I wonder what made J-to-E patent translators start rendering「可能」as “capable of.” I have to admit, though, that in the past I may have done so myself. Still, I’m fairly certain that I’ve never used “capable of” to render「可能」appearing in a claim. Here’s why.
Dictionary.com treats “capable of” as an idiomatic phrase that is distinct from the adjective “capable,” which Dictionary.com defines as simply, “having power and ability; efficient; competent.” Dictionary.com defines “capable of” as:
- having the ability or capacity for
- open to the influence or effect of; susceptible of
- predisposed to; inclined to
Obviously, only definition 1. above would be appropriate to use in the recitation of a claim element. Yet in a device claim, anyhow, to recite a component “having the ability or capacity for” is to say what that component can do, more than to say what that component actually is. In other words, to set forth a claim element that is “capable of” whatever is to invite a means-plus-function interpretation of that claim element. And to reject that claim element, all the U.S. examiner has to do is find “prior art structure … [that] would be capable of performing the claimed function” (MPEP 2182 Search and Identification of the Prior Art).
I did some poking around for recent instances of「可能」in Japanese patent claims being rendered as “capable of” in the claims of corresponding U.S. patent applications, and came across the following example.
U.S. Pat. App. Pub. No. 2023/0282505
1. A substrate processing apparatus comprising:
- を有する基板処理装置
a first vessel comprising:
a loading/unloading port structure constituting a loading/unloading port through which a substrate is capable of being transferred; and
- 基板を搬入出可能な搬入出口を構成する搬入出部と
(…)
a second vessel provided adjacent to the first vessel and configured to be capable of communicating with the first vessel via the loading/unloading port;
- 前記第一容器に隣接し、前記搬入出口を介して前記第一容器と連通可能な第二容器と
a lid configured to be capable of closing the loading/unloading port;
- 前記搬入出口を閉塞可能な蓋体と
(…)
a controller configured to be capable of controlling an inner pressure of the first vessel and an inner pressure of the second vessel such that the inner pressure of the first vessel is set to be lower than the inner pressure of the second vessel with the loading/unloading port closed by the lid while the substrate is processed in the process chamber and such that the inner pressure of the first vessel is set to be higher than the inner pressure of the second vessel after the substrate is processed and before the first vessel comes into communication with the second vessel.
- 前記基板を前記処理室で処理する間、前記蓋体が前記搬入出口を閉塞した状態で、前記第一容器内の圧力を前記第二容器内の圧力よりも低くし、前記基板を処理した後であって前記第一容器と前記第二容器とを連通させる前に、前記第一容器内の圧力を前記第二容器内の圧力よりも高くするよう制御可能な制御部と
Wow, in the above translation, there’s “a lot to unpack,” as Americans like to say these days. The key elements of this claim are:
- a one vessel with a hole through which something “is capable of being transferred” (is that a property of the hole, or of the something?);
- another vessel “configured to be capable of” being interconnected with the one vessel via its hole (I’m setting aside the issue of misusing “communicate with” for「連通」);
- a lid “configured to be capable of closing” a hole (yep, that’s just what lids do); and
- a “controller configured to be capable of controlling” (again, that’s just what controllers do) one pressure and another in such a way that various things take place.
The original Japanese patent application has already been patented—at the end of October of last year. The corresponding U.S. application has not yet been examined. When the application is examined, I think it will be interesting to see how the examiner treats claim 1. In about a month and a half, the application (serial no. 17/940,135) will have been pending for two years, so I hope to get the opportunity soon to see how claim 1 fares.
Meanwhile, here’s a brief video in which I give my basic advice on handling「可能な」:
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