Judgments in Trial Decision Annulment Litigations Rendered in June 2003

September 8, 2003
Harakenzo World Patent & Trademark
Patent & Trademark Attorney Ichiro KANEKO

1. Statistics on Judgments Rendered in June 2003

The following table shows the number of judgments rendered in June 2003 in decision annulment litigations regardin patent rights and utility model rights, and the number of cases where the judgments were in favor of the plaintiffs.

TABLE
NUMBER OF JUDGMENTS RENDERED IN JUNE 2003 IN TRIAL DECISION ANNULMENT LITIGATIONS

OBJECT OF ANNULMENT	NUMBER	NUMBER OF JUDGMENTS IN FAVOR OF PLAINTIFFS
REVOCATION RULING AS A RESULT OF OPPOSITION TO PATENT	18	7(6)*
TRIAL FOR INVALIDATION (DECISION TO INVALIDATE)	11	3(1)*
TRIAL FOR INVALIDATION (DECISION TO DISMISS)	9	3
TRIAL AGAINST DECISION OF REFUSAL	12	1
TRIAL FOR CORRECTION	3	0
TOTAL	53	14

* The numbers in parentheses are the numbers of cases where the judgments were in favor of plaintiffs because demands for correction were accepted. 2. Selected Court Decisions

The following are court decisions concerning selected points of dispute in the judgments rendered in June 2003.
2-1 Interpretation of an element amended on the basis of drawings

[Judgment Number] H15 6 3 Tokyo High Court H13 Administrative Case (ke) 548 Ruling to Revoke Patent Maintained

[Opposition Number] Opposition 2000-72434

[Title of the Invention] Display Unit of Game Machine

[Invention at Issue]
A display device unit for a game machine, the display device unit comprising a display that displays a predetermined image, a substrate electrically connected to the display, and a cover member that covers the display and the substrate, the display device unit characterized in that:
(i) the cover member has a notched hole; and
(ii) a connecter attached to the substrate is fitted into the notched hole, the connecter sticking out of the notched hole, so thatthe substrate is connected by the connecter to an exterior via the notched hole.

[Summary of Plaintiff's Argument on Disputed Point]
In the present invention, "the connecter is fitted into the notched hole," according to the corrected claims. This means that the connecter is in the notched hole with no or little space therebetween. The effect of the present invention, namely to prevent such problems as disconnection even if the connecter is subjected to a certain load, can be attained by thus "fitting" the connecter into the notched hole without leaving a space therebetween, so that the connecter is supported by such a part of the cover member that surrounds the notched hole.

[Court Decision]
The word "fit" ("kangou," in Japanese) was not used in the claims section or detailed description of the invention section of the specification (D2) at the time of registration of the present patent. It is therefore considered that the word "fit" was newly introduced into the claims section by the demand for correction. When interpreted on the basis of the specification and drawings at the time of registration, the word "fit" cannot be construed to be limited to the aforementioned technical meaning.
The plaintiff's argument is based on Figure 5, which is a perspective view illustrating the display device from the backside. By its nature, however, Figure 5 illustrates the shape of the display device and arrangements of its members only schematically. Therefore, it is impossible to conclude that Figure 5 shows a state where no (or little) space is left, just because the boundary is indicated by a single line.
2-2 Is a technical idea disclosed by the description of art that is considered to be disadvantageous? / Is an invention disclosed even if there is no mention to its effect in the publication?

[Judgment Number] H15 6 5 Tokyo High Court H13 Administrative Case (ke) 338 Ruling to Revoke Patent Maintained

[Opposition Number] Opposition 2000-71296

[Title of the Invention] Gear Shaping Method and Gear Shaper

[Invention at Issue]
A gear-shaping method for shaping tooth shapes by using a gear-shaping tool made of speed tool steel, comprising the step of:
performing shaping at a cutting speed of no faster than 300m/min without using a cutting oil solution, by using such a gear-shaping tool that is, at least at a flank, coated with at least one layer of a film whose composition
is substantially given by:
(Ti(1-X)Alx)(NyC(1-y))
where 0.2?x?0.9, and 0.2?y?1.0.

