“Electric connector having multi-contact terminal”

Overview:

In trial decision, the Japanese Patent Office (JPO) rejected a correction to a patent on the grounds that the corrected claim does not meet the requirement of inventive step under the provision of Article 29(2) of the Patent Law, and that therefore a patent cannot be granted independently for this corrected claim. The present case concerns an appeal to the JPO’s trial decision.

Legal Issue:

The legal issue concerns whether the JPO erred in the assessment of the inventive step with respect to the prior art.

Summary of Conclusions:

The court agreed with the JPO’s assessment that in order to achieve the claimed configuration from a combination of Publications 1 and 2, it would be necessary to select from Publication 1, only the feature of a recess formed at a lower edge of the side protrusion 26, and to replace all the other features with those of an elastic tongue of the connector disclosed in Publication 2. However, the court asserted that in combining Publications 1 and 2, it is unreasonable to pick out the feature of the “recess” only, as it is an integral part of the side protrusion 26. Accordingly, the court concluded that even when the configuration of an elastic tongue of a connector as disclosed in Publication 2 is applied to the disclosure of Publication 1, those skilled in the art could not have easily achieved the recess feature recited in the claim at issue, as corrected.

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Comments:

This decision may be viewed as a reprimand of the JPO’s decision for the so-called practice of “cherry-picking” features from multiple publications for determining lack of inventive step.  Nevertheless, the court’s reasoning remains arguable in that the inventive step requirement was found to be satisfied, based on the interpretation that the “recess” of Publication 1 is an integral part of the side protrusion 26.