The identification of a cited invention often affects the determination of novelty or inventive step of a claimed invention, and the “limits of generalization of concept” disclosed in a cited invention often becomes a point of issue.
More specifically, in the case where a specific embodiment of a cited invention and that of a claimed invention are different in feature, an examiner who denies inventive step of the claimed invention attempts to identify the cited invention abstractly as an invention which does not have the feature in question rather than attempts to demonstrate that the changing of difference in feature could be easily conceived.
This is because the motivation required to change a specific feature of a cited invention is higher than that required to employ a feature which is not specified in a cited invention.
For example, in the “Access Management System” case (the IP High Court Case No. 2016 [Gyo-ke] 10061 <Presiding Judge TSURUOKA>), the court found that “the comparison with Corrected Invention 1 should be carried out based on an understanding that the positions of multiple radio devices in Cited Invention A can be ‘each room of a facility’ but not limited to this arrangement”, and the cited invention is not limited to embodiments described in the cited reference. The court then denied inventive step of the Corrected Inventions. This decision is based on the premise that when a Cited Invention is A, motivation for changing it to B is required; however, if there is no such limitation on the Cited Invention, “motivation for changing” is not in question.
On the other hand, in the “Semiconductor Device” case (the IP High Court Case No. 2017 [Gyo-ke] 10062 <Presiding Judge TAKABE>), the court found the claimed invention to have inventive step stating that “…the finding of the present decision stating that one electrode of the SiCMOSFET and one electrode of the SiC Shottky diode are unclear is incorrect…” and “…it cannot be said that there is motivation to change a cathode electrode to an anode electrode…” This decision stated to the effect that the feature of the cited invention is not unclear, but identified it as a feature different from that of the claimed invention, and if the cited invention is identified as A, motivation to change A to B is required, however, such motivation could not be found to exist.
There is another case in which the court permitted a feature of a cited invention to be partly and independently extracted as in this case, for example, in the “High Frequency Bolt Heater” case (the IP High Court Case No. 2005 [Gyo-ke] 10672), the court found that “…when identifying a cited invention, a set of features and technical ideas included in the cited invention can be extracted, and there is no reason to interpret such extraction as being limited to those from specific embodiments described in the relevant cited reference. … The specific feature of a high-frequency inducing, which is not described in Cited Reference 1 in such a manner as to be able to realize it, was common general technical knowledge at the time of filing the present patent, …and therefore, a person skilled in the art can recognize the invention disclosed in Cited Reference 1 because high-frequency induction heating of ‘…high-frequency heating torch’ can be realized based on the specific feature of the induction heating element which is common general technical knowledge. ”
On the other hand, there are cases in which the court did not permit a feature of a cited invention to be partly and independently extracted, for example, in the “Method for Producing Earth Crust-like Composition” case (the IP High Court Case No 2018 (Gyo-ke) 10041 < Presiding Judge TSURUOKA >), the court found that “the cited reference contains no description concerning specific methods, procedures, and conditions to be employed when disposing of sewage-sludge incineration ash, or any matters which are sufficient to be considered as technical ideas, for example, how sewage sludge from which radioactive substances are detected is incinerated, how much radioactive substances are contained in sewage-sludge incineration ash, what kinds of measures are taken to reduce the influence of radioactive substances contained in sewage-sludge incineration ash when converting said ash into cement raw materials. Therefore, the cited reference merely contains, in fragments, a course toward disposition of sewage-sludge incineration ash from which radioactive substances are detected and experts’ opinions on the course, and thus it cannot be said that a set of specific technical ideas for safely disposing of sewage-sludge incineration ash is described”.
The foregoing approach is also employed in interpreting the scope of the matters stated in the originally attached description, and in determining the addition of new matter (requirements for amendment, correction, or division). For example, in the “Marine Vessel Structure” case (the IP High Court Case No. 2014 [Gyo-ke] 10425), the court found that “a set of technical ideas can be read from the description of paragraph【0030】 which produces the effect of ‘reducing restriction on various control devices and electrical equipment’ by arranging a ballast water treatment apparatus in a ‘non-explosion proof area’, and the ‘non-explosion proof area’ of the Present Invention 6 is substantially described in paragraph【0030】. The structure of a ‘non-explosion proof area’ cannot be found to satisfy the requirements under Article 17-2, paragraph 3 of the Patent Act”.
In this case, as in the case mentioned above, the court accepted to identify one of the matters described in the cited reference as a cited invention, stating that “it is sufficient for a cited invention to be recognizable as a set of features or technical ideas described in cited reference”, and “one example of use among the four examples of use of the cited invention can be identified”. In conclusion, the court maintained the JPO’s decision which denied inventive step of the claimed invention.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
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Hideki TAKAISHI (The person in charge of this article)
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