PROJECT24.2 report (english version)

Report on Comparative Study Carried Out
under Trilateral Project 24.2

1. Introduction

1.1 Current situation of the three Offices

Computer software is one of the emerging technology, and the software industry is highly developing.

The three Offices have each examination guidelines for computer software related inventions.

The USPTO started applying its new examination guidelines for computer-related inventions on March 29, 1996.

The EPO uses examination guidelines published in 1985.

The JPO revised its examination guidelines for computer software related invention published in 1993, and published new guidelines on February 27, 1997. It started applying the new examination guidelines on April 1, 1997.

1.2 Abstract of the project 24.2

Under this current situation, the JPO worked as Leading Office according to the agreement of the Trilateral meeting in November 1995 and Trilateral comparative study of examination practices in the field of computer-related technology was conducted, employing two hypothetical applications.

It was conducted in view of Claim interpretation, Statutory subject matter, and, Novelty / Inventive step (Non-obviousness).

2. Hypothetical application 1

The hypothetical application 1 relates to "CURVE GENERATING METHOD USING TANGENT VECTORS".

There are 6 claims in the hypothetical application 1, and two kind of descriptions are employed (See Appendix 1.1).

The first description includes disclosures of a method of machining a three-dimensional curved surface (marked with underlines), but the second does not.

No Office fundamentally evaluated the two descriptions differently. For example, the EPO commented as follows:

"The difference of the two descriptions appears to be irrelevant for the claim assessment, since the original claims (especially claim 3) already include the machining context so that a person skilled in machining dose not need the underlined passages of the first description."

The USPTO also answered that the inclusion or exclusion of machining a three-dimensional curved surface in the description would not impact the stated rejections. The USPTO, however, noted as follows:

"[P]rudent attorneys would be well advised to include the underlined material in their disclosure when presenting claims directed to machining a three-dimensional curved surface."

Therefore, the comparative study based on the second description was not conducted.

2.1 Claim interpretation

Claim interpretation

claim	1	2	3	4	5	6
USPTO	1	1	1	3	1	3
EPO	1	1	1	4	1	1
JPO	1	1	1	1	4	1

1. The claim was literally interpreted; i.e. take all claim limitations into account.
2. "means or steps plus function" limitation was not literally interpreted (point out the corresponding part of written description.)
3. Statement of "intended use" in the preamble was neglected (point out the neglected part of the claim.)
4. The claim was not literally interpreted for the lack of clarity (explain) .
5. Others (explain).

Almost all claims were literally interpreted and ambiguous claims were interpreted appropriately and similarly among the three Offices.

The three Offices showed no difference in interpreting claim 1 through claim 3.

The USPTO neglected or did not give weight to statements of "intended use" in interpreting claims 4 and 6, which lead the USPTO to the different statutory subject matter evaluation from the other Offices.

As to claim 4, the USPTO neglected the statement of intended use in the preamble ("for machining a three dimensional curved surface") and thereby arrived at a claim having the same wording as claim 1. The EPO interpreted the claim as if it had included "machining of the three dimensional curved surface" as the final step.

As to claim 5, there was little difference in the claim interpretation. The JPO pointed out that the claim was ambiguous whether generated curve was displayed or three-dimensional curved surface was displayed. The JPO interpreted the claim 5 as displaying three-dimensional curved surface.

As to claim 6, the USPTO did not give weight to the statement of intended use in the preamble concerning a system comprising "a keyboard for data input, a processor, a ROM for storing a control program, a RAM, a working memory, an output unit for outputting generated curved surface data to an external storage medium, an address bus and a data bus".

2.2 Statutory subject matter

Statutory subject matter

claim	1	2	3	4	5	6
USPTO
EPO
JPO

In the hypothetical application 1, Two hypothetical prior arts were given. The prior arts have no effect on the evaluation of statutory subject matter at the USPTO and the JPO.

The EPO identifies closest prior art in evaluating statutory subject matter and it may be probable that the evaluation as to statutory subject matter would be dependent on the closest prior art.¹

The EPO employed a general purpose computer or conventional method described in the hypothetical application when it evaluated as to statutory subject matter based on hypothetical prior art No.1. When it comes to hypothetical prior art Nos.1+2, the EPO employed hypothetical prior art No.2.

In this case different prior art was identified depending on the choice of hypothetical prior arts (prior art No.1 or prior art Nos.1+2) and different logic was employed, but it has no effect on the result of statutory subject matter evaluation.

Although it is probable that the closest prior art has effect on the evaluation of statutory subject matter in the EPO, there was no difference in this case owing to the closest prior art.

Each three Offices evaluated claim1 and 2 as being non-statutory, and claim 3 as being statutory.