[Summary of Plaintiff's Argument on Disputed Point]
(1) At the time of writing of D3 and at the time of application for the present patent, the use of a cutting oil solution was an absolute necessity for a gear shaping method using a tool made of high-speed tool steel. It was therefore against common sense not to use a cutting oil solution. Under this circumstance, a person with ordinary skill in the art would have considered if he/she read D3 that the gear shaping method that does not use a cutting oil solution was described in D3 merely incidentally. It was impossible that the gear shaping method that does not use a cutting oil solution would have been regarded as a technical idea.
(2) D3 contains no description on the technical problems to be solved and effects of the present invention.

[Court Decision]
(1) The plaintiff's argument, that common sense taught at the time that it was technically impossible to perform gear shaping using a tool made of high-speed tool steel without using a cutting oil solution, cannot be regarded as a fact, in light of all the evidences in the present case. Even if common sense at the time was that performing gear shaping using a tool made of high-speed tool steel without using a cutting oil solution was disadvantageous in terms of the life of the tool, and even if a person with ordinary skill in the art would have considered that the method described in D3 was therefore disadvantageous, it does not follow that D3 does not disclose, as a technical idea, the gear shaping method using a tool made of high-speed tool steel and using no cutting oil solution, and the gear shaper for use in the method.
After all, it is unquestionable that a description of a technique is a disclosure of a technical idea, even if the technique is considered to be disadvantageous.
(2) It is needless to say that different technical problems can result in inventions of the same arrangement. Also, the same arrangement can bring about various effects, and it varies from person to person which effect to recognize and pay attention to, although there are always the same effects, objectively. Therefore, even if there is no mention in D3 to the technical problems to be solved and effects of the present invention, this does not at all prevent one from recognizing that the arrangement of the present invention is described in D3.
As long as the arrangement described in a publication is the same as that of the present invention, there is no choice but to conclude that the arrangement of the invention is disclosed in the publication, regardless of the motives or reasons for the adoption of the arrangement, the recognition of the inventor as to the effects of the arrangement, and one's understanding of the publication as to the technical problems to be solved and effects of the arrangement.
After all, the plaintiff's argument is clearly erroneous in that it confuses finding a previously unknown effect of the invention whose arrangement is already disclosed in D3 and creating the arrangement of the invention, alleging the former instead of the latter. As long as such a finding is a mere finding and does not create any new arrangement, the finding, no matter how valuable as information, is not protected under the Patent Law, which protects creations.
2-3 Interpretation in a trial for invalidation in light of the detailed description of the invention in the specification

[Judgment Number] H15 617 Tokyo High Court H13 Administrative Case (ke) 255 Decision to Dismiss in Trial for Invalidation of Patent Maintained

[Trial Number] Invalidation 2000-35580

[Title of the Invention] Steel Footplate Slinging Hook Device

[Invention at Issue]
A hook device, provided at a front end of a wire of a slinging device, for slinging a steel footplate, comprising:
(i). a hook supporting body (1) having a fall preventing section (11) at a front end thereof and a wire fixing section (12) at a back end thereof;
(ii). a hook rotatably provided to the hook supporting body (1) via a junction pin (2); and
(iii). a lock (4), provided to the hook supporting body (1), for engaging a back end (32) of the hook (3) so as to lock the hook (3), when the fall preventing section (11) of the hook supporting body (1) and a front end (31) of the hook (3) is substantially in contact with each other,
(iv). the hook (3) and the hook supporting body (1) being so provided that when the hook (3) and the lock (4) is released from engagement, and the hook (3) is inversely rotated with respect to the fall preventing section (11) of the hook supporting body (1),
(iv)-1. the fall preventing section (11) of the hook supporting body (1) is not inside a substantially parallel virtual lines drawn to respectively contact an inner side of the front end (31) of the hook (3) and an inner side of the back end (32) of the hook (3); and
(iv)-2. a line segment drawn between a center of the wire fixing section (12) and a center of the junction pin (2) is substantially parallel to the substantially parallel virtual lines.

[Summary of Plaintiff's Argument on Disputed Point]
The shape of the hook of the present invention is not limited to such one having a front end whose inner side is linear, but covers such one having a front end whose inner side is curved.

