Excerpt from the Judgement (Section on the inventive step of the parameter invention)
* The Tokyo District Court denied the ease of focusing on the parameters and acknowledged inventive step.
* The Tokyo District Court acknowledged the significance of the critical range of the parameter, but it was not a decisive point.
* The Tokyo District court held that the problem to be solved by the Invention was unknown in light of the evidence.
(Except from the Judgement)
… Citation 1-2 (B-12), which is the main cited invention, mentions “adhesion” or “cuttability” as the performance of the wrap film, but does not mention “tear strength” or “tensile modulus” as the physical properties related thereto; moreover, it does not suggest that the setting of the numerical range is a problem to be solved. Therefore, it is difficult for a person skilled in the art in contact with Citation 1-2 to be motivated to apply Citation 2 by paying attention to “tear strength” and “tensile modulus” among various physical properties, and therefore, the above difference cannot be easily conceived. … It is also difficult to be motivated to focus on the “low-temperature crystallization start temperature” among various physical properties, and the above difference cannot be easily conceived.
[Introduction of the relevant Court cases (the inventive step of the parameter invention)]
Regarding the determination of inventive step of numerically limited inventions or parameter inventions, the Patent Office Examination Guidelines presents a determination method in which inventive step is recognized when there is an unexpected advantageous effect and there is a “heterogeneous effect” or a “homogeneous but remarkable effect” compared with the cited inventions, and inventive step is denied when there is no such effect.
However, unlike the Patent Office Examination Guidelines, in most recent court cases, parameters and numerical values are regarded as matters used to specify the invention. Thus, the courts concentrate on the issues of easily-conceived property of setting the parameters or numerical values and their scope and have judged cases within the framework that inventive step is recognized when the above points are not easily conceived.
Under such a judgment framework, as in the case of ordinary inventive step judgments, the party denying inventive step is responsible for asserting and proving the easily-conceived property of setting and scope of the parameter and numerical value. Therefore, when a new parameter or numerical value is set, it is especially difficult to prove the easily-conceived property, aside from the case when it can be converted into an existing one unambiguously (in this case, it is difficult to say that the parameter and numerical value are new). Thus, there are many cases in which inventive step could not be denied.
In other words, the mainstream view in recent court cases has been that if the parameter or numerical value itself is new and the motivation to focus on this point cannot be proved, the easily-conceived property of the matters specifying the invention is denied, and inventive step is recognized.
Therefore, the decisive point of determining inventive step of an invention whose scope is specified by a new “numerical value” or “parameter” is whether or not it was easy for a person skilled in the art to focus on the said “numerical value” or “parameter” at the time of filing of the application.
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