January, 2019｜News Letter

1. How should Difference between Claimed Invention and Invention Disclosed in Prior Art Reference be Determined in Examining Inventive Step?

Nippon Suisan Kaisha, Ltd. v. BASF AS, Case No. 2018 (Gyo-Ke) 10027 (Decision rendered on January 28, 2019)

The Patentee, BASF, obtained a patent relating to a process for decreasing the amount of environmental pollutants in 2007. Against the BASF’s patent, Nippon Suisan (NS) first filed an invalidation trial on Claim 3 with the JPO in 2007. The JPO rendered a decision of invalidation in 2008, and then the decision was made final and binding.
Thereafter, NS further filed an invalidation trial on Claims 1, 2 and 4 to 28 with the JPO in 2013. During the trial procedure, BASF demanded a correction of the claims. The JPO admitted the correction, and rendered a decision of invalidation on Claims 1, 2, 4 to 6, 9 and 12 to 27, while dismissing the demand on Claims 7, 8, 10, 11 and 28 (the JPO’s 1^st decision) in 2015. BASF filed an appeal against the JPO's 1^st decision to the IPHC in 2015. The IPHC rendered a decision of cancellation of the 1^st decision on Claims 1, 2, 4 to 6, 9 and 12 to 21, while dismissing the appeal on other claims (the IPHC’s former decision) in 2017, and then the decision was made final and binding.
Thereafter, the JPO resumed the invalidation trial on Claims 1, 2, 4 to 6, 9 and 12 to 27. The JPO admitted the correction again, and rendered a decision of invalidation on Claims 22 to 27, while dismissing the demand on Claims 1, 2, 4 to 6, 9, and 12 to 21 and rejected the demand on Claims 7, 8, 10, 11 and 28 (the JPO’s 2^nd decision) in 2018. NS filed an appeal against the JPO’s 2^nd decision to the IPHC in 2018.

The corrected Claim 1 of the BASF’s patent at issue claims as follows:
A process for decreasing the amount of environmental pollutants in a marine oil, being edible or for use in cosmetics, the marine oil containing the environmental pollutants, characterized in that the environmental pollutants are selected from the group consisting of a brominated flame retardant and PCB, and that the process comprises the steps of;
- externally adding a volatile working fluid to the marine oil from outside, wherein the volatile working fluid comprises at least one of a fatty acid ester, a fatty acid amide, and a free fatty acid, and
- subjecting the marine oil with the added volatile working fluid to at least one stripping processing step, in which the stripping processing step is carried out at a temperature between 150 and 270℃, and an amount of environmental pollutant present in the marine oil, being edible or for use in cosmetics, is separated from the marine oil together with the volatile working fluid.

One of the main issues in this case related to how difference(s) between the claimed invention and the invention disclosed in a prior art reference should be determined in examining inventive step. The IPHC answered to the issue as follows:

In the JPO’s 2^nd decision, the JPO first found that there were two differences between the corrected Claim 1 of the patent at issue and the invention disclosed in prior art reference 2 (p.a.r. 2) in
(1) that although the invention disclosed in p.a.r. 2 related to a process for removing cholesterol in salmon head oil, which comprised the step of separating the cholesterol from the salmon head oil together with linoleic acid, it was not clear whether the marine oil contained brominated flame retardant or PCB, whether the invention comprises the step of separating the environmental pollutant from the salmon head oil together with the added linoleic acid, and whether linoleic acid corresponded to the claimed volatile working fluid;
and (2) that the former specified the temperature at which the stripping processing step was carried out, while the latter did not specify it.
On the basis of the above findings, the JPO decided that the corrected Claim 1 of the patent at issue was not easily conceivable and thus had inventive step.