[Court Decision]
The technical meaning of the description above cannot be understood clearly and unambiguously based solely on the recitations in the claims of the present invention. It is therefore necessary to interpret the technical
meaning in light of the detailed description of the invention.
It is a major premise of the present invention to use the widely opened hook described as prior art, instead of using a narrowly opened hook. This is obvious from the detailed description of the invention in the specification and from the drawings. Therefore, the interpretation that the inner side of the front end of the hook has a linear shape matches the above-mentioned description in the specification, and the argument of the defendant is ungrounded.
2-4 Criteria to be considered as prior art (supplementary reason)

[Judgment Number] H15 617 Tokyo High Court H14 Administrative Case (ke) 322 Decision to Invalidate in Trial for Invalidation of Patent Annulled

[Trial Number] 1998 Trial No. 35104

[Title of the Invention] Four-wheel-drivable Driving Device

[Invention at Issue]
A four-wheel-drivable driving device comprising a horizontal engine provided at a front part of a body, comprising:
a differential driving gear provided in a differential gear case for baring the right and left differential output shaft so that the right and left differential output shafts rotate freely;
a transmission output gear provided at an output shaft, which extends in a lateral direction of the body, of a transmission provided at a side of the engine, the transmission output gear engaging the differential
driving gear;
a pipe section, so provided to the differential gear case as to extend in the lateral direction of the body, for baring such a part of the right and left differential output shaft that is on a central axis line side in a longitudinal direction of the body;
a rear-wheel-driving gear, which is smaller in diameter than the differential driving gear and is so provided, to the pipe section in a direction in which the pipe section sticks out, to be distanced by a predetermined distance from the differential driving gear and to be on the same axis with the differential driving gear;
a rear-wheel-driving intermediate gear, provided to a rear-wheel-driving gear shaft provided in parallel with the pipe section to a rear part of the body, for engaging the rear-wheel-driving gear; and
a rear-wheel driving system consisting of the rear-wheel-driving gear shaft and a rear-wheel-driving propeller shaft, which are connected with each other by a bevel gear mechanism, the rear-wheel driving system including a clutch mechanism.

[Case Outline]
1. Procedures to Japan Patent Office
The plaintiff is the patentee of the present patent, Patent No. 1515263 "Four-wheel-drivable Driving Device." The application for the present patent is Tokugansho 56-11895 filed on January 29, 1981. The application was disclosed on November 28, 1988 as Tokukosho 63-61211. The patent was registered in August 24, 1989.
On March 12, 1999, the defendant demanded a trial for invalidation of the present patent. The trial was registered as 1998 Trial No. 35104 (the present trial). The defendant demanded a correction on July 14, 1998.
On October 29, 1999, the trial decision (first trial decision) was rendered to approve the correction and to invalidate the patent of Patent No. 1515263.
The defendant filed a suit demanding the annulment of the first trial decision. On September 10, 2001, the judgment (first judgment) was rendered to annul the first trial decision, as a result of deliberation as Tokyo High Court case No. 440 (administrative case "ke"), 1999. The judgment became final as a result of the decisions of the Supreme Court to dismiss and not to accept the final appeal.
The trial examination of 1998 Trial No. 35104 was reopened, and the trial decision was rendered to approve the correction, and to invalidate claim 1 of the patent of Patent No. 1515263.

[Summary of Plaintiff's Argument on Disputed Point]
(1) The trial decision erred in that it decided on the common denominator, against the binding effect of the first judgment. Therefore, the trial decision is incompatible with the biding effect of the first judgment.

