[Article / Patents] A study of design choices in inventive-step assessment (Mamoru Suzuki, Hiroyuki Nagamine, Patent, September 2024)
更新日：10月14日
Article information
Article type: Publication review
Display and classification checked: 2026-09-30
Categories: Patents
Topics: Inventive step / Design choices / Numerical limitations and parameters
Published on this website: 2026-09-29
[Article / Patents] A study of design choices in inventive-step assessment (Mamoru Suzuki, Hiroyuki Nagamine, Patent, September 2024)
The criteria for finding a “design choice,” particularly when inventive step can be denied without direct evidence (a secondary reference), were studied through device/system cases.
Cases recognizing design choices without evidence fall into three types:
(1) Numerical ranges: The specification gives no basis or technical significance (critical significance) for the numerical limitation, which is regarded merely as optimization in a specific application of known technology.
(2) Plural versus singular: The choice is between performing a function with one configuration or dividing it among several, without changing the overall function or technical significance.
(3) Limited options: Merely choosing the optimal arrangement from two options, such as variable or fixed, or very few combinations.
IP High Court, Heisei 29 (Gyo-Ke) 10146, “Light-guiding film” (Takabe)
Quotation, translated:
“Given that no critical technical significance is recognized in the numerical ranges (1)–(3) concerning the shape of the claimed invention’s ‘adhesive portion,’ in a configuration applying the projecting fixing portion on the protrusions of Reference 2 to the tops of the protrusions of the cited invention’s light-condensing sheet, (1) making the bottom surface (Pw) of the projecting fixing portion less than 10% of the base (P) of the protrusion, (2) making each side of that fixing portion form an angle exceeding 70 degrees to the plane of the light-guiding sheet, and (3) making that fixing portion vertically elongated, with a height-to-bottom-surface ratio of at least 1.5, are all appropriately regarded as design choices that a skilled person would adjust as appropriate.”
IP High Court, Heisei 30 (Gyo-Ke) 10091, “Surgical system” (Tsuruoka)
Quotation, translated:
“Whether multiple controls or processing operations are performed by one workstation or several is recognized as a design choice that a skilled person should select as appropriate, considering the environment of the system as a whole and other factors.”
IP High Court, Heisei 29 (Gyo-Ke) 10075, “Exercise bike” (Takabe)
Quotation, translated:
“In training equipment, selecting equipment dimensioned for the user’s physique and ability is ordinarily done; and a crank is either variable or not, so … this is a design choice that a skilled person can select as appropriate.”
Originally posted on LinkedIn: https://www.linkedin.com/feed/update/urn:li:activity:7510493636292321280/
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Updates and corrections
This log starts on 30 September 2026. Display and classification checks are distinct from a review of the legal analysis.
2026-09-30 — Presentation update: added the article type, this change log and a link to consultation options. The existing article text was preserved.
2026-10-01 | Name notation: replaced verified Japanese-script personal names with Roman-letter forms in this English article and its navigation. Legal analysis and original publication date unchanged.
2026-10-01 | Name notation: applied the Roman-letter personal-name spellings supplied by Hideki Takaishi to this English article and its navigation. No change to legal analysis or original publication date.
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