August, 2017｜News Letter

1. Does Numerical Limitation of Content Having no Specific Upper Limit Satisfy Support Requirement When Working Examples Only Demonstrate Rather Narrower and Lower Range of Content?

Fontec R&D v. Saraya Co., Ltd., Case No. 2016 (Gyo-Ke) 10269 (Decision rendered on August 8, 2017)

The Patentee, Saraya, obtained a patent relating to an extract of momordicae grosvenori for preparing a sweetener composition in 2003. Against Claims 1 and 2 of the Saraya’s patent, Fontec filed an invalidation trial with the JPO in 2015. During the trial proceedings, Saraya demanded a correction of Claim 2 and a description of “the Section of Example”. The JPO admitted the correction, and rendered a decision of invalidating Claim 1, while dismissing the demand of invalidation on Claim 2 in 2016. Fontec filed an appeal against the JPO's decision on Claim 2 to the IPHC in 2016.

Claim 2 of the Saraya’s patent at issue after the correction claims as follows:
An extract of momordicae grosvenori for preparing a sweetener composition, wherein a total content of mogroside V, mogroside IV, 11-oxo-mogroside V and siamenoside I is 35% by weight or more.

One of the main issues in this case related to whether a numerical limitation of the content having no specific upper limit defined in a claim satisfied the support requirement when the working examples only demonstrated rather narrower and lower range of the content. The IPHC answered to the issue as follows:

First, having reviewed “the Section of Example” of the specification of the patent at issue, the IPHC found (i) that “the Section of Example” demonstrated 3 working examples where the total content of mogroside V, mogroside IV, 11-oxo-mogroside V and siamenoside I (the 4 ingredients) in the extract was 35.10% by weight, 53.00% by weight and 60.80% by weight, respectively; (ii) that the high purity product of each of the 4 ingredients was obtained; and (iii) that sweet-tasting properties of each of the 4 ingredients obtained were evaluated for 9 factors to show that all the 4 ingredients had a sweet-taste similar to sucrose.

On the basis of the above findings, the IPHC decided that any of the 4 ingredients was to be increased in the range of the total content of the 4 ingredients in the extract exceeding 60.80% by weight, that each of the 4 ingredients had sweet-tasting properties similar to sucrose in all the 9 factors, and thus that those skilled in the art could understand that the extract showed sweet-tasting properties similar to sucrose in the range exceeding 60.80% as well although each of the 4 ingredients itself was not a working example.

In this connection, during the court proceedings, Fontec asserted that the extract where the total content of the 4 ingredients was 60.80% by weight (Sample J) showed worse values on “fullness” and “richness” in the 9 factors than the extract where the total content of the 4 ingredients was 53.00% by weight (Sample I), and thus that the extract where the total content of the 4 ingredients exceeded 60.80% by weight could show even worse values. However, the IPHC rejected the Fontec's assertion by pointing out
(i) that Sample J showed better values on the 7 factors except for “fullness” and “richness” than Sample I, and
(ii) that even in “fullness” and “richness”, the value of “fullness” of Sample I and that of Sample J were 3.13 and 3.27, respectively, and the value of “richness” of Sample I and that of Sample J were 3.13 and 3.33, respectively, and thus that all the values were approximately 3.3, which is close to 3, the value meaning that the solution was not different from the standard sucrose solution; and thus
(iii) that it could not be said that it was not clear that the extract had the excellent sweet-tasting properties similar to sucrose when the total content of the 4 ingredients exceeded 60.80% by weight.

Conclusively, the IPHC dismissed the Fontec’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 final and binding.

K&P’s Comments As seen from the above decision, the IPHC acknowledged that a numerical limitation of the content having no specific upper limit satisfied the support requirement even when the working examples only demonstrated rather narrower and lower range of the content in the case that those skilled in the art could understand that the claimed product showed the advantageous effect in the range higher than the range demonstrated in the working examples as well on the basis of not only the working examples demonstrating the claimed product itself but also the description in the specification including “the Section of Example” other than the working examples. This decision follows the leading case law on the support requirement (Case No. 2005 (Gyo-Ke) 10042 (Decision rendered by the Grand Panel of the IPHC on November 11, 2005)).

(by Katsumasa OSAKI, Patent Attorney)

In August 2017, the IPHC handed down 14 decisions including the above one case on patent, and overturned the previous decisions in 3 cases.

In August 2017, the IPHC handed down 3 decisions on trademark, and maintained all of the previous decisions.

In August 2017, the IPHC handed down no decision on industrial design.

Additionally, we have now confirmed that an appeal to the Supreme Court against the decisions on 2015 (Gyo-Ke) 10216 (Areva GMBH v. Commissioner of JPO), which we introduced in the K&P’s IPHC Decision Report in August, 2016, was dismissed on September 21, 2017.