Chapter 2 Novelty and Inventive Step - Japan Patent Office

Part II Chapter 2 Novelty and Inventive Step
[Example 3] The presence of the claimed automatic wrapping machine is not considered to
be obstructive due to the application of the technical idea described in the cited inventions 2 and
3 to the cited invention 1, the technical idea in which a single robot with two gripping means
having independent working functions and the robot enables them to conduct two kinds of works
selectively.
(Reference: Decision by the Tokyo High Court, February 10, 1999 [Heisei 10 (Gyo Ke) 131]; an
example of denying the presence of an obstructive factor)
[Example 4] There is no fault in the judgment of appeal ruling that "Commonly, inert solvents
for this type of general coating composition are appropriately contained in the compositions to
adjust the property, such as viscosity, according to the coating means or conditions…, and the
cited invention does not provide any technical obstruction relating to application of the inert
solvents. Accordingly, it is understood that applying inert solvents (with diluents) to the cited
invention is an idea which a person skilled in the art could easily conceive."
(Reference: Decision by the Tokyo High Court, May 19, 1999 [Heisei 9 (Gyo Ke) 111]; an
example of denying the presence of an obstructive factor)
(2) Well-known or commonly used arts as references of the claimed inventions should be
submitted since they are important materials constituting the state of the art, which can be
grounds for a notice of reasons for refusal to a maximum extent, unless they are so well-known
that the submission seems unnecessary. They are considered important regardless of whether or
not they are used as a basis to find the cited inventions or to confirm the knowledge of a person
skilled in the art (about the state of the art including the common general knowledge) or to
confirm ability (about using general technical means for research and development or about
creating arts ordinarily).
(3) The Prior arts before the filing of the applications described in the specifications of the
claimed inventions could be a basis of determining the inventive step of the claimed inventions.
This can be accomplished by citing the prior arts as components of the state of the arts as of the
filing when the applications admit that the prior arts are publicly known.
(4) The inventive step of the claimed inventions providing formal and substantial alternatives
Note relating to the matters used to specify the inventions for which patents are sought are denied
when the examiners compare the claimed invention, whose only one of these alternatives is
presumed to be a factor used to define the claimed inventions, and the cited inventions for
reasoning and they uphold the reasoning if the reasoning is valid.
In addition, this approach does not influence the approach for deciding the appropriate time to
finish prior art searches. For details, see "Part IX How to Proceed Examinations."
Note:
For details of "Formal or Substantial Alternatives," see Note 1 of 1.5.5 above.
(5) The inventions filed for processes for manufacturing products and use of the products
involve inventive step when the products per se involve inventive step in principle.
(6) Commercial successes or facts following the successes are analyzed to positively
support the presence of the inventive step insofar as the examiners are convinced by applicantsubmitted
assertions or proof that these facts are derived from the features of the claimed
inventions, not from other factors such as sales promotion techniques or advertisements.
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