TOPICS

“Die for Polygonal Cross-section Wire”

Overview:

This case concerns an invalidation trial in which a decision stating that “the request for this trial is without merit” was overturned after allowing corrections.

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

Main Issue:

Whether the determination of the trial decision for this case was incorrect in determining that the corrections satisfied the correction requirements (Patent Act Articles 134bis(9) and 126(5), addition of new matter).

Summary:

In the invalidation trial, the defendant corrected claim 1 so as to limit it by adding “the substantially polygonal shape is one in which at least one corner of a polygon forming a basis is replaced with one in which corners are connected by an arc with a curvature of at least 0.8 mm in radius” (hereinafter, “the C-2 matter”), and specifically defining the substantially polygonal cross-section shape possessed by an opening portion of a bearing portion of a die for drawing work.

The specification for this case states:

“One ‘corner’ of the opening portion of the bearing portion of the die for drawing work is connected by an arc (curve) with a curvature of approximately 0.8 mm in radius. …Accordingly, the ‘corners’ where lubricant would accumulate are eliminated. As a result, in this die, the behavior of the lubricant becomes similar to that in a die with a circular cross-section, making it less likely for lumps of lubricant to form.”

Based on this, the trial decision determined that the C-2 matter was, in substance, disclosed in the present specification and the like, and thus does not go so far as to introduce new technical matter or add new subject matter.

In contrast to this, the court ruled that the technical significance of the value of an arc curvature radius of “approximately 0.8 mm” is neither taught in the specification for this case, nor are there any descriptions that suggest this, and the examples of this case merely replace the corners with an arc of an inscribed circle in a substantially rectangular shape with 4 mm-long sides, and the technical significance of setting the minimum value of “0.8 mm” for the curvature radius of the arc replacing the corners has not been disclosed in the specification for this case, regardless of the type of polygonal shape, the approximate length of one of the sides and the position of the center of the arc. Furthermore, the “C-2 matter” does not specify or limit the shape of the polygon that forms the basis of the cross-sectional shape, the length of one of its sides, or the position of the center of the arc. As such, the examples of this case are predicated upon the rod subject to drawing work having a rectangular cross section, and one of the sides of the rod to be prepared being 4 mm. The specification does not provide any examples other than those of the examples for this case, and there are no general explanations about the technical significance of combining each of the values of the examples for this case, or the mechanism or principles of producing the effect in the invention of the case. Therefore, the specification for this case should be considered as not describing specific technical matters that exceed the scope disclosed in the examples. Accordingly, it is judged that the “C-2 matter” must be considered as introducing new technical matter in relation to the matters originally described in the specification for this case.

Comments:

In view of descriptions such as “approximately 0.8 mm in radius” in the specification for this case, the defendant asserted that the curvature of an “arc with a radius of 0.8 mm” and the curvature of an “arc with a radius in the vicinity of 0.8 mm” are disclosed in the specification for this case, and additionally it is clear that the problem of lumps of lubricant accumulating at the corners is improved due to lumps of lubricant being less likely to accumulate as a result of easing out the degree of curvature of the corners as the curvature radius increases and approaching a circular cross section; therefore, it is obvious from the descriptions of the specification for this case that the effect of the invention could be achieved provided that the curvature is an “arc with a radius of 0.8 mm or more” according to Amendment 1 and the like for this case. However, the court did not accept the defendant’s argument, stating that the specification cannot be considered to disclose a configuration achieving the effects of the invention, concerning an arc that replaces the “corners”, provided that the minimum curvature is an “arc with a radius of 0.8 mm or more”, regardless of the length of one of the sides and the position of the center of the arc.

Hiroshi Abe