Amendment of Description, Claims and Drawings - Japan Patent Office

Part III Amendment of Description, Claims and Drawings
the invention in claims so that the limited matters fall under the generic concept conceptually of
the matter stated in the original description, the amendment does not introduce new technical
matters when the amendment does not clearly add any new technical significance. This is even
the case when the amended matter does not fall under either “matters explicitly stated in
originally attached description, etc.” or “matters obvious from the statement in the originally
attached description, etc.,” and this amendment is permitted.
[Example of prohibited amendment]
Example 1: Amendment for changing the matters used to specify the invention
Amendment for changing the phrase “when controlled means are not executed normally”
to the phrase “based on a negation signal in case control means are not executed normally.”
(Explanation)
In this example, the originally attached description, etc, merely states that, when the
control means are not executed normally, the absence of a positive signal lasts for a
predetermined period of time and a resetting signal occurs. This amendment adds a case of
occurrence of the resetting signal based on “a negation signal,” which is different from the no
signal state, and which is not, however, stated in the originally attached description, etc.
(Reference: A request for cancellation of decision of cancellation, Decision by the Tokyo High
Court, November 16, 2001 [Heisei 12 (Gyo Ke) No. 221], “Apparatus for controlling a pachinko
machine”)
[Examples of permitted amendment]
Example 2: Amendment removing part of the matters used to specify the invention
Amendment for changing “an impurity dispersion area that constitutes a source and a
drain” to “an impurity area that constitutes a source and a drain” in claims of the invention relating
to a semiconductor device made up of a double-hetero compound.
(Explanation)
In this example, the invention of the application relates to a semiconductor layer in an
active region consisting of a specific structure and material. The original claims incorrectly states
that a source and a drain consist of “an impurity dispersion area” in a limited manner. However, a
source and a drain are not limited to using dispersion. Any impurity area is sufficient, which is
obvious from the statement of the description. The amendment does not change the technical
significance of the invention at all.
(Reference: Decision by the Technical Board of Appeal, European Patent Office, T802/92 (OJ
1995,379))
Example 3: Amendment for limiting part of the matters used to specify the invention
Amendment changing “a recording or reproducing apparatus” in claims to “a disc
recording or reproducing apparatus.”
(Explanation)
In this example, what is stated in the originally attached description, etc. as an example
is a reproducing apparatus intended for CD-ROMs. It is, however, extremely clear that not only a
reproducing apparatus intended for CD-ROMs but also any disk recording and/or reproducing
apparatus may be applied in view of the description and other statement (the statement of
technology, etc. for reducing battery power consumption by adjusting the power supply when the
recording and/or reproducing apparatus receives no operation command).
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