1. General Legal Principle ofInterpreting Claims
Upon review of the Supreme Court decisions rendered for cases where the issuewas to define the claims (i) based on the general meaning of the claims languageor (ii) the matters disclosed in the specification or drawings of theinvention, the court only defines the technical scope of the invention based onthe literal meaning of the claims description and excludes a complimentary interpretationof the claims (namely, narrowing or expanding the scope of the claims) byreferring to the disclosure of the specification or drawings. In other words,the Supreme Court held that “unless the claims description could be understoodby the skilled person in the art and unless it is clear that the claimsdescription has a typographical error in view of the specification or drawings,the technical scope of the invention should be defined based on the claimsdescription and cannot be complimentarily interpreted (expanded or narrowed) byreference to the specification or drawings.”

2. Legal Principle of Interpreting Claims Including Functional Descriptions

1) According to the Supreme Court’sprevious position, functional claims are not separately examined. It seems theSupreme Court applies the same standard as the general principle of interpretingclaims because functional claims are deemed to be unclear in terms of thetechnical constitution or scope. However, the Supreme Court (Case No.2007HU4977 announced on July 23, 2009; hereinafter, “’4977 decision”) set fortha standard for determining and interpreting functional claims, although thedecision is related to a final rejection.

2) According to the ’4977 decision, “theclaims of an invention describe the scope of protection sought by an applicant,and thus, the invention should be defined by the disclosure of the claims unlessthere are special circumstances. It is not allowed to limitedly or broadlyinterpret the claims by reference to the specification or drawings of theinvention. This legal principle is also applied to the cases where inventionsare identified with functional descriptions, such as a function, effect andnature, and not with a typical structure, method and material. Thus, inprinciple, if the claims include descriptions specifying an invention with afunction, effect, nature, etc., such claims should be interpreted to mean alltypes of inventions having the described function, effect, nature, etc.” Thatis, the Supreme Court held that functional claims should be sufficientlyinterpreted based on the literal descriptions thereof.

3) Supreme Court Decision No. 2007HU4977

a. Summary of Case: The title of theinvention, which was the issue of the aforesaid court decision, is “Method ofControlling Voice.” (Specifically, this invention relates to a method ofcontrolling the voice of a character appearing in a computer game and ischaracterized by varying the properties of the character’s voice according tothe character’s attributes). The examiner determined that claims 1 to 15 of theinvention lacks inventive step in comparison to the cited inventions andfinally rejected the application. In response thereto, the applicant filed anappeal against the final rejection and amended claim 15 of the application. However,the Intellectual Property Tribunal rejected the amendment on the ground thatamended claim 15 also lacks patentability requirements and maintained theoriginal final rejection.

b. Contents of Claim 15: The issue ofthe case was claim 15. Specifically, claim 15 is directed to “a game device of controllingvoice from a character appearing in a computer game (preamble), comprising: adeciding means of deciding the character’s body type by the manipulation of aplayer (element 1); a converting means of converting the properties of the voiceinputted from outside or the voice prepared in advance based on the attribute informationrelating to the character’s body type (element 2); and an outputting means ofoutputting the voice having the converted properties to the character’s voice(element 3).”

c. Interpretation of Functional Claims: Thekey issue of the above claim was the deciding means of deciding the character’sbody type by the manipulation of a player. According to the Patent Court’s decision(Case No. 2007HEO623 announced on November 8, 2007), the term “body type” inelement 1 was narrowly interpreted to correspond to the height and weight of acharacter, and the phrase “a deciding means of deciding the character’s bodytype by the manipulation of a player” was narrowly interpreted to mean that aplayer decides the height and weight of a character by manipulating arrow keysof a keyboard to extend the character in the vertical and horizontal direction.

The Patent Court’s interpretation ofelement 1 was based on an example in the specification, i.e., a deciding meansof deciding the body shape of a character by manipulation of a player. However,the Supreme Court held that the feature “a deciding means of deciding thecharacter’s body type by the manipulation of a player” includes terms representinga function, property, etc. and in principle, this feature should be interpretedto mean all types of elements functioning to decide the body type of a characterby manipulation of a player. The Supreme Court further held that in view of thespecification or drawings of the invention, the “body type of a character” isdefined or explained to mean the height and weight of the character (theSupreme Court’s interpretation regarding the body type is the same as thePatent Court’s interpretation) and the feature “a deciding means of decidingthe body type of a character” is described to mean that a player decides thecharacter’s height and weight by manipulating arrows keys to extend thecharacter in the vertical and horizontal direction and the player selects thebody type of a default character in the select screen. Thus, the Supreme Court determineda functional claim by stating that element 1 (a deciding means of deciding thebody type of a character by manipulation of a player) is interpreted to meandeciding the body type of a character by selecting or making its body type bymanipulation of a player. The Supreme Court also indicated that the PatentCourt’s interpretation of element 1, i.e., a player decides the height andweight of a character by manipulating arrow keys of a keyboard to extend thecharacter in the vertical and horizontal direction, is erroneous because element1 was limitedly interpreted relying only on an element disclosed in the exampleof the specification.

3. Conclusion

Upon review ofthe decisions made by the Supreme Court and the Patent Court, there is a slightdifference in that the Supreme Court interpreted that if a player decides acharacter’s body type by selecting or making it by manipulation, it correspondsto element 1, whereas the Patent Court interpreted limitedly based on theexample of the specification that element 1 means that a player decides theheight and weight of a character by manipulating arrows keys to extend thecharacter in the vertical and horizontal direction. The Supreme Court determinedthat if a player selects and decides the body type of a character bymanipulation, it is considered as element 1 without need to consider thedisclosure of the example in the specification and drawings. Therefore, it isdeemed that any one of (i) selecting and deciding a body type with a mouse,(ii) selecting and deciding a body type with a voice inputting device and (iii)selecting and deciding a body type with a method not disclosed in the exampleusing a keyboard corresponds to element 1.