[2] The description of the selective invention

[2] In the case of a selective invention, the specification is sufficient if it clearly states that there is a significant effect compared to the prior invention, and it is not necessary to enter the specific comparative experiment data that can be confirmed, and it is also allowed to submit the data supporting the effect of the selective invention after filing an application only when there is doubt about the effect.

2. The costs of lawsuit shall be borne by the defendant.

The following facts may be acknowledged in full view of the descriptions of Gap evidence 1-1, 2-5 and Gap evidence 5 and the whole purport of the pleadings:

A. The process of the instant trial decision

(1) On Nov. 21, 1994, the Plaintiff filed an international application with the U.S. on Nov. 21, 1994 with respect to an invention (hereinafter referred to as "the invention of this case") whose name is "ney croman compound", and whose claim is the same as the invention of this case (hereinafter referred to as "the invention of this case") and on July 30, 1996, the Plaintiff filed an application with the Korean Intellectual Property Office on July 30, 1996.

(2) On February 26, 1999, the Korean Intellectual Property Office rendered a ruling of rejection on the ground that the invention described in the publication published prior to the date of the priority claim could easily be made by a person with ordinary knowledge in the field concerned.

(3) The plaintiff filed a trial with the Intellectual Property Tribunal against the above rejection ruling, but the Intellectual Property Tribunal tried to dismiss the plaintiff's request for a trial on June 30, 200 following the case 9 Won1208.

B. Claim for the invention of this case (as amended by January 29, 1999)

Paragraph 1: 3R*4S*3- [4-(4-prodiphenyl)-4-Nbide - Plionidine-1-day]-Cro delivery-4, 7-diol compound, his or her optical, natural, and pharmaceutically acceptable salt

Paragraph 2: in paragraph 1, LAS 3R*4S*3- [4-(4-prodiphenyl)-4-Nbrid - Plionidine-1-day]-Cromann-4, 7-diol compounds

Paragraph 3: in paragraph 1, paragraph 3: (1) + (3R4S 3- [4-(4-proludiphenyl)-4-Nydridine-1-day]-Cro delivery-4, 7-diol compounds

Paragraph 4: (- in paragraph 1, (-) 4R3S 3- [4-(4-proludiphenyl)-4-Nydridine-1-day]-Cro delivery-4, 7-diol compounds

paragraphs (5) through (16) ( Deletion)

Paragraph 17: in paragraph 1, a compound consisting of (3R, 4S)-3- [4-(4-(4-prodiphenyl)-4-Nbideidine-1-day] - 30,000-4, 7-didyol tar tart typhalton compounds

C. Summary of the cited invention

(1)No. 2-2 of A is the Patent Gazette No. 93-11041 publicly announced on November 20, 1993, which is recognized as a publication published prior to the date of claiming the priority of the invention of this case ( January 31, 1994), and the summary of the invention described therein (hereinafter referred to as "human invention") is as described in the following claims:

Paragraph 1: The following general formula (I) compounds or their saltss that may be permitted in a pharmaceutically;

In the above formula, A and B are either - CH2CH2- or separate from each other, X is CH2 or O, X1 is H or O, Z is H, F, Cl, Br or OH, Z1 is H, F, Cl, Br or (C1-C3), Z1 is H, F, Cl, Br or (C1-C3), n is 0 or 1, m is 0 or 1, and m is 0 or 1 or 6.

Article 2 (Omission) through (9)

(ii)In addition, the specification of the cited invention includes two butane compounds: “I think of the easiness of manufacture and biological vitality value, desirable general (I) compounds are divided into H, F, Cl orOH, Z 1, Z Z H, mm m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m m., one of these sets, and one of the other is Tr - m m m m m m.

