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Case in which the support requirement was denied regarding a “Parameter Invention” in the field of food – Case in which the court rescinded a JPO decision (2016 (Gyo-ke) 10147)

ICHINOMIYA, Masayuki
Japan Patent Information Committee

This case is a case in which the court rescinded a JPO decision (dismissed) concerning Invalidation Trial No. 2015-800008 relating to Patent No. 5189667.  JPO rendered a decision to the effect that the correction of the Claims shall be permitted, and the request for trial shall be dismissed, but the intellectual property high court rescinded the JPO decision on the basis that the description in the Claims after the correction does not conform to the support requirement.  The petition for acceptance of final appeal by the patentee was dismissed by the Supreme Court, and the court decision was made final.

This case reaffirmed that a parameter invention requires the specification to be written so that it allows a person skilled in the art to understand the technical meaning of the interrelation between the parameter described in the Claims and the technical effect of the invention.  It is particularly essential to check, when drafting a specification, whether there exists other elements that may influence the technical effect of the invention, and to consider conducting additional comparative experiments if necessary.

Further, if the effect of the invention is to be evaluated by a sensory test (flavor evaluation test) in an invention in the field of food, the standard for evaluation should be clearly indicated in the specification.  In addition, when evaluating the effect of the invention based on multiple parameters, the specification should be written in such a way that a person skilled in the art can understand that the evaluation method is reasonable.

1.Overview of the Case

Feb. 1, 2013        Patent Registration, Patent No: 5189667 (Patentee: Ito En, Ltd.)
Jan. 9, 2015         Request for Invalidation Trial: No. 2015-800008 (Demandant: Kagome Co., Ltd.)

Ground for Invalidation 1 (enablement requirement)
Ground for Invalidation 2 (support requirement)
Ground for Invalidation 3 (loss of novelty due to public working)
Ground for Invalidation 4 (loss of novelty as a result of becoming publicly known by a publication, etc.)
Ground for Invalidation 5 (lack of inventive step)

Jan. 5, 2016         Request for Correction
May 19, 2016      Decision: Correction is permitted, and the request for trial shall be dismissed.
Jun. 24, 2016       Appeal: 2016 (Gyo-ke) 10147

Plaintiff: Kagome Co., Ltd.
Defendant: Ito En, Ltd.

Ground for Rescission 1 (error in the determination concerning fulfillment of the requirements for correction)
Ground for Rescission 2 (error in the determination concerning enablement requirement)
Ground for Rescission 3 (error in the determination concerning fulfillment of the support requirements)
Ground for Rescission 4 (error in finding and determination of loss of novelty as a result of becoming publicly known by a publication, etc.)
Ground for Rescission 5 (error in determination of lack of inventive step based on publications)

Jun. 8, 2017 Court Decision: Correction requirement is satisfied, support requirement is unsatisfied.
Jun. 27, 2018 (date of disposition): Dismissal of petition for acceptance of final appeal

2.Subject Invention after Correction (only independent claims are given; underline shows the corrected portion)

[Claim 1]
A tomato drink which is characterized in that its sugar content is from 9.4 to 10.0, its sugar acid ratio is from 19.0 to 30.0, and the total of its glutamic acid content and aspartic acid content is from 0.36 to 0.42 weight percent.
[Claim 8]
A production method of a tomato drink which is characterized in that said sugar content, sugar acid ratio, glutamic acid content and aspartic acid content are adjusted by mixing at least tomato paste (A) and clear tomato juice (B) so that the sugar content is from 9.4 to 10.0, the sugar acid ratio is from 19.0 to 30.0, and the total of glutamic acid content and aspartic acid content is from 0.36 to 0.42 weight percent.
[Claim 11]
An acid taste reduction method for a tomato drink which is characterized in that said sugar content, sugar acid ratio, glutamic acid content and aspartic acid content are adjusted by mixing at least tomato paste (A) and clear tomato juice (B) so that the sugar content is from 9.4 to 10.0, the sugar acid ratio is from 19.0 to 30.0, and the total of glutamic acid content and aspartic acid content is from 0.36 to 0.42 weight percent.

3.Court Judgement

 (1) Concerning Ground for Rescission 1

The court indicated as follows, and judged that Ground for Rescission 1 is without reason.
・The numerical range after correction are narrower than those before the corrections.
・The upper limit and the lower limit of the numerical range after correction are specifically indicated in the Examples.
・The plaintiff alleges that it is impossible to understand that the effect of the Inventions is achieved within the numerical ranges of the Inventions after the Correction, and the Inventions are hardly considered to achieve the same flavor as that of Working Examples 1 to 3 because the numerical range of acid taste is wide. However, these matters should be addressed in the written description requirement of the claims.
・The plaintiff alleges that the subject specification does not disclose the combination of numeric ranges after the correction. However, the minimum and maximum values of the numeric ranges after the correction is specifically shown in the Working Examples, so the numeric ranges after the correction remains within matters disclosed in the specification, and do not introduce new technical matters.

(2) Concerning Ground for Rescission 3

Upon referring to the point of view shown in the “Case of Manufacturing Methods of Polarizing Film” (IP High Court, Decision on Nov. 11, 2005, 2005 (Gyo-ke) 10042), the court pointed out as follows, and judged that the Claims relating to the subject invention do not conform to the support requirement.

・The present invention relates to the so-called “parameter invention,” and with such invention, it is appropriate to construe that the statements in the Claims are deemed to fulfill the support requirements for the description when the detailed explanation of the invention is stated to an extent that a person skilled in the art can understand the technological significance of the relationship between the achieved effects (performance) and the numerical ranges of parameters, without the disclosure of specific examples, at the time of filing of the patent application, or specific examples are disclosed and stated to an extent that a person skilled in the art can recognize that the desired effects (performance) can be obtained within the numerical ranges of parameters, in light of common technical knowledge at the time of filing of the patent application.
・The Working Examples state that flavor evaluation tests to examine the “sweetness,” “acidity,” and “thickness” of the tomato drinks were conducted. When measuring the relationship between the flavor and the numerical ranges of said three factors, using varied sugar content, sugar acid ratio, and glutamic acid content, at least one of the following methods needs to be taken: [i] if the flavors of “sweetness,” “acidity,” and “thickness” are recognizably affected only by said three factors or when there are other factors that have impact on these flavors but there is no need to define them, explanation to such effect is to be given from a technical perspective before carrying out the flavor evaluation test using varied figures for said three factors; or [ii] if there are other factors that have recognizable impact on the flavors of “sweetness,” “acidity,” and “thickness,” in addition to said three factors, and it cannot be said that there is no need to define them, said other factors are to be set unchanged at a certain value in the flavor evaluation test using varied figures for said three factors.  However, the present specification does not mention anything about these two points.
・As for the methods for the flavor evaluation tests by the panelists, it is not stated that there was a step to standardize among the panelists the level of intensity of “sweetness,” “acidity,” and “thickness” required to raise the evaluation by one point, nor are the points given by individual panelists provided. Hence, a person skilled in the art would not be able to presume that it was reasonable to use the flavor evaluation method that provides a comprehensive evaluation of the flavors by simply summing the average evaluation points given by the panelists for each flavor.

Authors

Patent Division, Chemical SectionAssociates Patent Attorneys

ICHINOMIYA, Masayuki (Ph.D.)

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Japan Patent Information Committee

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