Chapter 2 Novelty and Inventive Step - Japan Patent Office

More documents

Recommendations

Info

Part II Chapter 2 Novelty and Inventive Step the state of the art is necessary to see the obviousness of the problem or see if the problem is an idea that a person skilled in the art could easily conceive. [Example 1] The problem "to save cost and space" of the claimed invention is a general problem not only of mixers but of every device. In other words, it is nothing but a general problem or an obvious problem of the structure of the device. A person skilled in the art could easily arrive at the idea of combining the problem and the features of the axial speed reducer and speed reducer with motors and apply the axial speed reducer and speed reducer with motors in the cited invention 4 to the mixer in the cited document 1 to save the occupied space of the mixer, thus solving the problem of the invention, where there are no specific obstructive factors. (Reference: Decision by the Tokyo High Court, August 5, 1996 [Heisei 4 (Gyo Ke) 142]) [Example 2] The cited invention 4 clearly indicates that "light-weight" is one of the important characteristics required for a golf club shaft, and suggests that it is required or advantageous to reduce the weight of a golf club shaft, taking the flying distance of golf balls into consideration. Thus, it is admitted that the problem of the claimed device to reduce the weight of a golf club shaft is an idea that a person skilled in the art could expect as a matter of course. (Reference: Decision by the Tokyo High Court, October 16, 1997 [Heisei 7 (Gyo Ke) 152]) The novelty of the claimed inventions, which are based on the cited inventions providing other problems to be solved, may be denied when it is reasoned that a person skilled in the art could easily conceive the matter used to specify the claimed inventions through other approaches, regardless of the difference between the problems to be solved by these inventions. This approach is also applied to inventions whose problems are not found, such as inventions resulting from discoveries found through trial and error. [Example 1] The claimed invention discloses a carbon disk brake with grooves to drain water on its face. The cited document 1 discloses a carbon disk brake. The cited document 2 discloses a metal disk brake with grooves to remove dust on its face. In this case, the general function of brakes shows that the dust on the face also hinders the carbon disk brake in the cited document 1 from braking operations. Providing a carbon disk brake with grooves following the art in the cited document 2 to solve this problem is a technical improvement which a person skilled in the art could easily conceive, which results in having the same structure as the claimed invention. Consequently, the claimed invention involves no inventive step. (Reference: 201USPQ658) However, the inventive step of the claimed invention derived from the cited inventions is not denied when applicants sufficiently assert or prove the circumstances by which connecting the arts provided in the cited inventions 1 and 2 are hindered. For example, it is commonly known that carbon disk brakes are free from a problem of attachment of dust on the surface, which is a different point from metal disk brakes, and providing grooves on the surface of the carbon disk brakes to remove dust is an improbable idea. III. Commonality of working or functions Commonality of working or functions between a matter used to specify the claimed invention and a matter used to specify the cited invention or between matters used to specify the cited inventions is a strong base for showing that a person skilled in the art could derive the 20
Part II Chapter 2 Novelty and Inventive Step claimed invention from application or a combination of the cited inventions. [Example 1] Both the cited invention 1 and the cited invention 2 are common in respect of pressing cloth for washing cylinders of the printing machines and have no difference between the cam mechanism of the cited invention 1 and the expansion member of the cited invention 2 in respect that the cloth is placed for attaching to or detaching from the cylinder. Then, it could be said that there is a background of conversion of a pressure means in place of the cam mechanism of the cited invention 1 to the expansion member of the cited invention 2. (Reference: Decision by the Tokyo High Court, October 15, 1998 [Heisei 8 (Gyo Ke) 262]) IV. Implications in the cited inventions Implications shown in the cited inventions relevant to the claimed invention are strong grounds for the reasoning that a person skilled in the art could derive the claimed invention from the cited inventions. [Example 1] The cited document discloses metal ions, which are cation, and provided for gaining aqueous electrodeposition baths that do not require chemical pretreatments, which is also similar to the purpose of the claimed invention, under the condition that the electrical potential of the galvanic series is higher than that of iron, providing seven types of metal ions as examples. These examples do not include lead ions as a constitution defining the claimed invention, but it is publicly known that the electrical potential of the galvanic series of lead is higher than that of iron, which shows that the applying lead ions is implied in the cited example. Accordingly, adding iron ions to aqueous electrodeposition baths is an idea that a person skilled in the art could conceive easily unless specific circumstance exists, such as inappropriateness of using iron ions in the claimed invention for achieving the purpose of the invention. (Reference: Decision by the Tokyo High Court, November 18, 1987 [Showa 61 (Gyo Ke) 240]) [Example 2] A claimed invention providing a 3-chloro group does not mention the difference of the substitution position in the chemical formula between the 2-chloro group and 4-chloro group nor the positional limitation for displacing and using the compound to a color brightener, which are described in the cited document. Accordingly, it is understood that the 3-chloro group is implied in the cited document, which reveals that a person skilled in the art could easily predict that the 3-chloro group is also valuable to be used as a color brightener. (Reference: Decision by the Tokyo High Court, March 30, 1978 [Showa 51 (Gyo Ke) 19]) (3) Effects more advantageous to the claimed inventions than the cited inventions Advantageous effects of the claimed inventions explicitly described in the specifications etc. are taken into consideration as a fact used for positively confirming the presence of the inventive step in the inventions. “Advantageous effects” means effects more advantageous to the claimed inventions than the cited inventions, selected from effects or particular effects derived from the matters used to specify the claimed inventions. I. Analyzing effects more advantageous to the claimed inventions than the cited inventions The effects more advantageous to the claimed inventions than the cited inventions are attempted to be analyzed for reasoning that a person skilled in the art could have easily arrived at the claimed inventions, and the inventive step of the claimed inventions is denied when the fact that the a person skilled in the art could have easily arrived at the claimed inventions is sufficiently reasoned, regardless of the presence of the advantageous effects. 21
Page 1 and 2: Note: When any ambiguity of interpr
Page 3 and 4: Part II Chapter 2 Novelty and Inven
Page 19: Part II Chapter 2 Novelty and Inven
Page 41 and 42: 第 Ⅱ 部第 2 章新規性

Chapter 2 Novelty and Inventive Step - Japan Patent Office

Create successful ePaper yourself

Delete template?

Save as template?