D. Summary of the reasoning for the trial decision of this case

(i)The general formula (I) compound of the invention for use is the same compound as the chemical formula (I) compound of the invention for use in this case (hereinafter referred to as "the chemical formula (I) compound of this case") with the chemical formula (I) compound of this case. Paragraph 1 (hereinafter referred to as "paragraph 1 (hereinafter referred to as "the invention of this case") of the patent application of this case is the same as that of the two sub-dimensional (3) compound of the invention for use in the chemical formula (I) compound of H, X O, ZH, Z1 F, n, n, n1 or m., and it is easy to enter the four kinds of R, R, S, S and S, the relative composition of the invention for use in the non-dimensional (I) compound of this case, but it is easy to cite the two kinds of sub-dimensional (3rd and four kinds of carbon) compound of the chemical formula in the chemical formula, and it is easy to cite them with the common properties of R-I (I) compound of this case.

(2) The Plaintiff asserts that the 10 times or superior to that of the instant chemical (I) chemical (I) compound is proved by evidence Nos. 6 (data comparing the activation as of the instant chemical (I) compound and the NMDA route (NMA route) with the cited invention). However, experimental data on such significant operating effects cannot be acknowledged as not being stated in the specification at the time of the application. Moreover, the Plaintiff’s comparative experiment was conducted on the instant chemical (I) compound and the quoted invention with the result of comparing the instant chemical (I) compound with the cited invention, and it is not recognized as an selective invention eligible for a patent, since the 10 times or more of the instant chemical (I) compound’s vital activation in the instant chemical (I) compound is superior to all compounds described in the specification of the cited invention.

(3)The claims 2 to 4, and 17 (hereinafter collectively referred to as "the claims 2 to 4 inventions of this case," and hereinafter referred to as "the claims 17 inventions of this case") claims 1 to 4 of this case shall not be deemed to be an alternative invention that can be patented for the same reasons as those of the claims 1 invention of this case.

2. Summary of the Plaintiff’s grounds for revocation of the trial decision

The compound of the pending invention does not specifically commence in the cited invention, and it can be confirmed that in comparison with the compound of the quoted invention, the software protection activation level is ten times or superior to the compound of the quoted invention. Accordingly, the invention of this case is recognized as an selective invention, and its inventive step is recognized.

3. Determination

A. Preparation for the composition of the patent application invention of this case and the cited invention

(1)Preparation for the instant Claim 1 invention and the quoted invention.

The invention of paragraph 1 of this case is about 3R*4S*3- [4-(4-ludiphenyl)-4-Nibideidine-1-day] - 7-diol compound of this case [the chemical formula (I) of this case] , its opology and its luminously acceptable salt, and the quoted invention is about the following general formula (I), B, X1, Z1, Z, Z1, Z, and mar and 4) compound of this case which are claimed in accordance with the following chemical formula (I), and the combination of compounds of this case including A and B, X1, X1-1-O, HH, 1-I-OH, 7-diol compound of this case which are ordinarily widely broad, and the combination of compounds of this case includes 4 different kinds of chemical compounds of this case (I-R) and 4 different kinds of chemical compounds of this case, among these compounds of this case, the combination of these compounds of this case and 4 different kinds of chemical compounds of this case (I-R).

A person shall be appointed.

In the above formula, A and B are either - CH2CH2- or separate from each other, X is CH2 or O, X1 is H or O, Z is H, F, Cl, Br or OH, Z1 is H, F, Cl, Br or (C1-C3), Z1 is H, F, Cl, Br or (C1-C3), n is 0 or 1, m is 0 or 1, and m is 0 or 1 or 6.

(2)The inventions of paragraphs 2 to 4, 17 of this case relate to Lane of the chemical formula (I) compound of this case, to Lane of the first luminous dye, first luminous dyeological dyeological dyeological dyeological dyeological dyeological dyeological dyeological dyeological dyeological dyeological dyeological dyeological dyeological dyeological dye, second dyeological dyeological e.

B. Whether the patent application invention of this case is a selective invention and non-obviousness is recognized

(1) The term "alternative invention" means an invention consisting of a subordinate concept that has not been specifically commenced in the preceding invention expressed as a superior concept, and its inventive step should be recognized in the event there is a remarkable effect that can not be predicted compared to the preceding invention. The patent application invention in this case constitutes an invention whose elements constitute a subordinate concept included in the cited invention expressed as a superior concept, and thus, the nonobviousness of the patent application invention in this case is recognized as an selective invention.

