Requirements for Numerical Limitations

Aki Ryuka
Japan Patent Attorney
Attorney at law, California, USA

For overcoming an office action by a numerical limitation, the following requirements must be met.

Amendment Requirements (Article 17bis (3), Examination Guideline IV2-3.3.1(3))
The new numerical range is included in a wider range that was described in the specification as filed, and the new boundary is either
 (i) explicitly stated as a boundary in the specification, or
 (ii) deemed described as the boundary in view of the descriptions of problems and effects.

Inventive Step Requirements (Article 29 (2), Examination Guideline III2- 4.6.2)
The effects that are provided within the numerical range are:
 (i) obtained throughout the numerical range,
 (ii) different in kind from the effects in prior art, or similar in kind but the quantity of effects inside and outside the numerical range are significantly different (critical significance), and
 (iii) unpredictable by a person skilled in the art at the time the application is filed.

Support Requirements (Article 36(6)(i))
It must be understood from the description that the effects are obtained throughout the numerical range. Even if the effects are obtained in a part of the numerical range, it is rejected for the lack of support requirements, if it is not understood that the effects are obtained in other parts of the numerical range (Examination Guideline II2-2.2.2(3)).

If the effects are argued in response to an office action, but it is doubtful whether the effects are obtained in a part of the numerical range, a decision of rejection can be issued for the lack of the support requirements as well as the inventive step requirements.

The issue is whether the effects are understood from the description, but not whether the effects are actually obtained. Accordingly, the rejection for the support requirements is not overcome, even if the experimental data is submitted. (Examination Guideline II2-