[Court Decision]
(1) Since it is obvious that the trial judgment erred in that it decided on the common denominator, against the binding effect of the first judgment, and that the trial decision reached its conclusion on the premise that there was the common denominator, this error influences the conclusion of the trial decision. This reason alone is enough to conclude that the trial decision shall be annulled.
(2) Supplementary Reason
The present invention provides a solution for the technical problem of the second prior art, that is, "the technical problem of the arrangement where there are provided (i) the rear-wheel-driving gear shaft, behind the differential gear case, for supporting the rear-wheel-driving intermediate gear that directly engages the differential driving gear, and (ii) the bevel gear mechanism for connecting the rear-wheel-driving gear shaft and the rear-wheel-driving propeller shaft". On the other hand, the arrangement of the first prior art, that is, "the arrangement where the rear-wheel-driving intermediate gear shaft is not provided", does not have the problem that the amount equivalent to the radius of the differential driving gear having the large diameter is added as an inevitable amount of protrusion. It is therefore obvious that the first prior art is not the prior art having "the problem to be solved by the invention", namely, to reduce the amount of protrusion of the rear-wheel-driving intermediate gear shaft and the bevel gear mechanism toward the rear part of the body.
The trial decision states that the present invention could easily have been made by a person skilled in the art, based on the inventions of Trial A, Document 4 and Trial A, Document 3, or the invention of Trial A, Document 4.
However, like the first prior art described in the present corrected specification, the invention of Trial A, Document 4 relates to the arrangement where the rear-wheel-driving intermediate gear shaft is not provided, and therefore does not have the problem that the amount equivalent to the radius of the differential driving gear having the large diameter is added as an inevitable amount of protrusion. Accordingly, the invention of Trial A, Document 4 is not the prior art to be cited in judging the inventiveness of the present invention, because it does not have the problem to be solved by the invention, namely, to reduce the amount of protrusion of the rear-wheel-driving intermediate gear shaft and the bevel gear mechanism toward the rear part of the body.
On the other hand, like the second prior art, the invention of Trial A, Document 3 has the problem that the amount equivalent to the radius of the differential driving gear having the large diameter is added as an inevitable amount of protrusion. However, in Trial A, Document 3, there is no mention to the technical problem that the amount of protrusion of the rear-wheel-driving intermediate gear shaft and the bevel gear mechanism toward the rear part of the body should be reduced, or to the means to solve the problem. Therefore, it cannot be said that the present invention could easily have been made by a person with ordinary skill in the art, based on the inventions of Trial A, Document 3.
2-5 Is art described in patent bulletin as a main feature of an invention technical standard obvious to one skilled in the art?

[Judgment Number] H15 618 Tokyo High Court H13 Administrative Case (ke) 537 Decision to Invalidate in Trial for Invalidation of Patent Maintained

[Trial Number] Invalidation 2000-35520

[Title of the Invention] Recording Medium Type Game Equipment

[Invention at Issue]
(A) Recording medium type game equipment, comprising (i) a plurality of game devices so arranged to allow for playing a game within a range of portfolio data in card-shaped recording mediums, and (ii) a management device that manages at least the game devices, the recording medium type game equipment comprising:
(B) at predetermined portions of the respective game devices,
recording medium reading means for reading the portfolio data in the recording medium;
conversion operation means capable of converting, in accordance with the portfolio data read by the recording medium reading means, into a game ball or game ball information, at least money amount information as the portfolio data in the recording mediums; and
portfolio data displaying means capable of displaying said at least money amount information as the portfolio data,
(C) money amount information as portfolio data in the recording mediums being managed by (1) recording, in a data recording section of each recording medium, the at least money amount information as the portfolio data in the recording medium, (2) recording, using an identification sign given to each recording medium, in recording means of the management device, the at least money amount information as the portfolio data in each recording medium, and (3) using the data recorded in the data recording section of each recording medium and the data recorded in the recording means of the management device.

[Reason for Decision]
Since the present application is a divisional application, and the element (C) of the present invention includes features that are not disclosed in the specification or drawings originally attached to the request, Article 44(2) does not apply to the present application. Accordingly, the present application is considered to have been filed on July 20, 1994, the actual date of application. The patent is therefore to be invalidated.

[Summary of Plaintiff's Argument on Disputed Point]
It is obvious for a person with ordinary skill in the art that the money amount information is recorded in a recording medium (card), since this constituted, as shown by the publications D7 to D19, the technical standard in the technical field to which the present invention pertains, at the time the original application was filed. Therefore, the divisional application remains within the scope of the features disclosed in the original specification.