(2) Whether the instant chemical formula (Ⅰ) compound has been specifically commenced in the cited invention

The chemical (I) compound of this case is about F in the general formula (I) of the quoted invention. The quoted invention is defined as H, F, Cl, Br, or (C1 to C3) Alkin in the general formula (I), while the chemical compound of this case is defined as H, F, Cl, B, or Zkin in the general formula (I) compound, the chemical compound of this case is defined as only H in the general formula (I), and the chemical (I) compound of this case is defined as only H in the general formula (I), and the chemical (I) compound of this case is not specifically initiated in the quoted invention.

(3) Whether the patent application invention of this case has a significant effect on prediction compared to the cited invention

(A) The specification (No. 1-2) of the pending invention of this case states that "the invention of this case is related to the cromatic cromatic cromatic cromatics (5.17 to 18th e.g., the 5th e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e., the e. the e

On the other hand, evidence Nos. 6, which is recognized as the authenticity by the purport of oral argument, contains data obtained in accordance with the method of measurement stated in the specification, which compares the activation with the chemical (I) compound of this case and the quoted invention compound of this case. The chemical (I) compound of this case (I) compound of this case is indicated as being more than 10 times the ordinary composition of the quoted invention than 3 compound of the quoted invention. The chemical (I) compound of this case as stated in evidence No. 6 of this case and the quoted invention of this case are the same structure of different locations in general formula (I) and only 1 is F (the application invention of this case) and H (human invention) compound of this case, so that the chemical (I) compound of this case, which is superior to the chemical (I) compound of this case as stated in evidence No. 6 of this case, can be seen as being implemented by all other chemical compounds than the 3 compound of this case.

(B) In the selective invention of a chemical substance, the defendant asserts that the significant action effect compared to the prior invention must be confirmed by the specification submitted at the time of the filing of the application, and that it cannot be confirmed by the material submitted after the filing of the application. However, in the case of the selective invention, if the specification clearly states that the effect of the prior invention is more significant than that of the prior invention, it does not need to be stated in the detailed comparative experiment data that can be confirmed, and if there is doubt about that effect, it is allowed to submit after the filing of the application the material supporting the effect of the prior invention, such as specific comparative experiment data, etc.

In addition, the Defendant asserts that the dosages of the two inventions listed in the specification of the invention filed in the instant application and the quoted invention are identical “0.02 to 10 xx/day regardless of the administration route,” and that there is no significant difference in the activations of the two inventions. However, the Defendant’s assertion is without merit, on the sole basis that the “0.02 to 10 xx 10 xx/day” falls under a considerably broad administration, and thus it is identical, it cannot be a ground to deem that the activations of the chemical formula (Ⅰ) compound in the instant case are not significantly different from the compound of the cited invention.

(다)그러므로 이 사건 출원발명과 인용발명은 모두 CNS(Central Nervous System；중추신경계) 퇴행성 질환의 치료에 사용되는 신경보호작용을 갖는 화합물에 관한 것으로, 이 사건 출원발명의 명세서에 인용발명과 비교한 이 사건 출원발명의 우수한 효과를 명확하게 기재하고 있고, 갑 제6호증에 의하여 이 사건 화학식(Ⅰ) 화합물이 인용발명의 화합물에 비하여 경구활성이 10배정도 우수하다는 것이 인정되므로, 이 사건 출원발명의 화합물은 인용발명의 화합물에 비해 그 효과의 현저성이 인정된다 할 것이다.

C. Sub-committee

Therefore, the nonobviousness of the instant Claim 1 invention is recognized as a selective invention, and accordingly, the nonobviousness of the instant Claim 1 invention should be recognized as a matter of course, in detail, the compound of the instant Claim 1 invention.

4. Conclusion

If so, the decision of this case is unlawful and the plaintiff's claim is justified.

Judge Lee Jin-sung (Presiding Judge)