“Solder Alloy” Case: A case in which the court found that the dependent claims do not involve an inventive step; however, the independent claim involves an inventive step because a person skilled in the art could not easily conceive the idea of changing an essential component of the cited invention to an optional component of the present invention.
(1) Regarding Claim 1
With respect to the difference between the invention stated in Claim 1 (the Invention 1) and the principle cited invention, the court found, as is the case in the trial decision, that “(Difference 1) in the Invention 1, the nickel is allowed to be contained, as an optional component, within the range of more than 0 mass% ~ 1 mass% or less, on the other hand, in the cited invention 1, the nickel is contained 0.04 mass% as an essential component,” and rejected the argument of the plaintiff (the demandant of the invalidation trial) that said difference is not substantial, holding that “the nickel in the cited inventions 1 and 4 ⋯ is an essential component having a technical significance and indispensable for the resolution of the problem by the cited inventions which is to suppress occurrence of cracks and propagation of cracks that once occurred. On the other hand, in the Invention 1, the nickel is merely an optional component. Therefore, since the technical significance of the Invention 1 is different from that of the cited inventions, Differences 1 and 3 are substantial.”
The court then held that in the principle cited invention “the nickel has a technical significance to suppress occurrence of cracks and propagation of cracks that once occurred, and this can be said to be helpful for resolving the problem by the cited inventions which is to withstand external forces for long periods. Therefore, there is no motivation in the cited inventions 1 and 4 to change the essential component (the nickel) to an optional component,” and affirmed the inventive step of the invention in Claim 1 (the Invention 1).
(2) Regarding Claim 2
As in the case of the trial decision, the court did not find the above-mentioned Difference 1 as a difference between the invention stated in Claim 2 (the Invention 2) and the principle cited invention, and denied the inventive step of the invention in Claim 2 without any discussion on the invention in Claim 1 (the Invention 1) as stated above.
(Regarding an “essential component” and an “optional component”, to what does a component essential or optional?)
In this case, the court found the nickel in the cited invention to be an “essential component”, and as a reason therefor, the court stated that the nickel ⋯ is an essential component having a technical significance and indispensable for the resolution of the problem by the cited inventions which is to suppress occurrence of cracks and propagation of cracks that once occurred”, and then found that “on the other hand, in the Invention 1, the nickel is merely an optional component. Therefore,the technical significance of the Invention 1 is different from that of the cited inventions“. That is to say, the court found the nickel to be an essential component for the resolution of the problem by the cited invention (which is to suppress occurrence and propagation of cracks).
While on the other hand, the court found the nickel in the Invention 1 to be an optional component. More specifically, on the basis of the description that “When the nickel is contained as an optional component, the nickel content is, for example, more than 0 mass% and, for example, 1.0 mass% or less relative to the total amount of the solder alloy. When the nickel content is within the above-described range, excellent effects of the present invention can be retained” in relation to the object of the Invention 1 which is “to provide a solder alloy having excellent shock resistance and which can keep excellent shock resistance even under exposure to relatively severe temperature cycle conditions ⋯”, the court found the nickel in the Invention 1 to be an optional component for the resolution of the problem by the Invention 1 (which is to keep shock resistance). (Just to be sure, in the field of alloy, an “optional component” does not mean a “component which is not essential but preferable to be contained “, but means a “component which is not preferable to be contained, but it is allowed to be contained to a degree exerting no adverse effect”; therefore, originally, an “optional component” is not just an antonym of an “essential component”.)
In the case where the logic employed in this judgment is generalized, the question arises: when an application for an invention, an object thereof is different from that of the cited invention and a component which is essential to solve the problem of the cited invention is contained as a non-essential one in such an invention, and such a non-essential component does not claimed in Claims and asserted to be an optional component, novelty and inventive step may be affirmed (we consider that this is problem not limited to the field of alloy.) Rather, there is room to understand that the inventive step should be denied as long as and to the extent that the claim (Claim 1) covers alloy which contains the nickel 0.04% (for the same reason as in the case of denying the inventive step of Claim 2).
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
Contact information for inquiries: h_takaishi@nakapat.gr.jp
Hideki TAKAISHI (The person in charge of this Article)
Attorney at Law & Patent Attorney
Nakamura & Partners
Room No. 616, Shin-Tokyo Building,
3-3-1 Marunouchi, Chiyoda-ku
Tokyo 100-8355, JAPAN