As to claim 4, the EPO and the JPO evaluated it as being statutory as well as claim 3.²³ The USPTO

neglected the intended use in the preamble (for machining ...), according to the Examination Guidelines for Computer-Related Inventions, IV.B.2.(d).(i) Intended Use or Field of Use Statements ( Claim language that simply specifies an intended use or field of use for the invention generally will not limit the scope of a claim, particularly when only presented in the claim preamble.), and thereby arrived at a claim having the same wording as claim 1. Since claim 1 was considered non-statutory, the USPTO considered claim 4 as being non-statutory as well.

The EPO and the JPO made a similar evaluation as to claim 3 and 4, however, the USPTO made a different evaluation between claim 3 and 4. This is because the USPTO neglected Intended use in the preamble.

As to claim 5, the USPTO and the JPO evaluated the claim giving weight to the word "displaying" in the claim. The USPTO analyzed in view of post computer process activity, and the JPO in view of information processing in which hardware resources are used. Both Offices concluded claim 5 as being non-statutory.

The EPO alone condidered the claimed method of improved smooth curve calculation for display by a computer as being statutory, locating the "conventional method page 5 of description second paragraph" as the closest prior art.⁴

Each three Offices evaluated claim 6 as non-statutory.
As to claim 6, the USPTO evaluated that it is computer program per se, the EPO evaluated that the objective problem lay exclusively in fields excluded from patentability, and the JPO evaluated that the claim has no matters which suggests, direclty or indirectly, how the hardware resources of the computer is utilized in the processing, then the processing falls under "mere processing of informarion by using of a computer".

2.3 Novelty / Inventive step (Non-obviousness)

Two hypothetical prior arts were prepared for evaluating Novelty / Inventive step (non-obviousness), and each Office evaluated the hypothetical application based on both prior arts. Firstly, Novelty / Inventive step (non-obviousness) was evaluated based on the prior art No.1, then prior art Nos.1+2.

2.3.1 As to prior art No.1

2.3.1 As to prior art No.1

claim		1	2	3	4	5	6
USPTO	novelty
	inventive step
EPO	novelty
	inventive step
JPO	novelty
	inventive step

having novelty		lacking novelty
having inventive step (non-obvious)		lacking inventive step (obvious)

Since the prior art No.1 discloses at most spline interpolation, the three Offices concluded all claims have novelty and inventive step.

2.3.2 As to prior art Nos.1+2

2.3.2 As to prior art Nos.1+2

claim		1	2	3	4	5	6
USPTO	novelty
	inventive step
EPO	novelty
	inventive step
JPO	novelty
	inventive step

having novelty		lacking novelty
having inventive step (non-obvious)		lacking inventive step (obvious)

The JPO stated that claim 3 and 4 fulfilled inventive step in view of machining curved surface, which made JPO's evaluation a little different from the other Offices.

3. Hypothetical application 2

The hypothetical application 2 relates to an automatic ordering system. There are five claims in the application (See Appendix 1.2).

3.1 Claim interpretation

Claim interpretation

claim	1	2	3	4	5
USPTO	2	2	1	2	2
EPO5	1 (4)	1 (4)	1 (4)	1 (4)	1 (4)
JPO	1	1	1	1	1

1. The claim was literally interpreted; i.e. take all claim limitations into account.
2. "means or steps plus function" limitation was not literally interpreted (point out the corresponding part of written description.)
3. Statement of "intended use" in the preamble was neglected (point out the neglected part of the claim.)
4. The claim was not literally interpreted for the lack of clarity (explain) .
5. Others (explain).

The USPTO interpreted claims 1, 2, 4 and 5 based on means or steps plus function limitation.⁶

The USPTO and the EPO at first pointed out ambiguity of the claims.⁷ The claims were modified, taking the above indication into account. The both Offices consequently answered that most ambiguity was resolved by the modification.

ambiguity was resolved by the modification.⁸

The USPTO also stated that the claim was not in accordance with 35 U.S.C. 112, first paragraph (written description and enablement requirements) since the software programming technology to enable one of ordinary skill in the art to make and use the invention was not adequately set forth. The USPTO explains as follows.

"The kinds of descriptions that are typically required in order to meet the written description and enablement requirements of 35 U.S.C. 112, first paragraph are highly fact dependent and must be assessed on a case by case basis. According to MPEP 2106.02 (at page 2100-9):

[w]hile no specific universally applicable rule exists for recognizing an insufficiently disclosed application involving computer programs, and examining guideline to generally follow is to challenge the sufficiency of such disclosures which fail to include either the computer program itself or a reasonably detailed flowchart which delineates the sequence of operations the program must perform. In programming applications [when the] software disclosure only includes a flowchart, as the complexity of functions and the generality of the individual components of the flowchart increase, the basis for challenging the sufficiency of such a flowchart becomes more reasonable because the likelihood of more than routine experimentation being required to generate a working program from such a flowchart also increases."

