Case No. Heisei 29 (gyo-ke) 10001
Decision date: August 29, 2017
Court: IP High Court
(http://www.courts.go.jp/app/files/hanrei_jp/077/087077_hanrei.pdf)
1. Background
The plaintiff filed a patent application (2014-116674), but received a decision of rejection from the Examiner. The plaintiff filed an appeal against the Examiner’s decision of rejection, but the Japanese Patent Office (JPO) decided not to grant approval in the appeal. The plaintiff then filed an action for revocation of the JPO’s decision with the IP High Court.
2. Present Invention and Cited Invention:
The present invention defines a steel pole comprising: a support post (2) for supporting an object (1) to be mounted on the support post (2), such as a light device, traffic signals, a sign, and an antenna; and a steel foundation (3) to fix a lower end of the support post (2); wherein the foundation (3) consists of a foundation body (4) which has a tube-like configuration with a bore vertically extending through the foundation body (4), wherein the foundation body (4) is fastened and fixed to the support post (2) by using fastening members (5) and is embedded in a ground, and wherein the support post (2) extends through the foundation body (4) and has a tip protruding into the ground.
The Examiner cited Japanese Utility Model Application Publication (S63-59973). The cited invention defines a post structure (11) comprising: a post for a structure, such a safety fence, a pole, guiding ropes and a simplified garage; and a foundation supporting the post; wherein the foundation is made of carbon steel, is embedded in a ground, and has a base (13), a pipe (12) which is rigidly welded at and protrudes from a center of the base (13), and flat vanes (14) disposed at four corners on a surface of the vase (13) and secured to a side of the pipe (12), and wherein the base (13) has a through bore at a location where the pipe is secured so that the post extends through the pipe (12) and the base (13) and protrudes into the ground.
Present Invention Cited Invention
3. JPO’s Position:
The JPO found two different points between the present and cited inventions, but decided that those skilled in the art could easily make the present invention in view of the cited invention and well-known technology.
4. Plaintiff’s Assertion:
The plaintiff found an additional different point between the present and cited inventions. Namely, in the present invention, the “foundation body” has a bore vertically extending through the foundation body, while in the cited invention, the foundation consists of a “base” having a center from which a pipe protrudes and “flat vanes” disposed at four corners on a surface of the base. As a result, the plaintiff asserted that those skilled in the art could not easily make the present invention in view of the cited invention and well-known technology. Please note that in the plaintiff’s assertion, the “pipe” is not included in the foundation body.
5. Court’s Judgment:
(1) The meaning of “foundation body” was reviewed.
According to the claim, the foundation body is defined only so as to fix the lower end of the support post, to be fastened and fixed to the support post via the fastening members, to be embedded in the ground, to allow the support post to extend through the foundation body, and to have the tube-like configuration with the bore vertically extending through the foundation body.
However, considering the description in addition to the claim, the foundation body is interpreted so as to be embedded in the ground, to fix the support post by means of the fastening members which are separated from the foundation body, to transmit loads of the support post to the ground, to fix the lower end of the support post by receiving resistance from the ground, and to have the tube-like configuration with the bore vertically extending through the foundation body.
(2) In the cited invention, according to the description, the “base” together with backfilled soil causes a resistant force against a force withdrawing the post so that the withdrawing force is applied via the base to the ground. The “flat vanes” cause an opposing force against lateral loads so that the lateral loads are applied via the flat vanes to the ground. Thus, the “base” and the “flat vanes” transmit the loads of the post to the ground and receive resistance from the ground. On the other hand, the “pipe” is welded and secured to the base and the flat vanes and merely fixes the post. Thus, the pipe neither transmits the loads of the post to the ground nor receives resistance from the ground.
(3) As a result, the “base” and the “flat vanes” in the cited invention correspond to the “foundation body” in the present invention, but the “pipe” in the cited invention does not correspond to the “foundation body” in the present invention. Thus, the plaintiff was able to assert the additional different point.
(4) Since the additional point was neither disclosed nor suggested in the cited reference and the well-known technology, those skilled in the art could not have easily made the present invention in view of them.
6. Conclusion
The JPO’s decision of rejection was revoked.