February, 2014｜News Letter

1. May JPO's Decision be maintained Even Though JPO's Fact Finding Included Error?United States Gypsum Company v. Commissioner of JPO, Case No. 2012 (Gyo-Ke) 10423 (Decision rendered on February 19, 2014)

The Applicant, United States Gypsum (USG), filed a patent application relating to a composition for preparing a cement board in 2003, but the application was finally rejected on the grounds of lacking inventive step by the Appeal Board of JPO in 2012. Against the JPO's decision, USG filed a cancellation action before the IPHC in 2012.

Claim 19 of the patent application at issue claims as follows:
“A composition for preparing a cement board comprising: (a) portland cement; (b) mineral additive; (c) aggregate; (d) as an accelerator for components (a) and (b) an alkanolamine; and (e) sufficient water to prepare a slurry, wherein said slurry is at a temperature of at least 90°F when components (a)-(e) are mixed to form said composition”.

One of the main issues in this case was whether the JPO's decision may be maintained even though the JPO's fact finding included an error in examining inventive step. The IPHC answered to the issue as follows.

In the JPO's decision, the JPO found that the prior art reference (p.a.r.) stated that a slurry was at an outside air temperature when the components were mixed on the grounds that p.a.r. showed that the components were mixed under an outside air temperature.

However, the IPHC denied the above JPO's finding and found that the temperature of a slurry was unknown on the grounds that even though the ingredients were mixed under an outside air temperature, the temperature of the slurry could be influenced by the temperature of each component and heat produced by the reaction among the components, in addition to the outside air temperature.Nevertheless, the IPHC further considered inventive step of the patent application at issue on the basis of the above IPHC's own finding, and decided that the invention claimed in the patent application at issue had been easily conceivable on the basis of p.a.r. in view of well-known techniques.

Conclusively, the IPHC dismissed the USG's appeal, and upheld the conclusion of the JPO's decision.

The period for appeal to the Supreme Court has not expired since the period has been extended by 30 days for the losing party, USG, which is a foreign entity, and thus the decision has not been final and binding as of March 31, 2014.

K&P’s CommentsAs shown in this decision, the IPHC in some cases takes a step to consider patentability in addition to their main issue of whether or not the JPO's decision has an error. Accordingly, not only the JPO's error, but also patentability should be argued in the appeal before the IPHC against the JPO's decision of rejection.

In February 2014, the IPHC handed down 20 decisions including the above case on patents and utility models, and overturned previous decisions in 3 cases.

In February 2014, the IPHC handed down 4 decisions on trademarks, all of which maintained the previous JPO's decisions.