“Wood Pulp for Glass Plate Interleaving Paper and Interleaving Paper for Glass Plate”
In the prior instance, the board of trial examiners of the Japanese Patent Office (JPO) confirmed the final rejection of the subject patent application. In this decision, the Intellectual Property High Court (IP High Court) upholds the JPO holding.
Whether an earlier patent application would be considered to disclose an unfinished invention, and whether it would preclude the allowance of a later application that is identical to it.
Summary of Conclusion:
It was established that an earlier patent application is directed to a glass interleaving paper containing no more than 3 ppm, preferably no more than 1 ppm, and no less than 0.05 ppm of an organic silicon compound that is polydimethylsiloxane of silicone, which is capable of dramatically reducing wiring defects and the like caused by the organic silicon compound transferred from the glass interleaving paper to glass plate, and which achieves the effect corresponding to the object of the earlier patent application. It was further established that such glass interleaving paper can be produced by a process that utilizes pulp produced without using an antifoaming agent containing polydimethylsiloxane, and that the process of producing the glass interleaving paper, includes two or more steps among washing pulp, shower washing paper and washing by means of a water tank. As such, the IP High Court considered that the earlier patent application was prepared such that one of ordinary skill in the art could replicate the technical matters and achieve the intended technical effect. Accordingly, the court concluded that the earlier patent application discloses an invention as provided under Article 29bis of the Japanese Patent Act, that cannot be considered “unfinished”, and therefore precludes under the same provision, a later application that is identical to it.
The court determined that an invention as provided under Article 29bis of the Japanese Patent Act refers to one understood from the matters disclosed or implied in the patent application, and further determined that, even if undisclosed in an earlier patent application, the invention of the earlier application can be derived by referring to the common technical knowledge possessed by one of ordinary skill in the art. However, an invention that is insufficiently disclosed in terms of the technical matters upon referring to the common technical knowledge does not correspond to such an invention, and does not preclude a later application under Article 29bis. Furthermore, the court held that an application which has not been prepared such that one of ordinary skill in the art could replicate technical matters and achieve the technical effect that is its object, should be considered an unfinished invention and therefore should not constitute an invention as provided under Article 29bis of the Japanese Patent Act.