November, 2020｜News Letter

1. How should Addition of New Matter when Making Amendment be Considered?

Gimuty Co., Ltd. v. Commissioner of JPO; Case No. 2019 (Gyo-Ke) 10165 (Decision rendered on November 5, 2020)

The Applicant, Gimuty, filed a patent application relating to a heat retaining sheet in 2014. During the examination procedures, Gimuty filed an amendment of the claims and an argument in 2017. However, the application was rejected by the Examiner, and then Gimuty filed an appeal against the Examiner’s rejection in 2018. However, the application was finally rejected by the Board of Appeals of the JPO on the grounds of an addition of a new matter in 2019. Against the JPO's decision, Gimuty filed a cancellation action with the IPHC in 2019.

The amended Claim 1 of the Gimuty’s patent application at issue claims as follows:

1. A heat retaining sheet for retaining a heat on a surface of a living body of a human being or another animal, comprising a flexibly changeable sheet-like substrate and a cover body made of a nonwoven fabric or a woven fabric which ensures air permeability and water permeability, and which has translucency, …
<The underlined part was added during the examination procedures>

The main issue in this case related to how an addition of a new matter when making an amendment should be considered. The IPHC answered to the issue as follows:

First, having reviewed the descriptions of the specification of the patent application at issue as filed, the IPHC acknowledged that there was a description that a cover body had water permeability, while there was no explicit description about "having translucency".
Then, the IPHC discussed whether or not it was self-evident from the descriptions of the specification as filed that the cover body "has translucency", and decided as follows:

According to the technical term in the general industrial field, that the cover body "has translucency" means that the cover body has a property of transmitting light and allowing the light to exit from another surface.
Further, in view of the fact that methods such as using special production methods or special materials and applying special processing were adopted prior to the filing of the patent application at issue in order to impart light-blocking capability to a woven fabric or a non-woven fabric, it can be deemed that it was common technical knowledge at the time of filing the patent application at issue that it was necessary to adopt such special methods in order to impart light-blocking capability to the fabric. Accordingly, it is reasonable to consider that it was also common technical knowledge that the fabric for which such special methods were not adopted did not have light-blocking capability.
In addition, light-blocking capability means capability to block incoming light in the field of fibers, and thus, not having light-blocking capability means transmitting incoming light without light-blocking, that is, having "translucency" in the meaning mentioned above.
On the basis of the discussion above, it is reasonable to consider that it was common technical knowledge at the time of filing the patent application at issue that the fabric had translucency unless some special method to impart light-blocking capability to the fabric was adopted.

Accordingly, those skilled in the art at the time of filing the patent application at issue naturally understood that the fabric had translucency unless some special method to impart light-blocking capability to the fabric was adopted.
In addition, there is no explicit disclosure in specification as filed that the cover body, which is constituted by the fabric, has light-blocking capability, or that some special method to impart light-blocking capability to the cover body is adopted. Rather, there are descriptions in the specification as filed (i) that the cover body has air permeability and water permeability, (ii) that materials which constitute the cover body are exposed as they are in at least part of the surface of the cover body, and (iii) that a pigment layer and other layers which inhibit air permeability and water permeability are not formed.
In view of these descriptions, it is normal for those skilled in the art to understand that no special methods to impart light-blocking capability, such as using special production methods or special materials and applying special processing, are adopted to the fabric which constitutes the cover body.
Therefore, those skilled in the art having regard to the description of the specification as filed would have naturally understood that the cover body has translucency, and thus, it is self-evident from the descriptions that the cover body "has translucency".

In this connection, during the court proceedings, the JPO asserted that taking into consideration that a light-blocking capability could be imparted by changing a texture of a woven fabric or a loaded volume of a non-woven fabric, or changing a material of a woven fabric, that whether a woven fabric or a non-woven fabric had translucency did not depend only on the presence or absence of a special treatment, and thus that it was not common technical knowledge that a fabric which was not subjected to various special treatments had translucency. However, the IPHC rejected the JPO's assertion by pointing out as follows:

As discussed above, it was common technical knowledge that it was necessary to adopt such special methods in order to impart light-blocking capability to a woven fabric or a non-woven fabric, and thus, the fabric for which such special methods were not adopted did not have light-blocking capability. Such special methods include all the methods to impart light-blocking capability, and the methods as pointed out by the JPO are not excluded. There is no description including the methods as pointed out by the JPO in the specification as filed, and therefore, those skilled in the art having regard to the description would have naturally understood that the cover body has translucency. The JPO’s assertion is not cogent.

Conclusively, the IPHC upheld the Gimuty’s appeal and canceled the JPO’s decision.

An appeal to the Supreme Court was NOT filed against this decision, and thus the decision is made final and binding.

K&P’s Comments Previously, the requirement on addition of a new matter was quite strict under the Japanese examination. However, the requirement has been significantly relaxed, and it is not necessarily required now that the matter to be added is explicitly described in the description of the specification as filed. The above decision is one of such good examples.

(by Katsumasa OSAKI, Patent Attorney)

In November, 2020, the IPHC handed down 11 decisions including the above case on patent, and overturned the previous decision in 3 cases.

In November, 2020, the IPHC handed down 2 decisions on trademark, and overturned the previous decision in 1 case.

In November, 2020, the IPHC handed down no decision on industrial design.