1. Concerning Inventive Step
Concerning inventive step (easily-conceived property), the Intellectual Property High Court found that “it is difficult to consider that it was easy to conceive of adopting a configuration of small parts such as a leaf spring or a branch switch which are provided additionally with an operation handle and a projection to maintain the accuracy thereof“. The court consequently found that adopting a configuration of small parts relating to the difference is one of the reasons why the present invention is not easy to conceive. Although there are not many court cases in which the size of parts is regarded as one of the reasons for the decision on the easily-conceived property, this case is useful in practice because the size of parts can generally be a factor to be taken into account.
2. Concerning Requirements for Division (Addition of New Matters)
The Intellectual Property High Court found that the divisional application in which the specific description in the original specification was generically conceptualized and added to the scope of the claims does not fall under the addition of new matters for the reason that the description is not directly related to the problem of the invention. Specifically, whereas the specification discloses a specific aspect in which a “recess” provided in the “mounting plate” and a “claw portion” provided in the “circuit breaker” are fitted, at the time of the divisional application, the description was added to the claim by abstracting (superordinate conceptualization) that “the fitting part and the fitted part fit together”. Concerning the above, the Intellectual Property High Court found that the divisional application does not fall under the addition of new matters.
As described above, the abstraction (superordinate conceptualization) that is “not directly related to the problem of the invention” is likely to be allowed as a limit to add to the specific description in the specification by superordinate conceptualization at the time of filing of the application for amendment, correction, and division.
For example, Annex A of the Japan Patent Office Examination Guidelines shows an amendment that removes the claim language as an example that does not fall under the addition of new matters since the claim “…concave shaped surface…” before the amendment was simply described “…shaped surface…” after the amendment, it is an example in which, after the amendment, it is extended to include “concave shaped surface” and “convex shaped surface” as well as “flat shaped surface.”
In the above case, as an explanation in which the amendment to delete the claim wording does not apply to the addition of new matters, “The problem to be solved by the present invention is to provide a molding die for optical elements having excellent releasability and durability under high temperature by improving a coating film to be coated on the surface of the molding die for optical elements, and the shape of the molding surface of the molding die for optical elements is not directly related to the solution of such a problem. Therefore, the shape of the molding surface of the molding die is not an indispensable element as a means for solving the above-mentioned problem, and it is an optional additional element for the present invention, and it does not introduce new technical matter.” (If the problem of the invention in this case was to “store the liquid in the recess”, even if the shape of the same embodiment was exactly the same, the amendment to delete the shape of “concave” was directly related to the solution of the problem, and therefore, a new technical matter was introduced, and it would have been judged that a new matter was to be added.)
The above concept of Annex A of the Japan Patent Office Examination Guidelines was formulated based on previous court cases and is consistent with the trend of such court cases.
Writer: Hideki TAKAISHI
Supervising editor: Kazuhiko YOSHIDA
Attorney at Law & Patent Attorney
Nakamura & Partners
Room No. 616, Shin-Tokyo Building,
3-3-1 Marunouchi, Chiyoda-ku,
Tokyo 100-8355, JAPAN