Asia Patent Alliance

Parameter inventions - requirements for claims and description

Parameter inventions are similar to selection inventions and inventions that are limited by numeric values, however parameter inventions are defined by a newly established parameter that has not been known before. At first we will introduce some examples of parameter inventions mentioned in the examination standard of the JPO.

Example 1 (Claims only)

(Case 1)

(Claim 1)
A stretched polypropylene film consisting of a mixed composition of (i) 60 to 90 weight percentage of crystalline polypropylene, in which the relationship between the percentage of isotactic content (P) and the fluidity index (Q) measured by a measuring device A is represented as 1.00≧ P>≧0.025log Q+0.940, and (ii) 10 to 40 weight percent of resin X.

(Case 2)
(Claim 1)
A stretched packaging film made of resin that contains biodegradable polymer, which satisfies Formula (1) Formula (1): 1.61na-1.78≧NS≧1.61na-2.43, (wherein NS refers to the plane orientation coefficient and na refers to the average refraction index. )

(Claim 2)
A stretched packaging film described in Claim 1, consisting of 20 to 40 weight percent of polylactic resin and 60 to 80 weight percent of resin X, which is stretched to 2.5 to 3.5 times its length and 1.5 to 2.5 times its width.


These claims fulfill the requirements for claim composition and also contain a practical example and detailed description of the invention. It can be assumed that these parameter inventions will be judged quite strict regarding the claim requirements especially in Japan and Korea.

According to the Japanese examination standard for parameter inventions it required to describe the parameter clearly and state a reproducible measuring/evaluation method of the parameter. Furthermore it is required to state the technical significance and the technical relationship between the effect of the invention and the scope of the parameter

Also, regarding the practical example, data showing the critical significance of the parameter is required. As the scope of the parameter is established newly, it is advisable to state that already known subject material does not belong to the scope of the parameter in order to fulfill the claim requirements.

Example 2 (Claims and corresponding office action)

(Claim1)
A stretched packaging film made of resin that contains biodegradable polymer, which satisfies Formula (1) Formula (1): 1.61na–1.78≧NS≧1.61na–2.43, wherein NS refers to the plane orientation coefficient and na refers to the average refraction index.

(Claim2)
A stretched packaging film described in Claim 1, consisting of 20 to 40 weight percent of polylactic resin and 60 to 80 weight percent of resin X, which is stretched to 2.5 to 3.5 times its length and 1.5 to 2.5 times its width.

Outline of the reasons for refusal

The detailed explanation of the invention states that if a stretched packaging film which is made of resin satisfies Formula (1) it is highly stretchable and easy to open. However, there is no ground for proving that any film, including a film of which the resin composition and stretch ratio are significantly different from those mentioned above, can solve the problem if only it satisfies Formula (1). Thus, the invention of Claim 1 exceeds the scope stated in the detailed explanation of the invention. Furthermore, in the detailed explanation of the invention, in light of the common general knowledge as of the filing, the relationship between the problem to be solved by the invention and the formula of claim 1 is not explained in a way that it can be understood substantially, so the technical significance of the invention of Claim 1 is unclear.

In this case the invention would be granted a patent if claim 1 was deleted. A claim like this that does not include all the requirements necessary to express the effect of the invention does not fulfill the support requirements. Also, if there are only a few practical examples that fulfill formula 1, the technical significance of the formula will be judged as unclear. In this case it is possible to fulfill the requirements for claims and specifications by providing sufficient practical examples under different conditions, among those practical examples that do fulfill the formula and examples that do not fulfill, it as well as an explanation of the technical significance of the formula