TOPICS

“Pellicle Membrane, Pellicle Frame, Pellicle, Manufacturing Methods Thereof, Exposure Master Plate, Exposure Device, and Method of Manufacturing a Semiconductor Device”

Overview:

A case in which a decision to revoke a patent based on each reason for revocation—lack of novelty, lack of inventive step, and identity with an invention pertaining to secret prior art—was itself overturned.

▶Summary of Judgment and Link to Full Text (in Japanese)

 Main Issue:

Whether it can be said that the cited reference or prior art specification discloses an exposure pellicle film satisfying the conditional expression (R_B ≥ 0.40 requirement) of the invention in the case at issue, where: “(1) in a restricted field-of-view electron diffraction image of a cross-section of a carbon nanotube (CNT) sheet, the ratio R_B obtained by dividing ‘the difference between the diffraction intensity at the reciprocal lattice vector corresponding to the peak of diffraction intensity in the film thickness direction of the carbon nanotube sheet derived from the triangular lattice of the carbon nanotube bundles, and the diffraction intensity at the reciprocal lattice vector serving as the baseline and not overlapping with the peak in the film thickness direction of the carbon nanotube sheet’ by ‘the difference between the in-plane diffraction intensity of the carbon nanotube sheet at the reciprocal lattice vector serving as the baseline in the film thickness direction, and the in-plane diffraction intensity of the carbon nanotube sheet at the reciprocal lattice vector corresponding to the peak of diffraction intensity in the film thickness direction’, and where R_B is 0.40 or greater.”

FIG. 6 Cross-sectional transmission electron microscope (TEM) image of a carbon nanotube sheet relating to an embodiment of the present invention

Summary:

(Only the judgement regarding the reason for revocation due to lack of novelty in view of Cited Reference 1 are presented here. Similar determinations are presented in the sections addressing the reasons for revocation due to lack of inventive step in view of Cited Reference 3, and identicalness with the invention pertaining to the secret prior art, respectively.)

The decision for the case at issue, which held that “the difference regarding the presence or absence of the R_B ≥ 0.4 requirement is not a substantive difference,” is considered to be based on the understanding that the R_B ≥ 0.4 requirement of Invention 1 of the case at issue specifies that the CNT bundles are in-plane oriented, and since Cited Invention 1 is assumed to have in-plane orientation, the R_B ≥ 0.4 requirement would be satisfied, given that the description (para. 0104) in the specification and the like for the case at issue, which reveals that an R_B value of 0.4 or greater indicates in-plane orientation, while a value of less than 0.40 indicates no in-plane orientation.

However, in light of the scope of claims of Invention 1 of the case at issue, the qualitative configuration of “in-plane orientation of CNT bundles” (Configuration 1C) and the quantitative configuration according to the parameter “R_B ≥ 0.4” (Configuration 1D) are independent configurations. Even considering descriptions such as those in para. 0104 of the specification for the case at issue, it cannot be determined that the R_B ≥ 0.4 requirement is necessarily satisfied merely because the CNT bundles of Cited Invention 1 have the characteristic of in-plane orientation.

The defendant argues that, under ordinary considerations, a thin-film, self-supporting, disordered SWCNT (single-walled carbon nanotube) sheet produced by a commonly used process from SWCNTs of ordinary properties would, from the perspective of film thickness, bundle diameter and self-supporting nature, be much more similar to Example 1 than to Comparative Example 1 in the specification and the like for the case at issue, and that, given that the R_B value (0.353) of Comparative Example 1 is quite close to the lower limit of 0.4 for the R_B ≥ 0.4 requirement, a thin-film, self-supporting, disordered SWCNT sheet that is far more similar to Example 1 than to Comparative Example 1 would satisfy the R_B ≥ 0.4 requirement.

However, the defendant has not specifically asserted or proven the method of manufacturing such a thin-film, self-supporting, disordered SWCNT sheet “produced by a commonly used process from SWCNTs of ordinary properties under ordinary considerations,” nor has the defendant proven that the “film thickness, bundle diameter and self-supporting nature” of that sheet are actually specified. Therefore, it can only be said that the details of a “thin-film, self-supporting, disordered SWCNT sheet that is much more similar to Example 1 than to Comparative Example 1” is not clear.

Comments:

Section 3219 of the Examination Handbook for Patent and Utility Model in Japan states: “[i]n cases where it is difficult to compare with the cited invention due to descriptions of functions, properties, etc., and a strict comparison cannot be made, if the examiner has a reasonable initial doubt that the two are the same, a notice of reasons for rejection on the grounds of lack of novelty shall be issued, unless there are other differences.” It also states: “[i]f the applicant’s rebuttal or explanation is abstract or general and the reasonable initial doubt regarding novelty is not dispelled, and the examiner is convinced that the invention claimed lacks novelty, a final rejection shall be made.”

The opposition decision for the case at issue appears to be in line with this approach in the Examination Handbook. However, considering that the burden of proof regarding the facts underlying lack of novelty lies with the Japan Patent Office (JPO), the judgment for the case at issue seems appropriate.

Since it is difficult for the JPO, which does not have the ability to conduct follow-up experiments, to present direct evidence that would deny the novelty of an invention containing descriptions of such properties as in the case at issue, whether the novelty of such an invention can be denied will likely depend on whether the opponent in an opposition or the petitioner in an invalidation trial can present follow-up experimental results or similar evidence.

 Mitsuaki KOBIKI