July, 2015｜News Letter

1. How Difference(s) between Claimed Invention and Invention Disclosed in Prior Art Reference should be Determined?

The Iams Company v. Commissioner of JPO, Case No. 2014 (Gyo-Ke) 10270 (Decision rendered on July 30, 2015)

The Applicant, Iams, filed a patent application relating to a composition comprising a probiotic component and a sweetener component in 2006, but the application was finally rejected by the Appeal Board of the JPO in 2014 on the grounds of lacking inventive step. Against the JPO's decision, Iams filed a cancellation action with the IPHC in 2014.

Claim 1 of the Iams' patent application at issue claims as follows:
A composition comprising:
(a) a probiotic component comprising strains isolated from resected and washed canine or feline gastrointestinal tract and bacteria which comprises a genera selected from the group consisting of Bifidobacterium, Lactobacillus, and combinations thereof; and
(b) a sweetener component comprising a monosaccharide selected from the group consisting of sorbitol, mannitol, glucose, mannose, fructose, and mixtures thereof;
wherein the sweetener component and the probiotic component are mixed together, and the composition is substantially free of a chewing gum base.

One of the main issues in this case lied in how the difference(s) between the claimed invention of the patent application at issue and the invention disclosed in a prior art reference should be determined. The IPHC answered to the issue as follows.

In the JPO’s decision, the JPO first found (i) that Example 1 of prior art reference (p.a.r.) 1 demonstrated a dairy product containing sucrose, colostrum, a probiotic and a prebiotic, and (ii) that p.a.r. 1 exemplified glucose, mannose and fructose as the prebiotic in the general description. On the basis of the above findings, the JPO found that the difference between the claimed invention of the patent application at issue and the invention disclosed in p.a.r. 1 lied just in that the former specified that a probiotic component comprised strains isolated from resected and washed canine or feline gastrointestinal tract, while the latter did not specify it, and the JPO concluded that the difference was easily conceivable for those skilled in the art.

However, having reviewed p.a.r. 1 in detail, the IPHC found that p.a.r 1 disclosed that prebiotics were useful mainly for the distal portion of large intestine, while it was common technical knowledge that monosaccharides were absorbed in the small intestine in mammals. On the basis of the above findings, the IPHC decided (i) that those skilled in the art could have not directly recognized that monosaccharides such as glucose, mannose, and fructose could be used as the “prebiotic”, which should be used at the distal portion of large intestine, in p.a.r. 1, and thus (ii) that it could not be directly acknowledged that the claimed “sweetener component” in the patent application at issue was the same as the “prebiotic” used in p.a.r. 1, even though they formally overlapped in some components.

Conclusively, the IPHC upheld the Iams' 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 decision, even if a claimed feature of a patent application is seemingly disclosed in a prior art reference, it is possible to overcome such an Examiner' s factual finding by pointing out a technical inconsistency.

In July 2015, the IPHC handed down 14 decisions including the above case on patent, and overturned previous decisions in 7 cases.

In July 2015, the IPHC handed down 4 decisions on trademark and maintained all of the previous decisions.