1. Excerpts from the Judgement on inventive step (① It is possible to extract a coherent technical idea from multiple paragraphs in the cited reference.)
“…Whereas paragraphs [0012], [0013], and [0015] of the cited reference disclose that the FWHM (full width at half maximum) of the emission peak of the green and red emitting semiconductor nanocrystals, respectively, are or may be less than about 45 nm, and in light of the context before and after the cited reference, these disclosures are understood to apply the inventions disclosed by the cited reference in general. …It is quite possible to have both configurations coexist in a single invention based on a single coherent technical idea.”
2. Excerpts from the Judgement (③ Numerical limitation without example data ⇒Design matter)
“…With regard to the composition of ‘the scattering agent is contained at 10 % or less by weight of the total weight of the light conversion layer.’”
…The specification merely states…‛It is preferred that the percentage be less than 10 % by weight’…and so on. Moreover, the maximum value of the content ratio listed as an example is only 6 % by weight, and there is no description in the specification of this application regarding the experimental results where the content ratio exceeds 10 % by weight…It could have been designed accordingly.”
3. Some consideration
1) In this case, the judgement found the cited invention as a single coherent technical idea can be extracted from multiple paragraphs in the cited reference.
The fact that the cited invention must be “a single coherent technical idea” has been established by court decisions, and a large number of affirmative and negative cases have been accumulated.
2) It is difficult to deny an easily conceived property of a numerical limitation/parameter invention if it is described in the specification with an explanation that a new problem was found and the said problem was found to be solvable with the said numerical value/parameter, and it is often necessary to argue that the said problem was known at the time of application or that the problem is substantially the same as the problem known at the time of application.
This decision is based on the fact that with respect to the composition (numerical limitation) of “the scattering agent is contained in 10 % of the light conversion layer”, the specification of this application simply states, “it may be contained in 10 % by weight or less by weight.” The maximum value in the examples is 6 % by weight, and there are no experimental results exceeding 10 % by weight. Based on the above, the ratio of the scattering agent to the total weight of the light conversion layer could have been designed by a person skilled in the art accordingly, and the court concluded that it could have been easily conceived (inventive step was denied).
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,
Tokyo 100-8355, JAPAN