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Abstract:
This article will discuss how to determine whether the amendment of a patent application goes beyond of the scope of the initial description and claims, based on a sample case and its substantial examination.
Contents:
Article 33 of Patent Law provides that “An applicant may amend his or its application for a patent, but the amendment to the application for a patent for invention or utility model may not go beyond the scope of the disclosure contained in the initial description and claims, and the amendment to the application for a patent for design may not go beyond the scope of the disclosure as shown in the initial drawings or photographs.”
Section 5.2.3, Chapter 8, Part II of the Patent Examination Guidelines provides that “Specifically, if, after the addition, change and/or deletion of part of the contents of the application, the information as seen by a person skilled in the art is different from that described in the initial application and such information cannot be directly or unambiguously derived from that described in the initial application, such amendment shall not be allowable”
In other words, one rule to determine whether an amendment goes beyond the permissible scope is to see whether the amended information can be directly or unambiguously derived from the information described in the initial application. The determination of “directly or unambiguously derived” shall be judged from the point of view of a person skilled in this art.
In the substantial examination of a sample application, the examiner held that in a formula  ，the meaning of the mathematical symbol “*” was uncertain, as it can represent either “convolution” or “multiplication”, and the applicant did not clearly indicate the meaning of the symbol “*” in the description and claims. So the examiner held this claim to be unclear.
According to the illustration of the meaning of this formula in the application, the applicant indicated to the examiner that this symbol “*” should represent “multiply” and amended the symbol “*” to the mathematical symbol “×”.
However, the examiner believed the mathematic symbol “×”was not recorded in the initial description and claims, so such amendment went beyond the scope of disclosure in the initial description and claims, and was not in conformity with Article 33 of Patent Law.
Regardless of the further statement by the applicant that such amendment can be directly or unambiguously derived by a person skilled in the art, the examiner still held that it was a subjective judgment of the applicant to understand the mathematic symbol “*” as “multiplication”, and the symbol was not recorded in the scope of initial disclosure; the examiner insisted the amendment to the description and claims went beyond the scope of disclosure in the initial description and claims, and was therefore not in conformity with Article 33 of Patent Law and shall be rejected.
The applicant filed a request for reexamination to the PRB of the Patent Office, which accepted the opinion of the applicant.
Although the mathematic symbol “*” can represent either “convolution” or “multiplication”, the meaning of the symbol “*” in this application shall be determined by a person skilled in the art based on the meaning of the formula in this application.
A common person skilled in the art can easily know from the relevant books or the internet that convolution is a kind of mathematic operator wherein a third function such as function h is generated by two functions such as function f and function g; function h represents the accumulation of the overlapping part between function f and function g which has been reversed and translated, namely h＝f*g, a common knowledge. That is, convolution is an operation between a function and another function, and the result is also a function. Convolution can be widely used in many fields, such as statistics, physics, probability theory, electrical engineering and signal processing, and acoustics. For example, in electrical engineering and signal processing，we can get the output of any linear system by convolution of input signal and system function (the impulse response of the system)
Although this invention is related to digital signal processors (DSP), which belongs to the filed of digital signal process, the initial claims and description disclose that in the formula , the number of DSPs is computed via the bit rate in the signal channel and the sum of time, instead of computing the process for realizing a signal. In this formula, n represents the number of DSPs required for processing one signal channel, which is a number rather than a function;  represents the bit rate in one signal channel, which is a number rather than a function;  represents the time required for processing each bit signal by each function in the software defined radio library of the DSP trunking; i represents the index number (subscript) of the function in the channel processing function chain; k refers to the total number of functions in one channel processing function chain;  means the total time required for processing each bit signal by all functions in the software defined radio library of the DSP trunking. Before calculating the number of DSPs, the total number of the function k in one channel processing function chain is confirmed and known, namely the result of is a number instead of a function. Thus, the formula in this application represents an operation between numbers rather than between functions, and the operation result is also a number rather than a function, which is not in accordance with the fundamental theorem of convolution. Thus, it is obvious for a person skilled in this art that, according to the understanding for this application and combining with common knowledge, the mathematic symbol “*” in this formula does not represent convolution, but rather must represent multiplication, which is the only result.
In other words, a person skilled in the art may, based on the disclosure of this application and common sense, directly or unambiguously confirm the mathematic symbol “*” in this application represents multiplication instead of convolution, because it is an operation between two numbers instead of two functions and the operation result is also a number instead of a function. So the amendment to the mathematical symbol “*” by the applicant does not go beyond the scope of disclosure in the initial description and claims, and is therefore in conformity to Article 33 of Patent Law.
According to the above-mentioned case, clear recordation in the initial application may not be a necessary condition to determine whether the amendment goes beyond the scope. It depends on whether a person skilled in the art can directly or unambiguously derive the amendment from the initial application. The person skilled in the art can use certain common sense to make such determination.
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