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“Fuel and Its Formulated Combination”

Overview:

In an action seeking cancellation of a JPO Trial and Appeal Board decision, the Intellectual Property High Court affirmed the decision that had found the request for a trial against a final rejection to be unsuccessful on the ground of non-compliance with the clarity requirement.
▶Summary of Judgment and Link to Full Text (Japanese)

Main Issue:
Clarity of the recitations in Claim 1 (a)–(c)

“[Claim 1] A formulated combination useful as a fuel characterized in that said fuel is formed by combining a range of hydrocarbons constituents of (L)+(M)+(H), based on 100 volume percent total, as follows:

(a) (L)%+(M)%+(H)%=100%;

(b) (L)%=(H)%=(100%-(M)%)/2; and

(c) if (M)% is zero or otherwise less than 100%, the remainder is (L)%/(H)% in ratio of 0.4/1 to 0.6/1, or if (M)% is 30 to 70%, the remainder is (L)%/(H)% in ratio of 0.9/1 to 1/0.9 or in ratio of 0.4/1 to 0.6/1, wherein

(d) the combination has…,

(e) (L) provides…,

(f) (M) provides…, and

(g) (H) provides….”

Summary:
Upon examination, the wording in Claim 1 “(a) … (b) … and (c) …” connects the items (a) and (b) with item (c) by the conjunction “and” (“及び”), and, in light of the ordinary usage of the conjunction “and” in Japanese, it is understood to mean that the conditions (a), (b), and (c) are to be satisfied simultaneously.

Moreover, nothing in the application specification suggests that the above “and” (“及び”) should be understood in a different sense (see para. [0068], etc.). In addition, reviewing the disclosures showing mixing ratios of (L), (M), and (H) as examples of Claim 1 (paras. [0064], [0066], and see paras. [0093], [0094], Table 1), we obtain (M)% = 0.28/1.69 ≈ 0.165 ≈ 17%, and (L)%/(H)% = 0.69/(0.03 + 0.69) = 0.958 = 96%; therefore, condition (c) is not satisfied. (If (M)% is 17%, it does not fall under the “(M)% is 30–70%” case in condition (c), and falls only under the “(M)% is zero or less than 100%” case; accordingly, the remainder of the subtraction “100% − (M)%” should have been determined so that, for (L)%/(H)%, the ratio becomes 0.4/1 to 0.6/1.) The cited example does not correspond to the invention recited in Claim 1, and it is hard to say that it explains or suggests the relationship among the conditions (a), (b), and (c) in Claim 1.

In the first place, in Claim 1, (1) item (b), “(L)% = (H)% = (100% − (M)%)/2,” specifies the condition “(L)% = (H)%,” which means that “(L)%/(H)% = 1.” By contrast, (2) item (c) states that, where “(M)% is zero (0) or less than 100%” or “(M)% is 30–70%,” the “(L)%/(H)%” ratio falls within “0.4/1 to 0.6/1,” which indicates that in these cases (L) and (H) are composed at a ratio such that “(L)%/(H)% ≠ 1.” In short, there is no combination of (L)% and (H)% that simultaneously satisfies (1) and (2).

That is, while the wording “(a) … (b) … and (c) …” in Claim 1 is understood to mean that the conditions (a), (b), and (c) are to be satisfied simultaneously, the condition in (b) (item (1)) and the condition in (c) (item (2)) cannot be satisfied at the same time.

Accordingly, the technical scope of the claimed invention in Claim 1 of the post-amendment claims cannot be understood unambiguously. The recitation of Claim 1 must be regarded as unclear to the extent that it causes unexpected detriment to third parties.

Comments:
The claims recite incompatible parameters and were found “unclear to the extent that [they] cause unexpected detriment to third parties,” violating the clarity requirement set forth in Patent Act Article 36(6)(ii).

Moreover, unable to accept the rejection decision, the plaintiff (applicant) also sought relief that “this court instruct the Trial Board administrative judges and JPO examiners to (i) cease repeating baseless rejections, or (ii) refrain from asserting newly added, clearly baseless rejections with respect to this application and related divisional applications.” The court held that “each of the acts in question does not constitute a ‘disposition’ under Article 3(2) of the Administrative Case Litigation Act and therefore does not satisfy the requirements for an ‘action for mandamus’ under Article 3(6),” and dismissed that part of the action.

Akiteru TAMURA