August, 2018｜News Letter

1. Whether it was Acceptable to Add Specific Dimensions of Claimed Element which was not Concretely Described in Specification as Filed?

Hoyu Co., Ltd. v. Commissioner of JPO, Case No. 2017 (Gyo-Ke) 10216 (Decision rendered on August 22, 2018)

The Applicant, Hoyu, filed a patent application relating to a hair dye in 2011. However, the application was finally rejected in 2016 by the Board of Appeals of the JPO on the grounds of not satisfying clarity requirement and enablement requirement with dismissing an amendment made when filing the Appeal before the JPO for a reason of an addition of a new matter. Against the JPO's decision, Hoyu filed a cancellation action with the IPHC in 2017.

The amended Claim 1 of the Hoyu’s patent application at issue claims as follows:
A hair dye comprising: a first agent containing an alkaline agent and a second agent containing an oxidizing agent, and concurrently containing, …
wherein the hair dye is used by discharging the mixture liquid of each of the agents in a state of foam from a non-aerosol foamer container, and, when the foam discharged from the non-aerosol foamer container is stirred as it is under the following specific stirring conditions, …
Stirring conditions: 150 ml of foam immediately after discharge is placed in a cylindrical container (for example, a beaker) with a volume of 200 ml and an inner diameter of about 6 cm. Then, stirring blades mounted on a rotating shaft of a commercially available emulsifying tester ET -3A manufactured by Nikko Chemicals Co., Ltd. are positioned inside the cylindrical container so that the center of rotation of the stirring blades coincided with the center line of the cylindrical container, and so that there remains a slight clearance between the bottom edge portions of the stirring blades and the bottom portion of the cylindrical container. The stirring blades are provided as a pair so as to form a shape of “山”, which is a Chinese character for a “mountain”, from the bottom edge of the supporting shaft that is the center of rotation. (The stirring blade has a total width in the left and right directions of 58 mm, a diameter of the supporting shaft of 6 mm, a space (gap) between the supporting shaft and the blade of 16 mm, and a width of the blade of 10 mm.) …
<Underline added by the Applicant shows the portion added by the amendment>

One of the main issues in this case related to whether it was acceptable to add specific dimensions of a claimed element which was not concretely described in the specification as filed. The IPHC answered to the issue as follows:

Along with filing the appeal against the Examiner’s decision before the JPO, Hoyu filed an amendment specifically defining dimensions of the stirring blade as “having a total width in the left and right directions of 58 mm, a diameter of the supporting shaft of 6 mm, a space (gap) between the supporting shaft and the blade of 16 mm, and a width of the blade of 10 mm” in Claim 1 and the specification. However, the JPO dismissed the above amendment on the grounds that the amendment constituted an addition of a new matter.

However, the IPHC overturned the above JPO’s decision as stated below:

The specification as filed did not explicitly mention using an accessory stirring blade for a commercially available emulsifying tester ET-3A type. However, paragraph [0012] of the specification as filed mentions (a) that the above emulsifying tester is used for stirring, (b) that the stirring blade is provided with another stirring blade as a pair so as to form a shape of “山”, which is a Chinese character for a “mountain”, from the bottom edge of the supporting shaft that is the center of rotation, and (c) that the radius of rotation of the stirring blade is slightly smaller than the radius (about 3 cm) of a cylindrical container such as a beaker having a content of 200 ml and an inner diameter of about 6 cm. However, the dimensions and shape of the stirring blade described in the specification as filed are identical to those of a stirring blade for a 200 ml accessory beaker for the emulsifying tester. Moreover, according to the found facts mentioned above, the emulsifying tester has been sold for a long time since 1985, and the emulsifying tester is presumed to be a machine for experiments used by many parties. Further, there has never been a change made in the shape or dimensions of the accessory stirring blade ever since it was marketed. In addition, in around July, 2005 at the latest, the accessory stirring blade was placed on a catalog of Nikko Chemicals Co., Ltd. along with the emulsifying tester. Furthermore, it cannot be recognized on the basis of evidence that a stirring blade for the emulsifying tester having the shape and dimensions compatible to the descriptions of the original specification has been sold independently from the main body of the emulsifying tester.
Considering the facts mentioned above together, it is recognized that those skilled in the art having regard to the specification as filed could have understood that the stirring blade disclosed therein meant the stirring blade for the 200 ml beaker attached to the emulsifying tester as an accessory. As such, adding a recitation of the actual dimensions of the stirring blade for the 200 ml accessory beaker to Claim 1 of the patent application at issue cannot be considered to be an introduction of a new technical matter in relation to a technical matter derived from integrating all descriptions of the specification or drawings. Therefore, the assertion of Hoyu that the decision on whether the above amendment constitutes an addition of a new matter is wrong is well grounded.

Conclusively, the IPHC upheld the Hoyu’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 Comments Once, the restriction of amendment was very severe under the Japanese practice, and almost only the exact wordings described in the specification as filed were substantially acceptable as an addition of claim languages. However, as seen from the above decision, the restriction has been dramatically relaxed, recently. Accordingly, even if the specification as filed does not have specific description, it would be worth trying to amend claims on the basis of any document publicly known at the filing of the patent application at issue.

(by Katsumasa OSAKI, Patent Attorney)

In August 2018, the IPHC handed down 6 decisions including the above case on patent, and overturned the previous decisions in 2 cases.

In August 2018, the IPHC handed down 4 decisions on trademark, and maintained all the previous decisions.

In August 2018, the IPHC handed down no decisions on industrial design.

Additionally, we have now confirmed that the appeal to the Supreme Court against the decisions on Case No. 2017 (Gyo-Ke) 10041&10042 (Nippon Steel & Sumitomo Metal Corporation v. JFE Steel Corporation), which we introduced in the K&P’s IPHC Decision Report in March, 2018, was dismissed on September 4, 2018.