[Court Decision]
The court admits that, as the plaintiffs argue, the publications D7 to D19 disclose the art of recording the money amount information in a recording medium (card). These publications, however, do not show that this art is well-known in the technical field, or has been conventionally employed. On the contrary, considering the fact that the art is disclosed in claims and examples in these publications, as a main feature of the invention or device, the court cannot admit that the art described in the publications D7 to D19, that is, to record the money amount information in a recording medium (card), constituted at the time of publication of the publications D7 to D19 the technical standard in the technical field to which the present invention pertains, and was obvious for a person skilled in the art.
2-6 Inventive step of a parameter-limiting invention

[Judgment Number] H156 19 Tokyo High Court H13 Administrative Case (ke) 424 Decision to Revoke Patent Maintained

[Opposition Number] Opposition 2000-73583

[Title of the Invention] Method of Building an Exterior Wall of a Building

[Invention at Issue]
A method of building an exterior wall of a building, comprising the steps of:
laying a waterproof sheet on a base for the building, and attaching a metal lath thereto;
applying thereto a light-weight cement mortar including 20% to 60% by weight of cement, 20% to 60% by weight of inorganic additive, and 2% to 10% by weight of organic additive, a mass per unit volume of the light-weight cement mortar being 1.0 to 1.5 when completed;
embedding, by pressing, into the surface of the light-weight cement mortar, a net material whose mass is 40 to 250g/m2 and whose tensile strength is no less than 10kgf/mm2; and completing the building.

[Summary of Plaintiff's Argument on Disputed Point]
The light-weight cement mortar of the present invention having the specified parameters brings about a prominent synergistic effect when the net material of the specified parameters are used in combination. Therefore, the parameters of the light-weight cement mortar of the present invention have a significance as a critical point.

[Court Decision]
In order that an invention selecting a range of parameter is found to have an inventive step worth a patent because of the selection of the range of parameter, it is necessary that the selection could not have been made easily had it not for the disclosure of the invention. This is because the selection is not so valuable as a technical idea as to be worth a patent, if the selection could have been made easily without the disclosure of the invention.
The parameters of the light-weight cement mortar specified by the present invention overlap in a broad range with those of the light-weight cement mortar commonly used in the field of architecture. Therefore, it is clear that many parameters included could have been adopted easily had it not for the disclosure of the present invention.
The plaintiff's argument is, by itself, pointless; it is not necessary to consider the significance of the above parameters as a critical point before concluding that the plaintiff's argument cannot be adopted. The explanation in the decision concerning the significance as a critical point was not necessary to reach the conclusion.
2-7 To what extent specification may be considered to interpret the meanings of words in claims?

[Judgment Number] H15 625 Tokyo High Court H14 Administrative Case (ke) 321 Decision to Dismiss in Trial for Invalidation of Utility Model Annulled

[Trial Number] Invalidation 2000-35103

[Title of the Invention] Upper Forwarding Device of Sawing Machine

[Invention at Issue]
An upper forwarding device of a sawing machine, comprising (A) a forwarding driving shaft and a forwarding adjusting shaft, so provided inside an arm of the sawing machine as to be parallel to a main axis, and (B) a forwarding adjusting mechanism, which includes the forwarding adjusting shaft, for connecting the main axis and the forwarding driving shaft, (C) a cloth on a bad of the sawing machine being forwarded from above by an upper forwarding gear, which is supported by and drooped from a tip of the arm of the sawing machine, for transmitting repetitive rotations of the forward driving shaft generated, within a predetermined maximum angle, in accordance with rotations of the main axis, and (D) an amount of forwarding movements of the upper forwarding gear being adjusted by adjusting, using rotation operation of the forwarding adjusting shaft, the maximum angle of the repetitive rotations of the forward driving shaft, the upper forwarding device of the sawing machine comprising:
(E) a forwarding adjusting lever that engages a part of the forwarding adjusting shaft and oscillates within a surface substantially orthogonal to the forwarding adjusting shaft;
(F) a forwarding adjusting rod, whose back end is connected to an end of the forwarding adjusting lever extended downward, so supported outside the arm of the sawing machine as to be slidable freely in a longitudinal direction;
(G) a forwarding operation shaft, which is provided side-by-side with the forwarding adjusting rod and connected in such a manner as to allow the forwarding adjusting rod to move relatively in a longitudinal direction, the forwarding operation shaft being causing, by an operation thereof, the forwarding adjusting lever to oscillate via the forwarding operation shaft, so that the forwarding adjusting shaft rotates; and
(H) a graduated board, provided along a longitudinal direction of the forwarding adjusting rod, face-to-face with an operation position of the upper forwarding gear, the graduated board indicating the amount of forwarding movements of the upper forwarding gear by using, as a medium, changes of a sliding position of the forwarding adjusting rod caused by the operation of the forwarding operation shaft.

