August, 2014｜News Letter

1. At What Point in Time of Common Technical Knowledge should be Referred to?Constellium France et al. v. Commissioner of JPO, Case No. 2013 (Gyo-Ke) 10277 (Decision rendered on August 27, 2014)

The Applicants, Constellium France and Constellium Rolled Products Ravenswood, LLC (Alcan Rhenalu and Alcan Rolled Products Ravenswood, LLC, respectively, at the filing), filed a patent application relating to use of yttrium in an aluminum core alloy strip or sheet in 2004, but the application was finally rejected on the grounds of lacking inventive step by the Appeal Board of JPO in 2013. Against the JPO's decision, Constellium filed a cancellation action before the IPHC in 2013.

Claim 1 of the patent application at issue claims as follows: ”Use of 0.01 to 0.5% of yttrium in an aluminum core alloy strip or sheet containing at least 80% by weight of aluminum, for manufacturing a brazed part comprising fluxless brazing under a controlled atmosphere of nitrogen”.

One of the main issues in this case was at what point of time of common technical knowledge should be referred to when it varies across the ages. The IPHC answered to the issue as follows:

First, the IPHC found that one of the differences between the claimed invention and the invention disclosed in prior art reference (p.a.r.) 2 lied in that the former related to an aluminum core alloy strip or sheet for manufacturing a brazed part comprising fluxless brazing under a controlled atmosphere of nitrogen, while the latter related to that under a vacuum atmosphere. Further, having reviewed various public documents in detail, the IPHC found that those skilled in the art had recognized by 1995 at the latest that brazing materials and core materials used for brazing methods under a nitrogen atmosphere and those under a vacuum atmosphere should be generally distinguished. On the basis of the above findings, the IPHC concluded that those skilled in the art could not have naturally determined if an improved brazing property could be achieved in the brazing methods under a controlled nitrogen atmosphere without undue trial and error even though the improved property could be achieved in the brazing methods under a vacuum atmosphere.

In this connection, during the court proceedings, the JPO asserted that both brazing methods under vacuum atmosphere and those under nitrogen gas atmosphere had been well known techniques for those skilled in the art and many patent publications disclosed both methods in parallel, and thus both methods were appropriately exchangeable for those skilled in the art. However, the IPHC rejected the JPO's assertion by pointing out that all of the patent publications referred to by the JPO were published in the 1970s to the 1980s, and thus in that period, those skilled in the art could have conceived methods of adding some elements to core materials or brazing materials as a technical concept to improve brazing properties irrespective of the types of brazing methods, but that at the time of filing the patent application at issue (in 2004), those skilled in the art had recognized that brazing materials and core materials used for brazing methods under a nitrogen atmosphere and those under a vacuum atmosphere should be generally distinguished, as stated above, and thus that it would have been difficult for those skilled in the art to recognize that the core materials used for brazing methods under vacuum atmosphere could be naturally utilized for those used for brazing methods under nitrogen gas atmosphere.

Conclusively, the IPHC upheld the Constellium's appeal, and cancelled the JPO's decision.

An appeal to the Supreme Court was not filed against this decision, and thus the decision is final and binding.

K&P’s CommentsAs seen from the above, this decision teaches that common technical knowledge at the point in time closest to the filing date of the patent application at issue should be referred to when common technical knowledge varies across the ages.

In August 2014, the IPHC handed down 12 decisions including the above case on patents, and overturned previous decisions in 2 cases.

Meanwhile, regarding "Kumiai Chemical Industry Co., Ltd. v. Commissioner of JPO, Case No. 2013 (Gyo-Ke) 10291 (Decision rendered on July 16, 2014)" presented in our last report, we confirmed that an appeal to the Supreme Court was NOT filed against the decision, and thus the decision is final and binding.

In August 2014, the IPHC handed down 2 decisions on trademarks, all of which maintained the previous decisions.