K&P's Intellectual Property High Court Decision Report in October, 2012

Solvay Fluor GmbH v. Commissioner of JPO, Case No. 2012 (Gyo-Ke) 10016 (Decision rendered on October 11, 2012)

The Applicant, Solvay, filed a patent application relating to a method for producing a polyurethane foam in 1999, and then filed a divisional application derived therefrom, but the divisional application was finally rejected on the ground of not satisfying the support requirement by the Appeal Board of JPO in 2011. Against the JPO's decision, Solvay filed a cancellation action before the IPHC in 2012.

Claim 1 of the patent application in issue claims as follows:

"A method for producing a rigid polyurethane foam by foaming a polyurethane with a blowing agent, the method using as the blowing agent a composition containing (a) 5-50% by mass of 1,1,1,3,3-pentafluorobutane (HFC-365mfc) and (b) more than 50% by mass of 1,1,1,3,3-pentafluoropropane (HFC-245fa), or consisting of the (a) and the (b)".

The main issue in this case was whether or not the support requirement may be satisfied without an exact working example. The IPHC answered to the issue as follows.

First, the IPHC found (i) that a problem to be solved of the present invention was to provide a method for production of polyurethane foams by means of a selected, novel advantageous blowing agent; (ii) that the specification of the application in issue disclosed a specific blowing agent, i.e. a mixture of the component (a) HFC-365mfc and another specific aliphatic hydrocarbon having a low boiling point as a means for solving the problem; (iii) that the specification further disclosed HFC-152a, HFC-32, HFC-134, HFC-134a, HFC-245fa, HFC-236ea, HFC-236fa and HFC-227ea as belonging to the same one group of the specific hydrocarbon; and (iv) that the specification showed a mixture of HFC-365mfc and HFC-152a (Ex. 1a), a mixture of HFC-365mfc and HFC-32 (Ex. 1b) and a mixture of HFC-365mfc, HFC-152a and CO2 (Ex. 1c) as the working examples, while it did not show a mixture of HFC-365mfc and HFC-245fa as such. Furthermore, the IPHC found that HFC-245fa was similar to HFC-152a and HFC-32 in their chemical structures and physicochemical properties.

On the basis of the above findings, the IPHC decided that it was reasonable to conclude that the specification of the application in issue disclosed and supported the claimed mixture of HFC-365mfc and HFC-245fa, even though the specification showed no exact working example.

Conclusively, the IPHC upheld Solvay'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 now final and binding.

Under the Japanese practice, the support requirement is very strictly applied, in particular, in the chemical field, and at least one specific working example included in the claimed invention is required for satisfying the support requirement. Nevertheless, the above IPHC's decision teaches that the support requirement can be satisfied by working example(s) corresponding to and similar to the claimed invention, but not included therein.

Albemarle Corp. v. Commissioner of JPO, Case No. 2012 (Gyo-Ke) 10076 (Decision rendered on October 29, 2012)

The Applicant, Ethyl Corp., filed a patent application relating to a hindered phenolic antioxidant composition in 2002, but the application was finally rejected on the ground of not satisfying the support requirement by the Appeal Board of JPO in 2011. Ethyl Corp. assigned the application to Albemarle, which filed a cancellation action against the JPO's decision before the IPHC in 2012.

Claim 1 of the patent application in issue claims as follows:

"A hindered phenolic antioxidant composition comprising a mixture of compounds, the mixture of compounds comprising plural compounds of the formula:

wherein n is at least 0, 1, 2 and 3 and optionally more than 3; and the composition contains, on an undiluted basis,
(a) less than 3.0 wt.% of ortho-tert-butylphenol (OTBP),
(b) less than 3.0 wt.% of 2,6-di-tert-butylphenol (DTBP), and
(c) less than 50 ppm of 2,4,6-tri-tert-butylphenol (TTBP)".

The issue in this case was whether or not the support requirement may be satisfied with no working example. The IPHC answered to the issue as follows.

First, the IPHC found that the problem to be solved by the invention was to provide an improved hindered phenolic antioxidant composition with oxidative stability, solubility in oil, low volatility and low bioaccumulation on the basis of the disclosure of the specification of the patent application in issue. Further, the IPHC found that the disclosure of the specification that "these single ring hindered phenolics are soluble in water and are more volatile than the multi-ring hindered phenolic antioxidants, because of their much higher molecular weight, have a much lower water solubility and are much less volatile" corresponded to the common technical knowledge that single ring phenolics were more volatile, more soluble in water and lower water solubility than cross-linked multi-ring phenolics. Furthermore, the IPHC found that the disclosure of the specification that "Lower volatility components are more effective antioxidants because they are not lost due to evaporation during the useful life of the lubricant. They therefore remain in the lubricant to protect the lubricant from the detrimental effects of heat and oxygen, i.e. oxidation" also corresponded to the common technical knowledge that antioxidant ability of a composition would be improved with the decrease of the amount of the volatile component(s) in the composition.

On the basis of the above findings, the IPHC decided that those skilled in the art could recognize that the problem was solved by applying the claimed invention on the basis of the disclosure of the specification, and thus the specification disclosed and supported the claimed invention. Moreover, the IPHC added that it was not essential for the specification to show any specific working example for satisfying the support requirement.

Conclusively, the IPHC upheld Albemarle'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 now final and binding.

In this decision, the support requirement was the only one issue in dispute, and thus the IPHC examined only the support requirement and judged that those skilled in the art could recognize that the problem was solved by applying the claimed invention by taking into consideration the common technical knowledge. Namely, this decision would mean that those skilled in the art could expect the effect of the invention on the basis of the common technical knowledge. However, this can also suggest that those skilled in the art can easily conceive the claimed invention in view of the common technical knowledge, which denies the inventive step of the claimed invention. When this case is remanded to the JPO, the JPO is expected to examine the inventive step carefully while referring to this IPHC decision as well.