[Summary of Plaintiff's Argument on Disputed Point]
The trial decision erred in deciding that the recitation of the element E does not violate Articles 5(5)(i) and 5(5)(ii) of the Old Law for the following reason: "Even if it is not recited in the element E that the engagement is 'engagement at the engaging hole 61 having an adequate size in the vertical direction', it is not particularly difficult for a person with ordinary skill in the art to understand that the wording 'engages a part of the forwarding adjusting shaft' means that 'engages a part of the forwarding adjusting shaft by means of a well-known engagement mechanism using the long hole and the engaging pin (mechanism so arranged as to convert the oscillation movements into rotation movements)' " (Trial Decision, page 6, second paragraph from the bottom).

[Court Decision]
The element E is recited only as follows: "a forwarding adjusting lever that engages a part of the forwarding adjusting shaft and oscillates within a surface substantially orthogonal to the forwarding adjusting shaft". It is therefore obvious that no specific arrangement of the engagement of the adjusting lever with the forwarding adjusting shaft is recited. Article 5(5)(i) of the Old Law, which is applicable to the present application for a utility model registration, stipulates that in a utility model claim, there shall be set forth only those matters indispensable for the arrangement of the device for which a utility model is sought. In this regard, the present trial decision decided that the wording in question refers to the matter specifically described in the example in the detailed description of the device, although this is not recited in the utility model claim. The trial decision decided accordingly that only those matters indispensable for the arrangement of the device for which a utility model is sought was recited in the utility model claim.
A gist of a device must be determined on the basis of the recitations of the utility model claim in the specification attached to the request, unless circumstances require otherwise. Certainly, there are cases where it is allowed to interpret the technical meaning of a term or terms of the utility model claim in light of the description in the detailed description of the device in the specification. In the present case, however, it is not allowed to interpret the term "engage" in "engages a part of the forwarding adjusting shaft" to be limited to the "engagement with a part of the forwarding adjusting shaft by means of a well-known engagement mechanism using the long hole and the engaging pin (mechanism so arranged as to convert the oscillation movements into rotation movements)", which is described in the example in the detailed description of the device. Such an interpretation would add an element that is not recited in the utility model claim, disregarding the fact that the utility model claim merely states "engages". Interpreting the word "engages" in such a manner is beyond the limitation within which the detailed description of the device in the specification may be taken into consideration. Therefore, under the reasons for the trial decision, the recitation of the element E violates Article 5(5)(ii) of the Old Law.
2-8 Difference in order of steps in invention of a method

[Judgment Number] H15 626 Tokyo High Court H12 Administrative Case (ke) 475 Decision in Trial Against Examiner's Decision to Reject Maintained

[Trial Number] 1999 Trial No. 6202

[Title of the Invention] Semiconductor Device and Manufacturing Method of the Same (amended as "Method of Manufacturing Semiconductor Device")

[Invention at Issue]
A method of manufacturing a semiconductor device, comprising the steps
of:
(1) heat annealing an amorphous silicon film on an insulation surface, so as to form a crystalline silicon film;
(2) forming an island-shaped active layer constituted of the crystalline silicon film;
(3) oxidizing a surface of the active layer in an oxidizing atmosphere by heat annealing or light annealing using such light that has a wavelength of 4im to 0.5im, so as to form an oxidized silicon film;
(4) forming an insulating film on the oxidized silicon film by using chemical gas reaction means;
(5) annealing the insulating film in an atmosphere including nitrogen or nitrogen compound; and
(6) forming a gate electrode on the insulating film.
(In the following, the above steps are referred to as "the first step of the present invention," "the second step of the present invention," and the like. However, where it is obvious that the step is that of the present invention, "of the present invention" is omitted. Paying attention to the processing in the steps, there are also cases where the step of crystallizing the amorphous silicon film (the first step of the present invention) is referred to as "the crystallization step", and the step of oxidizing the crystalline silicon film by heat annealing or light annealing so as to form the oxidized silicon film (the third step of the present invention) is referred to as "the oxidization processing step".)

