other facts, even if a specific means to solve the technical problem is not known as of the filing. (Implementing Guidelines I-2-2.4.3(8))