TOPICS

“Coating Material for Forming of Light-diffusing Layer, Film for Projection Screen, and Projection Screen”

Overview:

The Court revoked a decision of the JPO in an appeal against a final rejection, on the basis that the Board has not reviewed a significant effect of the subject invention, which could be patentable as a selection invention.

▶Summary of Judgement and Link to Full Text

Main Issue:

Whether a person skilled in the art can easily conceive of the configuration according to Difference 1 (the resin of the subject invention is “active energy ray-curable resin”, whereas the cited invention does not specify the type of resin).

Summary:

5. Grounds for Revocation 3 (Error in determining whether it is easy to conceive of the difference) & Grounds for Revocation 4 (Error in determining an unexpected significant effect)

(4) …Difference 1 is…as described above…, and given that, as common general knowledge, a “thermoplastic resin, thermosetting resin or active energy ray-curable resin” was known…, as options for a resin used in a transparent screen, the subject invention may be a selection invention, and additionally, considering that Difference 1…relates to a feature associated with the effect of the present invention…, the procedures for assessing selection inventions may apply in determining ease of conceiving of Difference 1 in the subject invention.

…If an invention achieves a significant effect that has not been disclosed in a publication describing a prior invention…, it is appropriate to recognize patentability of that invention as a separate invention that is independent from the prior invention.

(5) …As a resin of the cited invention, Reference 1 neither teaches nor suggests anything about an active energy ray-curable resin, and thus it cannot be…that there was motivation to adopt an active energy ray-curable resin…

(6) …As considered in relation to Well-known Art 1, thermoplastic resin, thermosetting resin and active energy ray-curable resin are known as types of resin contained…in a transparent screen… However, …active energy ray-curable resin is known only as an option, and it cannot be said to have been known that there were circumstances under which active energy ray-curable resin should be actively or preferentially selected, such as active energy ray-curable resin…being preferable, or typically selected…

As such, motivation to select active energy ray-curable resin as the resin of the cited invention cannot be said to be derived from…the well-known art, nor can it be said to be selected optimally or preferably.

(7) …As options for a resin used in a transparent screen, “thermoplastic resin, thermosetting resin or active energy curable resin” were known, but depending on the cited invention and the well-known art…it is not recognized that there was motivation to adopt active energy ray-curable resin. Thus the subject invention…could be recognized as patentable as an invention independent from the prior invention when …a significant effect that has not been disclosed in…Reference 1…is achieved…by adopting active energy ray-curable resin…

(8) …There are no errors in the matters of Common General Knowledge 1 that was recognized in the appeal decision for this case…as such.

However, …Common General Knowledge 1…is dedicated solely to mentioning active energy ray-curable resin, and just because strengths/weaknesses and optical applications are shown,  it does not indicate that using… active energy ray-curable resin for a transparent screen in particular is common general knowledge, nor can it be said that it would naturally motivate one to specifically select a well-known active energy ray-curable resin as an option arranged in the same list as thermoplastic resin and thermosetting resin.

…Common General Knowledge 1 neither motivates one to select active energy ray-curable resin in particular, nor would it enable one to easily be aware of its existence, and select it as a preferable material. From this perspective, therefore, …it cannot be immediately determined that the subject invention lacks inventive step.

(9) …When giving an inventive step determination for the subject invention, …it is necessary to consider whether or not the invention achieved a significant effect that is not disclosed in Reference 1, i.e., a different effect from that achieved by the prior invention, or a similar effect but one which is a superior effect that sets it apart.

The Appeal Board determined that differences in the diffusivity and viewing angle…among Experimental Examples 1 to 5 described in the specification of the subject application are as theorized based on the common general knowledge…, …that can be easily inferred by the skilled person, …and…are not surprising effects that would be difficult to predict by the skilled person.

However, the premise that the appeal board relied upon in rendering its decision is not appropriate because, in evaluating the effect achieved by the subject invention, the Appeal Board have not considered whether the subject invention achieves a different effect from that achieved by the cited invention, or a similar effect but one which is a superior effect that sets it apart, from the perspective of whether the subject invention is patentable or not as a selection invention,…

Comments:

However, the problem to be considered when making an inventive step determination is whether or not the effect of the subject invention differs from that of the cited invention (or a similar effect that sets the invention apart). Thus the High Court’s ruling that this is inappropriate as a premise of a determination is reasonable.

Norifumi KOBAYASHI