October, 2016｜News Letter

1. Is it Sufficient to Show General Principle of Claimed Invention to Satisfy Support Requirement of Invention Defining Numerical Range?

Kikkoman Corporation v. Kao Corporation, Case No. 2016 (Gyo-Ke) 10155 (Decision rendered on October 19, 2016)

The Patentee, Kao, obtained a patent relating to a salt-reduced soy sauce in 2009. Against the Kao’s patent, an individual, X, filed an invalidation trial with the JPO in 2010. During the trial proceedings, Kao demanded a correction of claims, and the JPO admitted the correction and dismissed the X’s demand (the JPO’s 1^st decision) in 2011. X filed an appeal against the JPO's 1^st decision to the IPHC in 2011, but the IPHC upheld the JPO’s 1^st decision in 2012. Then, Kikkoman filed an invalidation trial with the JPO in 2013. The JPO dismissed the Kikkoman’s demand (the JPO’s 2^nd decision) in 2014, followed by the Kikkoman's appeal against the JPO's 2^nd decision to the IPHC in 2014.

The corrected Claim 1 of the Kao’s patent at issue claims as follows:
A salt-reduced soy sauce wherein a concentration of salt is 7 to 9 w/w%, a concentration of potassium is 1 to 3.7 w/w%, a concentration of nitrogen is 1.9 to 2.2 w/w%, and a weight ratio of nitrogen/potassium is 0.44 to 1.62.

One of the main issues in this case lied in whether it is sufficient to show a general principle of the claimed invention to satisfy the support requirement of the invention defining a numerical range. The IPHC answered to the issue as follows:

In the JPO’s 2^nd decision, the JPO recognized (i) that the principle of the invention that potassium concentration provided salty taste and nitrogen concentration strengthened the salty taste and reduced bitter taste could be understood from the disclosure of the specification of the patent at issue, thus (ii) that it could not be said that the problem of the invention was not solved at the salt concentration of 7 w/w% by increasing the potassium concentration and the nitrogen concentration and specifying the weight ratio of nitrogen/potassium to 0.44 to 1.62 within the claimed numerical range.
However, the IPHC overturned the above JPO’s decision on the support requirement as stated below.

First, having reviewed the specification of the patent at issue in detail, the IPHC found (i) that the patented invention was to solve a flavor problem of the conventional salt-reduced soy sauce having a salt concentration of 7 to 9 w/w% by specifying the potassium concentration, the nitrogen concentration and the weight ratio of nitrogen/potassium, and generally ruled (ii) that it was necessary for those skilled in the art to recognize that the problem could be solved within the whole range of the salt concentration, i.e. 7 to 9 w/w%, by adequately combining other numerical values defined in the claim, i.e. the potassium concentration, the nitrogen concentration and the weight ratio of nitrogen/potassium, in order to satisfy the support requirement.
Further, on the basis of the working examples, the IPHC specifically ruled that it was necessary for those skilled in the art to recognize that the claimed salt-reduced soy sauce had (a) salty taste slightly lower or more than a regular soy sauce having a salt concentration of 14 w/w% by sensory rating (salty taste level: 3 or higher), (b) a slight bitter flavor if any (bitterness level: 3 or lower) and (c) a low strange taste (overall rating: good or better), while the IPHC found that only a salt-reduced soy sauce having a salt concentration of 9 w/w% was directly demonstrated to be able to solve the problem.

On the bases of the above findings and ruling, the IPHC considered whether those skilled in the art could recognize that the problem could be solved in the case of a salt-reduced soy sauce having the lowest value of salt concentration, i.e. 7w/w%; and decided (i) that those skilled in the art could not reasonably infer that the problem could be solved in the case of a salt-reduced soy sauce having a salt concentration of 7w/w% even by taking into consideration all the working examples and the comparative examples shown in the specification, since the working examples 1 to 11, 26 and 27 and the comparative examples 1 to 25 in Table 1 all showed a salt concentration of 9 w/w% only, the working examples 12 to 19 in Table 2 did not show the results of the sensory rating, and the working examples 20 to 25 in Table 3 contained other seasonings; thus (ii) that it could not be recognized that a salt-reduced soy sauce having the salt concentration of 7w/w% showed the salty taste level of 3 or higher, the bitter flavor of 3 or lower and the overall rating of good or better.
Additionally, the IPHC decided (i) that those skilled in the art could infer no specific degree of salty taste and bitter taste when reducing the salt concentration only from the principle acknowledged in the JPO’s 2^nd decision, and (ii) that no specific evidence on technical knowledge was found to show that strengthening or weakening a specific taste was independently obtained without influencing other taste.

Conclusively, the IPHC upheld the Kikkoman’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.

K&P’s CommentsThis decision teaches (i) that it is very helpful, but not always sufficient, to show a general principle of a claimed invention in order to satisfy support requirement, and (ii) that it is important to define a tangible effect of the claimed invention and specifically to show that it is possible to bring about the tangible effect within the whole claimed numerical range in order to satisfy the support requirement of the invention defining a numerical range.

In October 2016, the IPHC handed down 22 decisions including the above case on patent and utility model, and overturned the previous decisions in 6 cases.

In October 2016, the IPHC handed down 3 decisions on trademark, and overturned the previous decisions in 1 case.

In October 2016, the IPHC handed down no decision on industrial design.