In this case, more detailed description of the software programming technology might be required in the US.

The three Offices may have another opportunity to study written description and enablement requirements of the software related invention in the future.

3.2 Statutory subject matter

Statutory subject matter

claim	1	2	3	4	5
USPTO
EPO
JPO

As far as system caim 2 is concerned, all three Offices come to the same conclusion that it is statutory.

The EPO evaluated only claim 2 as being statutory, and stated as follows:
"- The objective problem lies, at least partly, within the field of statistics and mathematics. It is debatable whether the objective problem lies also within an engineering field owing to the specific type of data and field of implementation. The skills needed to understand the objective problem and to conceive of the solution could be regarded as the skills of an electric power engineer and a mathematician. Giving the benefit of the doubt to the applicant, it is judged that claim 2 fulfils the requirements of A. 52(2) and (3) EPC."

As far as method caim 3 is concerned, all three Offices come to the same conclusion that it is non-statutory.

The EPO judges the contribution to the art, which for claims 1, 4 and 5 lie in the fields of business and/or mathematics that are excluded from patentability under A. 52(2) EPC, and therefore concludes that the claims are non-statutory.

The USPTO states claims except for claim 3 are statutory because they fall within "specific machines or manufactures."

The JPO comes to similar conclusions as to the USPTO, since the solution to the problem to be solved by the claimed inventions, with the exception of that for claim 3, are considered as "information processing in which hardware resources are used".

3.3 Novelty / Inventive step (Non-obviousness)

Novelty / Inventive step (Non-obviousness)

claim		1	2	3	4	5
USPTO	novelty
	inventive step
EPO	novelty
	inventive step
JPO	novelty
	inventive step

having novelty		lacking novelty
having inventive step (non-obvious)		lacking inventive step (obvious)

While the EPO and the JPO came to almost the same conclusions in judging the inventive step of the claims⁹, the USPTO considered all claims as being obvious.

Evaluation of Novelty / Inventive step (non-obviousness) among the three Offices were slightly different concerning sales condition limitation i.e. weather, entertainment, events at competitive shops or bargain sales.

The USPTO considered these limitations obvious. The other Offices considered most of the claims had inventive step. Paying attention to claim 2, however, it seems that the two Offices' evaluate claim limitation differently.

4. Conclusion

Concerning claim interpretation, the USPTO ignores statement of "intended use" (2.1 claim 4, 6), and does not literally interpret "means or steps plus function" limitation. The USPTO construe means or steps plus function limitations in accordance with 35 U.S.C. 112, six paragraph, as limited to the corresponding structure, material or acts described in the specification and equivalents. Accodingly, reference is made to the specification to determine what is encompassed by the claim language.

In the EPO and the JPO, there is no "means or steps plus function" limitation determined by the description.

As to statutory subject matter, there are cases in which the USPTO alone comes to a different conclusion (2.2 claim 4), and in which the EPO alone comes to a different conclusion (2.2 claim 5, 3.2 claims 1, 4, 5). Judging from above cases, there exist clear differences in the methods of interpretation and evaluation of claims for statutory subject matter among the three Offices.

There also exist clear differences in the evaluation of Novelty / Inventive step (non-obviousness) among the three Offices.

 

¹In the EPO the evaluation as to statutory subject matter is always dependent on the closest prior art, which is why the closest prior art must be identified. The only exception is when the clim 1 of hypothetical application 1, in which case no prior art need to be taken into account to decide that the claim is not allowable.

²The EPO comments that it could have come to the same conclusion as the USPTO. However the EPO, considering the claim to be unclear, adopted an applicant-friendly approach, clarified it with the description, and thereby arrived at a claim having basically the same wording as claim3. Since claim3 was considered statutory, the EPO considered claim4 as being statutory as well. If this had been a real application, the EPO would have insisted that the applicant amend the claim to overcome the lack of clarity.

³The JPO considered the intended use as providing enough limitation to consider the claim as it stands as it stands as being statutory.

⁴As stated in page4, lines 5 to 7, the EPO used different closest prior art in the evaluation of statuory subject matter in the two hypothetical caes, including for claim5.

⁵The claim modifications did overcome the EPO's clarity objectons, and the claim interpretation category for all claims changed "1".

⁶In the EPO and the JPO, there is no "means or steps plus function" limitation determined by the description.

⁷Answers of the EPO concerning claim interpretation as listed in Appendix2.1 relate to the orignal claim versions

⁸Since the modified version of the claims has all modifications suggested by the EPO, the EPO has literal interpretation of modified claim versions.

⁹Exception was claim 2, where the EPO saw a borderline case and decided for the applicant.

¹⁰Statutory subject matter concerning computer program encoded on a computer-readable medium, the practices of which among the three Offices are apparent, was not studied this time.