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＜第 6 回知的財産翻訳検定【和文英訳】試験＞標準解答
≪１級

5

★★★

-知財法務実務-≫［解答例］
We have received a first Office Action in the present application.
To summarize the Action briefly: The claimed invention of the present application
concerns a camera flash control unit and control method, in which the control unit adjusts thelens aperture automatically in response to ambient light conditions while keeping the shutter

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speed constant within certain predetermined limits.

Claims 1-4 are apparatus claims, andclaims 5-8 are method claims corresponding to the apparatus claims 1-4.
The Examiner has rejected all claims 1-8 because of lack of novelty over U.S. Patent
No. 6,543,210 to Nakamura.

In addition, the Examiner has also rejected claims 1-8 becauseof lack of inventive step, or as obvious over Nakamura in view of Kilby.
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Finally, theExaminer has rejected claims 1-8 as lacking adequate descriptive support and as beingindefinite.
The lack-of-novelty rejection
The Examiner asserts that the claimed invention is not novel over Nakamura.
Specifically, the Examiner argues that the language in claim 1 (an apparatus claim directed to20

the camera flash control unit), “wherein the control unit controls the drive unit so as to adjust
the lens aperture to a predetermined state while maintaining a predetermined shutter speed”, isdeemed to be functional, a statement of intended use, and a statement of a future act which
may or may not occur.

Accordingly, the language in claim 1 is afforded no patentableweight as it fails to structurally distinguish the apparatus claim from the apparatus disclosed
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by Nakamura.
With respect to this lack-of-novelty rejection, our preliminary review indicates that it
would be difficult to argue that the Examiner is mistaken in his or her characterization ofeither the prior art reference or the claimed invention.

However, we believe that we canovercome the rejection by incorporating the limitations of the dependent claims 2-4 and 6-830

into the independent claims 1 and 5, respectively.
the scope of patent protection.

As you are aware, doing so will narrow

Another drawback will be that the narrowing may open theavailability of equivalents of the narrowed element to future discussion. Please advise us
how you wish to proceed.
The lack-of-inventive-step rejection
35The Examiner has rejected claims 1-8 because of lack of inventive step, or asobvious over Nakamura in view of Kilby.

Specifically, the Examiner asserts that it would

have been obvious to those of skill in the art to combine the exposure device and method ofNakamura with the automatic exposure control system of Kilby to achieve the claimedinvention. However, we believe that there is no suggestion to combine the Nakamura and5Kilby references, and moreover, that the combination of the flash control unit with a constant
shutter speed represents more than the predictable use of prior art elements according to theirestablished functions. Please advise us how you wish to proceed.
The lack of adequate descriptive support and indefiniteness rejection
The Examiner has rejected claims 1-8 as lacking adequate descriptive support and as

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being indefinite; specifically, the Examiner contends that the structure and operation of thecontrol unit and the control method are unclear.
In response to this rejection, we have two main choices.

We can leave the claims

unchanged and argue that the claim language is considered to be clear in light of the state of
the art upon filing.
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Alternatively, we can amend the claims to clarify that the control unit

adjusts the size of the lens aperture automatically according to the ambient light level while
keeping the shutter speed constant, as described in the specification at page 17, lines 7-24 andas shown in FIGS. 2 and 3. Proposed claim amendments are appended below.
advise us how you wish to proceed.
(609 words)

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Please