However, the IPHC overturned the above JPO’s 2^nd decision as follows:

The IPHC first reviewed the description of the specification of the patent at issue and common technical knowledge in detail, and found on the JPO’s finding of differences as below:
“the volatile working fluid defined in the corrected Claim 1 and linoleic acid disclosed in p.a.r. 2 are different from each other in that the target substance(s) to be removed is/are environmental pollutants or cholesterol. However, the volatile working fluid defined in the corrected Claim 1 and the linoleic acid are the same in that they have high volatility compared to triglyceride, and that they are liquids that are distilled together with the target substance(s) to be removed. Moreover, linoleic acid corresponds to each of “C10-C22 free fatty acids” exemplified as volatile working fluids in the specification of the patent at issue. Therefore, it is reasonable to recognize that the linoleic acid disclosed in p.a.r. 2 corresponds to the volatile working fluid defined in the corrected Claim 1.
Thus, there is an error in the JPO 2^nd decision finding that it is not clear whether the linoleic acid disclosed in p.a.r. 2 can be said to be the volatile working fluid defined in the corrected Claim 1.”

On the basis of the above findings, the IPHC made a determination on easily conceivability as below:
“in view of the disclosures of publications distributed before and after the priority date of the patent at issue, it can be recognized to have been a well-known objective matter at the time of the priority date of the patent at issue that almost all marine oils before refining contain PCB and a brominated flame retardant. Therefore, those skilled in the art could have easily conceived of defining that the salmon head oil disclosed in p.a.r. 2 contains “environmental pollutants selected from the group consisting of a brominated flame retardant and PCB”.
Moreover, in the temperature range where cholesterol vaporizes, it should be said that PCB and brominated flame retardant having higher volatility also vaporize. Therefore, when a process defined in p.a.r. 2 is performed using a salmon head oil containing “environmental pollutants selected from the group consisting of a brominated flame retardant and PCB”, the environmental pollutants are separated together with linoleic acid added to the salmon head oil. Further, the degrees of volatility of cholesterol, PCB and a brominated flame retardant are recognized to be well-known objective matters at the time of the priority date of the patent at issue. Therefore, it should be said that those skilled in the art could have easily understood that, when a process defined in p.a.r. 2 is performed, PCB and a brominated flame retardant contained in a salmon head oil are separated together with linoleic acid added to the salmon head oil.
Furthermore, in light of the disclosures of p.a.r. 2 and vaporizing temperatures of PCB and a brominated flame retardant, when trying to remove PCB and a brominated flame retardant from a salmon head oil disclosed in p.a.r. 2 by molecular distillation, it should be said that those skilled in the art could have easily conceived of setting the temperature range at least from 175 to 260℃. Further, the temperature range (from 175 to 260℃) is included in the temperature range (from 150 to 270℃) defined in the corrected Claim 1 of the patent at issue”.

Accordingly, the IPHC decided that it was reasonable to recognize that those skilled in the art could have easily invented the corrected Claim 1 of the patent at issue on the basis of the invention disclosed in p.a.r. 2, and common technical knowledge and well-known matters at the time of the priority date of the patent at issue.

Conclusively, the IPHC upheld the NS’s appeal, and cancelled the JPO’s 2^nd decision.

An appeal to the Supreme Court was filed against this decision, but was dismissed. Accordingly, the decision is made final and binding.

K&P’s Comments When determining whether a specific feature of the claimed invention and the term and the like disclosed in a prior art reference are the same or not, the JPO would rather tend to deem that they are different when the prior art reference does not explicitly or clearly state that the term corresponds to the claimed feature. The above IPHC’s decision did not accept such a JPO’s practice and teaches that the comparison between the claimed invention and the disclosure of the prior art reference should be made substantially considering not only the description itself of the prior art reference but also common technical knowledge as well.

(by Katsumasa OSAKI, Patent Attorney)

In January 2019, the IPHC handed down 8 decisions including the above case on patent, and overturned the previous decisions in 2 cases.

In January 2019, the IPHC handed down 2 decisions on trademark, and maintained all the previous decisions.

In January 2019, the IPHC handed down no decisions on industrial design.