September, 2016｜News Letter

1. Is Disclosure of Parameters Interchangeable with That of Specific Chemical Structure in Examining Enablement Requirement?

JX Nippon Oil & Energy Corporation v. Commissioner of JPO, Case No. 2016 (Gyo-Ke) 10041 (Decision rendered on September 28, 2016)

The Applicant, JX Oil & Energy (JX), filed a patent application relating to a lubricant oil composition in 2009, however, the application was finally rejected in 2015 by the Appeal Board of the JPO on the grounds of not satisfying the enablement requirement. Against the JPO's decision, JX filed a cancellation action with the IPHC in 2016.

Claim 1 of the JX’s patent application at issue claims as follows:
“A lubricating oil composition comprising:
a lubricating base oil … , and
a poly(meth)acrylate-based viscosity index improver having a ratio M1/M2 of 0.20 or greater and 0.30 or less, between the total area of the peaks between chemical shifts of 36-38 ppm M1 and the total area of the peaks between chemical shifts of 64-66 ppm M2, with respect to the total area of all of the peaks, in the spectrum obtained by 13C-NMR; wherein the composition has … ”.

The main issue in this case lied in whether disclosure of parameters was interchangeable with that of a specific chemical structure in examining enablement requirement. The IPHC answered to the issue as follows:

First, having reviewed the specification of the patent application at issue in detail, the IPHC found that the specification demonstrated only “A-1” as a working example of the claimed poly(meth)acrylate-based viscosity index improver while indicating the parameters M1 and M2, and some other parameters, however did not show a specific chemical structure, a preparation process, or a trade name of “A-1”. The IPHC further found that the specification disclosed that M1 corresponded to β-branched structure of a side chain of the poly(meth)acrylate and M2 corresponded to a straight-chain structure thereof.
On the basis of the above findings, the IPHC decided (i) that even taking into consideration the above disclosure of the specification and common technical knowledge, those skilled in the art could not have identified the specific branched or straight-chain structure of the side chain of the poly(meth)acrylate only from M1, M2 or M1/M2, (ii) that no other parameters suggested the chemical structure of the improver, or no common technical knowledge was found showing that there was any correlation between the chemical structure of the improver and such other parameters, and thus (iii) that it was necessary for those skilled in the art to make undue trial and error efforts in order to prepare and obtain the claimed improver.

Conclusively, the IPHC dismissed the JX’s appeal and upheld 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 CommentsThe above decision teaches that, in order to satisfy enablement requirement for a parameter invention defining technical feature(s) by some parameters, but not by some structure and the like, it is advisable to disclose not only the parameters, but also any specific structure, preparation process, trade name or the like of the material which satisfies the claimed parameters in the specification.

In September 2016, the IPHC handed down 22 decisions including the above case on patent, and overturned the previous decisions in 3 cases.

In September 2016, the IPHC handed down 2 decisions on trademark, and upheld all of the previous decisions.

In September 2016, the IPHC handed down 1 decision on industrial design, and overturned the previous decision.