May, 2016｜News Letter

How Component Disclosed in P.A.R. which can Correspond to Claimed Element should be Interpreted in Examining Inventive Step when Claimed Element is Defined by Functional Feature as well?

The General Hospital Corporation v. Commissioner of JPO, Case No. 2015 (Gyo-Ke) 10122 (Decision rendered on May 11, 2016)

The Applicant, The General Hospital Corporation (GHC), filed a patent application relating to an apparatus for dermatological treatment in 2008, however, the application was finally rejected in 2015 by the Appeal Board of the JPO on the grounds of lacking inventive step on the basis of prior art reference (p.a.r.) 1 in view of p.a.r. 2. Against the JPO's decision, GHC filed a cancellation action with the IPHC in 2015.

Claim 1 of the GHC’s patent application at issue claims as follows:
An apparatus for applying an optical radiation to at least one biological tissue, comprising a radiation apparatus configured to generate the radiation based on a chemical reaction and a water filter; wherein …the water filter is configured to filter out a portion of the optical radiation and to cool the biological tissue, and … .

One of the main issues in this case lied in how a component disclosed in a p.a.r. which can correspond to the claimed element should be interpreted in examining inventive step when the claimed element is defined by a functional feature as well. The IPHC answered to the issue as follows:

First, having reviewed Claim 1 of the patent application at issue and p.a.r. 1, the IPHC found that there was only one difference between them, that was, the former specified an optical filter as a water filter which was configured to filter out a portion of an optical radiation and “to cool the biological tissue”, while the latter had a prism which filtered out a portion of an optical radiation, however it was not clear if the prism cooled a biological tissue, as the JPO had found in the positive. Regarding the difference, the IPHC carefully considered p.a.r. 2 and found (i) that p.a.r. 2 stated that a liquid water filter was used as an absorption filter and that the filter could be used for cooling as well, however (ii) that the term “for cooling” should have meant “for cooling components of the apparatus” such as a lamp, and should not have meant “for cooling the skin”, since the filter had a thickness of only 1 to 3 mm.
On the basis of the above findings, the IPHC decided that those skilled in the art could not have reached the claimed invention at issue having the difference even if they replaced the prism disclosed in p.a.r. 1 with the filter disclosed in p.a.r. 2.

In this connection, during the court proceedings, the JPO asserted that those skilled in the art could have easily adjusted the thickness of the filter so as to bring about the effect of cooling the skin. However, the IPHC rejected the JPO's assertion by pointing out that the thickness of the filter was determined in view of ensuring the amount of light necessary for achieving the purpose of the apparatus disclosed in p.a.r. 2, thus those skilled in the art could not have easily adjusted the thickness since the function of the apparatus would be deteriorated if the filter was thickened.

Conclusively, the IPHC upheld the GHC’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 CommentsThe above IPHC’s decision teaches that even if the element disclosed in a p.a.r. seemingly corresponds to the claimed element as an article, it should be considered in examining inventive step whether the element in a p.a.r. can actually serve the function on the basis of the specific disclosure of the reference including embodiments, in particular, when the claimed element is defined by a functional feature as well.

In May 2016, the IPHC handed down 5 decisions including the above case on patent, and overturned the previous decision in 1 case.

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