[Summary of Plaintiff's Argument on Disputed Point]
The present invention needs to be carried out according to a specific order of steps. In an invention of a manufacturing method, such as the present invention, the order of combining steps is very important. Therefore, even if the steps of the present invention are identical to the steps of the invention of the cited reference, the steps of the present invention is not described at all in the cited reference.

[Court Decision]
When the present invention and the invention of the cited reference are compared by a step-by-step analysis, it is obvious that there is an overlap. The plaintiff's argument is virtually that an invention that needs to be carried out in a specific order of steps cannot be compared at all with another invention if the first step of the former is different from that of the latter. However, according to this argument, if an invention of a manufacturing method has a difference over a cited reference in one step, the invention cannot be compared at all with the cited reference, regardless of any overlap in the rest of the steps. This conclusion is clearly inappropriate.
Moreover, it is clear that, if an invention of a manufacturing method and an invention of a cited reference are different in the order of steps, it is sufficient to consider the difference from the viewpoint of the inventive step, that is, whether or not the steps of the invention whose patentability is in question could easily have been made by a person with ordinary skill in the art by separating or combining the steps, changing the order of steps, or adding a new step.
Therefore, the plaintiff's argument, that the content of the present invention is not disclosed at all in the cited reference as long as there is a difference between the present invention and the method of the cited reference (cited invention) in contents and order of steps, is unfounded.
2-9 Necessity of proving significance as a critical point in parameter-limiting Inventions

[Judgment Number] H15 630 Tokyo High Court H13 Administrative Case (ke) 413 Decision to Invalidate in Trial for Invalidation of Patent Maintained

[Trial Number] Invalidation 2000-35108

[Title of the Invention] Nongelled Paint Including Copper Pyrition

[Invention at Issue]
A paint or a composition of a paint base material, having improved biocidal effect and gelatification resistant property,
the paint or the paint base material including a biocidal agent essentially consisting of copper I oxide and copper pyrition or pyrition disulfide (* "pyrition disufide" is a clerical error; the same applies below), or a combination thereof,
the copper pyrition and/or the pyrition disulfide being 1% to 6% by weight of a total weight of the paint or the paint base material, andthe copper I oxide being 20% to 70% by weight of the total weight of the paint or the paint base material.

[Summary of Plaintiff's Argument on Disputed Point]
(1) The invention of the prior application is a superior concept based on the simple simultaneous use theory, whereas the present invention is a subordinate concept based on the compounding ratio limitation theory. Since the examples specifically disclosed in the invention of the prior application are deleted, the present invention 1 cannot be rejected on the basis of the disclosure in the specification of the prior application.
(2) The range of the amount of the copper pyrition in the present invention was limited by amendment from "approximately 1% to 25%" (D5, page 8, claim 2) to "1% to 6%", in order to eliminate the overlap between the invention of the prior application and the present invention. Therefore, it is not required to prove that the range "1% to 6%" has a significance as a critical point.

[Court Decision]
In parameter-limiting inventions, if the parameter range of the invention of a later application is included in the parameter range of the invention of a prior application, the invention of the later application has novelty only if, considering the technical meaning of the limitation to the parameter, advantageous effects over the invention of the prior invention is brought about by the invention due to the significance of the limited parameter as a critical point. In this regard, the limited parameter of the present invention has no significance as a critical point. Therefore, the plaintiff's argument cannot be adopted.
(2) The present invention is made by limiting the copper pyrition to "1% to 6% by weight of a total weight of the paint or the paint base material". In order for such a limited parameter to have advantageous effects and a significance as a critical point, the entire range of "1% to 6%" including the specific parameter (5.01%) in the example has advantageous effects as in the example and over the parameters that do not fall within the range. Therefore, the plaintiff's argument, that it is not required to prove that the range "1% to 6%" has a significance as a critical point, is unfounded.