The specific problems to be solved by cited inventions influence the decision for lack of an inventive step differently depending on the circumstances in each case. The IP High Court provided a judgment as to whether it is obvious for a person skilled in the art to replace an essential feature which causes the specific problems of the cited inventions with another feature disclosed in the other cited references.
The present inventions are directed to a cataplasm comprising glucosamine as an active ingredient. Claim 1 of the present application reads as follows:
A glucosamine-containing cataplasm prepared by
blending glucosamine as an active ingredient in cross-linked water-containing gel comprising at least 2 to 30 parts by weight of a water soluble high molecular weight compound, 20 to 80 parts by weight of water, 0.01 to 5 parts by weight of a cross-linking agent, and 5 to 10 parts by weight of a pH adjuster as essential components; and
adjusting pH of the cross-linked water-containing gel to 5 or less, wherein
the water soluble high molecular weight compound simultaneously contains poly-acrylic acid and/or salts thereof, and the other high molecular weight compound, and wherein
a blending ratio of the other water-soluble high molecular weight compound to poly-acrylic acid and/or salts thereof is 0.1 or more and 3 or less, when the content of poly-acrylic acid and/or salts thereof is 1.
In an Appeal against the Final Rejection before the Japan Patent Office (JPO), the Appeal Board quoted cited reference A (JP-A-2001-064175), which discloses a cataplasm comprising vitamin C (L-ascorbic acid) as an active ingredient, as a primary cited reference. The Appeal Board held that the present invention of claim 1 is different from the inventions of cited reference A in the point that the active ingredient is glucosamine and not vitamin C. The Appeal Board further quoted cited reference B (JP-A-H11-246339) as a supplementary cited reference and held as follows:
Cited reference B discloses that glucosamine functions as a whitening agent which is similar to L-ascorbic acid and that both glucosamine and L-ascorbic acid have been known in the art as a whitening agent. … It is easy for a person skilled in the art to use glucosamine instead of L-ascorbic acid in the inventions of cited reference A since glucosamine has been known in the art as a whitening agent and glucosamine functions as a whitening agent which is similar to L-ascorbic acid.
However, the IP High Court found that vitamin C is an essential active ingredient in the inventions of cited reference A. Said cited reference A raised a problem concerning the cataplasm comprising vitamin C as the active ingredient. It solved said problem by using a specific chemical compound (i.e., a cross-linking agent) in the cataplasm. That is, the fundamental feature of the invention of cited reference A resides in the combination of the active ingredient, vitamin C, and the cross-linking agent. The IP High Court rescinded the Decision by the Appeal Board before the JPO and held as follows:
The inventions of cited reference A were completed by limiting the type of the cross-linking agent in order to solve the problems specific to a cataplasm comprising vitamin C or derivative thereof as an active ingredient. Accordingly, the combination of the specific active ingredient and the specific cross-linking agent is the fundamental feature of the inventions of cited reference A. … Since physical and chemical properties, e.g., chemical structure, of glucosamine are not similar to those of vitamin C, it cannot be recognized that the interaction between glucosamine and the specific cross-linking agent is comparable to interaction between vitamin C and the specific cross-linking agent. Accordingly, it cannot be recognized that a person skilled in the art easily reached the present inventions by replacing the essential active ingredient, vitamin C, in the inventions of cited reference A with glucosamine only for the reason that glucosamine and vitamin C are commonly known as whitening agents.
The IP High Court found that the Decision by the Appeal Board before the JPO was inappropriate by considering the problems solved by the cited inventions and the fundamental features specific to the cited inventions. Generally speaking, the cited invention would become completely different inventions by replacing its essential features with other features, i.e., by replacing the features of the cited inventions to an extent exceeding that of the original disclosure of the cited reference. Therefore, it might be difficult for a person skilled in the art to replace the essential features, which are disclosed as the features of the original independent claims, with other features which are not disclosed in the cited reference. If the Examiner indicates that such replacement is easy, it is preferable to review whether the Examiner’s indication is appropriate or not by considering the problems to be solved in the cited references in detail.