Chapter 2 Novelty and Inventive Step - Japan Patent Office

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Part II Chapter 2 Novelty and Inventive Step "ornamental materials composed of alloy…," and "methods of killing insects using ..." according to 1.5.1(4). (3) Claims defining products by the manufacturing processes (product-by-process claims) It is understood that claims defining products by the manufacturing processes means definitions that represent products per se gained as final products, unless otherwise interpreted according to 1.5.1(2) above Note . Accordingly, the novelty of the claimed invention is denied when other manufacturing processes are able to produce an identical product to that of the claimed manufacturing process and the product is publicly known. Note: This is because some structures of products cannot represent the products of the inventions, these products are described only by the methods of manufacturing processes (such as inventions relating to isolated protein), and it is inappropriate to make a distinction between an invention defined by its structure and an invention defined by its manufacturing process. Accordingly, products are interpreted according to above paragraph even though applicants clearly intend to limit the products only to those manufactured by specific processes, such as "Z obtained solely by process A." [Example 1] "Protein manufactured by a manufacturing process P (with steps p1, p2, …and pn)" In this example, the novelty of the invention is denied when known specific protein Z manufactured by process Q is identical to the protein manufactured by process P, regardless of the novelty of process P. [Example 2] "Panels with a double-layer structure fixed by welding iron member A and nickel member B" In this example, if the method to obtain the same double-layer structure fixed by welding other than welding method, the novelty of the invention is denied. However, since the panel structures identical to those fixed by welding are not generally manufactured by methods other than welding, the novelty of the invention is not denied unless the panels with a double-layer structure fixed by a welding method are not publicly known, 1.5.3 Identifying Inventions Cited as Inventions Provided in Patent Act Article 29(1)(i) – (iii) or Cited inventions (1) Inventions that were publicly known Inventions that were publicly known are inventions that are actually known by unspecified persons through certain persons. Most of them are generally publicly known through lectures or presentations, and the inventions are identified based on the factual details explained in such lectures or presentations. The details explained in lectures or presentations are interpreted based on the common general knowledge, and other facts derived from the common general knowledge in the lectures or presentations are used as a base for identifying the inventions that were publicly known. (2) Inventions that were publicly worked Inventions that were publicly worked are inventions that have been worked in a situation where the contents of the inventions are or could be publicly known through machinery or systems, and the inventions are identified based on the facts embodied through the machinery or systems. The facts embodied through the machinery or systems could be interpreted based on the 10
Part II Chapter 2 Novelty and Inventive Step common general knowledge, and facts derived from the facts based on the common general knowledge taken in a situation where the inventions have been worked could be a basis for identifying the inventions that were publicly worked. (3) Inventions described in publications I. "Inventions described in publications" are identified based on "the descriptions in the publications." The descriptions are able to be interpreted based on the common general knowledge, and any facts that a person skilled in the art could derive from the description in the publications based on the common general knowledge as of the filing date, or equivalents to such descriptions in the publications, could also be a basis for identifying the inventions described in publications. In other words, "inventions described in publications" means inventions that a person skilled in the art is able to understand based on the descriptions in publications or equivalents to such descriptions. Accordingly, inventions that a person skilled in the art is not able to understand based on the descriptions in the publications or equivalents to such descriptions are not included in either "inventions described in publications" or "cited inventions." For example, when one "description in a publication" is part of the alternatives in the claims described in the Markush form, it is necessary to check if person skilled in the art is able to understand an invention that provides either one of the alternatives as a requisite to define the invention. Example of "equivalents to the descriptions" [Example 1] A method that the conductor is grounded as a shielding means for preventing electrical interference is recognized as common general knowledge in the electricity-related field, and it is presumed that a person skilled in the art may understand as a matter of course that the shield plate for the switch disclosed in the examples is intended to be connected to the earth, regardless of the absence of the such examples in the document. In view of Utility Model Act Article 3, it is reasonable to say that "devices described in publications" in Article 3(1)(iii) are considered to be a technical idea that person skilled in the art is able to clearly understand….The fact that the shielding plate in the example is expected to be connected to the earth should be included in the technical meanings of the term "shielding plate" per se exemplified in the document and also be substantially equivalent to an actual description in the document. (Reference: Decision by the Tokyo High Court, November 29, 1982 [Showa 56 (Gyo Ke) 93]) Example of "not equivalents to the descriptions" [Example 2] The working example 6 in the cited document shows attapulgite clay (acidic components), which has the same effect as citric acids and is insoluble in a solvent. In short, it is reasonably understood that this example merely shows using insoluble phenol resins since insoluble substances are usually applied as a conventional acid component in this field. Accordingly, the example is not considered to provide a description for a substance soluble in the solvent with the same component as basic components selected from "phenol resins." (Reference: Decision by the Tokyo High Court, October 5, 1982 [Showa 55 (Gyo Ke) 12]) II. When an invention of a product or process is not clearly described enough that person skilled in the art is able to manufacture the product or use the process based on the descriptions of the publications and the common general knowledge as of the filing, the invention is not included in "cited inventions." For example, when a chemical substance is described merely by its name or its chemical 11
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Chapter 2 Novelty and Inventive Step - Japan Patent Office

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