1. Claim 1 of the Patented Invention
A composition comprising HFO-1234yf, HFC-143a, and HFC-254eb, wherein the composition contains no more than 0.2 weight percent HFC-143a and no more than 1.9 weight percent HFC-254eb.
2. Excerpts from the Judgment (Judgment of the Court of Appeal): Judging Support Requirement
The “problem to be solved by the invention” formally described in this specification is insufficient as a description of the problem of the invention, and the specification does not describe the problem of the invention. Given this, it cannot be said that a person skilled in the art would recognize that the invention is capable of solving the problem of the invention from the description of the specification …
Even if we were to understand that the description in [0001] above is understood to be an explanation of the subject matter of this invention, … The invention is said to solve the problem by a composition containing (1) HFO-1234yf, (2) HFC-143a of not more than 0.2 weight percent, and (3) HFC-254eb of not more than 1.9 weight percent. However, it cannot be said that the specification describes a composition including the above items (1) through (3).
3. Absence of a “Problem” of the Invention and Concerning Support Requirement: General Discussion
It may not be inevitable that a small amount of the substance claimed in this invention will be produced, and it may have certain effects, but at the very least, concluding that even the inventor was not aware of it, since it was not described in the specification (and was not common general technical knowledge at the time of the application), is unavoidable. Even if some unreasonable “problem” could be read into the specification, it is reasonable to conclude that such a “problem” could not be recognized as being capable of being solved by a person skilled in the art, thus violating the support requirement.
In a case such as this, where an impurity or byproduct which does not produce any effect (at least, no effect is recognized in light of the description in the specification and the state of the art at the time of the application) is merely identified as a product invention, it is even more difficult to prove a motivation, and it is difficult to deny inventive step. In this type of case, if the occurrence of an impurity or byproduct itself were described in the initial specification, it would not constitute an addition of new matter (violation of divisional requirements). Therefore, it is acceptable that, in order to reach a reasonable conclusion, the court in its judgment substantially examined the problem to be solved by the invention along with the support requirement, while taking into account the description “a composition useful as a heat transfer composition such as a composition” (paragraph [0001]) in the specification.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
Hideki TAKAISHI
Attorney at Law & Patent Attorney
Nakamura & Partners
Room No. 616, Shin-Tokyo Building,
3-3-1 Marunouchi, Chiyoda-ku,