1. “Difference between the invention as claimed in the application and the cited invention (A1)” which the JPO determined in its Appeal decision
The invention as claimed in the application is “unable to update the display mode of the aforementioned status display, when communication with the control device having the aforementioned speaker but not a television is not possible.” On the other hand, such a configuration is not specified in cited invention A1.
2. Excerpt from the court decision with regard to the “Difference” – sub-cited invention as abstracted to a higher level concept (Exhibit A4)
“In the technology of controlling electronic devices using wireless communication, it is not recognized that the specific nature of the control entity … and the specific nature of the controlled device (for example, a television, etc.) have any particular technical significance. … It cannot be recognized that the corresponding technology for each technology excludes equipment other than the specific equipment described in each publication. Considering the above interpretations, even if the content of the prior art described in Exhibit A4 is recognized on the premise that the control entity and the controlled device are not limited to specific equipment, it cannot be said that this constitutes an unreasonable abstraction or excessive generalization…”.
3. Some Considerations (Concerning this judgment)
In this judgment, the applicant (Plaintiff) argued that the specific target device in the sub-cited invention (Exhibit A4) is a “television,” and therefore the “disclaimer” “the target device has a speaker but is not a television” is different from the invention in question. Since the main-cited invention (Exhibit A1) already had the configuration “the target device has a speaker but is not a television,” the applicant initially did not argue that there were “differences”, but rather that the main issue was whether it was easily conceivable to combine the sub-cited invention (Exhibit A4) with the main-cited invention (Exhibit A1).
In this regard, as in the JPO Appeal decision, this judgment also finds that “it is not recognized that the specific nature of the control entity … and the specific nature of the controlled device (for example, a television, etc.) have any particular technical significance. … It cannot be recognized that the corresponding technology for each technology excludes equipment other than the specific equipment described in each publication. Considering the above interpretations, even if the prior art described in Exhibit A4 is recognized on the premise that the control entity and the controlled device are not limited to the specific equipment (digital camera 3 and high-definition television 1, respectively), it cannot be said that this constitutes an unreasonable abstraction or excessive generalization…”. Thus, the court finds that the sub-cited invention (Exhibit A4) was also found to have the same configuration as the main-cited invention (Exhibit A1), namely “the target device has a speaker but is not a television,” which is one of the elements of this invention. In conclusion, the court recognizes that the combination of the sub-cited invention (Exhibit A4) and the main-cited invention (Exhibit A1) to be easily conceivable, and denied the inventive step of the claimed invention.
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