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＜知的財産翻訳検定【第 6 回<和文英訳>試験】＞答案用紙★★★

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受験番号：06IPL005
科

目：「知財法務実務」==================================================================We have received a first Notice of Reasons for Rejection on the presentapplication.
We summarize the contents of the Rejection as follows.
First, the inventions recited in claims of the present application relate to theflash-controlling unit installed in a camera and the controlling method thereof.
The controlling unit is operable to automatically adjust an aperture of a lens inresponse to an ambient brightness level while keeping a shutter speed constant within aspecified range.
The current claims 1 to 4 of the present application relate to an apparatus, andthe current claims 5 to 8 relate to a method corresponding to the apparatus.
The Examiner rejects all claims 1 to 8 as the inventions recited in these claims
lack the novelty over USP 6,543,210 of Nakamura (hereinafter “Nakamura”).
In addition, the Examiner rejects claims 1 to 8 as the inventions recited inthese claims lack the inventive step over the combination of Nakamura and Kilby.
Further, the Examiner rejects claims 1 to 8 as the inventions of these claims
are not appropriately supported in the description of the specification, and these claims
are unclear.
<Rejection on the Novelty>
The Examiner points out that the claimed invention is not new over Nakamura.
Specifically, the Examiner indicates the wordings of claim 1 (an apparatus claim
relating to a flash-controlling unit installed in a camera), i.e., “the controlling unit forcontrolling the driving unit in a manner to adjust an aperture of the lens in a specified
condition while keeping a specified shutter speed”, are pertinent to the functional ordesired-purpose description.
predicted to happen.

The wordings relate to a future action which cannot beTherefore, the Examiner recognizes that an apparatus recited in

the apparatus claims of the present application cannot be structurally distinguishedfrom an apparatus disclosed in Nakamura due to the wordings of claim 1 of the present
application, thus, the apparatus of the present invention does not have thepatentability.

We have briefly reviewed the rejection on the novelty.

We think it is difficult

to argue that the Examiner mistakenly understands the respective features of thepresent invention and the invention of the cited reference. However, we alto think that
we can overcome the rejection by amending the independent claims 1 and 5 byincorporating the subject matters of the dependent claims 2 to 4 and those of thedependent claims 6 to 8 into the independent claims 1 and 5 respectively. As you areaware, such amendments cause the protective scope of the patent to be narrowed.
There will be other problem, in the future, concerning the effectiveness of theequivalents of the subject matters to be newly incorporated in the independent claims.
Please let us have your opinion as to how to proceed with the present application inview of the above.
<Rejection on the Inventive Step>
The Examiner also rejects claims 1 to 8 since the inventions of these claims
lack the inventive step over the combination of Nakamura and Kilby. In other words,
the Examiner points out that the present invention is obvious to a person skilled in theart by the combination of these cited references.

Particularly, accordingly to theExaminer, it is obvious for a person skilled in the art to achieve the present invention by
combining the exposure device and the method thereof of Nakamura with the automatic
exposure controlling device of Kilby.
Nakamura with Kilby.

However, there is no suggestion to combine

Further, the flash-controlling unit which is also capable ofkeeping the shutter speed constant is beyond a configuration used in predictableaspects in accordance with established functions of the conventional elements of thecited references.

We would also like to have your opinion as to how to proceed with thepresent application in view of the above.
<Rejections on Lack of the Appropriate Support of the Description and theUnclearness>
The Examiner rejects claims 1 to 8, since the inventions of these claims are notappropriately supported in the description of the specification and these claims areunclear.
Particularly, the Examiner points out the structure and operation of thecontrolling unit and the controlling method are unclear.
We propose two choices to comply with this rejection.

One is to argue theclearness of the wordings in claims without amending claims, in light of the state of theart at time of the filing of the present application.

The other one is to amend thecurrent claims in a manner to clarify that the controlling unit automatically adjusts a
size of the aperture of the lens in response to the ambient brightness level while keeping
the shutter speed constant, as disclosed in page 17, lines 7 to 24 of the specification andshown in Figs. 2 and 3.

The claim amendments proposed by us are shown below.

Please let us have your opinion as to how to proceed with the present application inview of the above.