[1] Where most of the grounds for rejection and all of the claims filed by a patent application have no non-obviousness, whether the grounds for rejection are different from the grounds for rejection of non-obviousness (negative)

[2] Whether partial withdrawal of a patent application is permitted (negative)

[1] Article 63 of the former Patent Act (amended by Act No. 6411 of Feb. 3, 200) provides that "When an examiner intends to render a ruling of rejection under Article 62, he/she shall notify the applicant of the ground for rejection and give him/her an opportunity to submit a written opinion within a specified period." Article 170 (1) and (2) of the same Act provides that in a trial procedure for objection to a ruling of rejection, if he/she finds any ground for rejection different from that of the ruling of rejection, he/she shall notify the applicant of the new ground for rejection by applying Article 63 mutatis mutandis. "other grounds for rejection than those of the ruling of rejection which should be notified in the trial procedure" does not mean uniformly a ground for rejection different from those of the original ruling of rejection and all those of the ruling of rejection, and no new or non-obviousness is available in the procedure for rejection, or no new or non-obviousness is available in the procedure for rejection as a whole, and no ground for rejection shall be presented in the procedure for rejection or non-obviousness as a new or non-obviousness.

[2] Article 47 of the former Patent Act (amended by Act No. 6411 of Feb. 3, 200) provides for various provisions as to the withdrawal of all of one patent application (Articles 6, 11, and 65(6)) and does not provide for partial withdrawal of a patent application. If partial withdrawal of a patent application is recognized, an amendment to delete part of a claim without any time limit should be separately allowed without any time limit, which would unreasonably delay an examination against the purport of Article 47 of the former Patent Act and undermine the stability of the procedure, and thus, it would compromise the stability of the procedure by unfairly delaying an examination against the purport of Article 47(3)1 of the former Patent Act, apart from the fact that partial withdrawal of claims is prohibited by the method to reduce the scope of claims pursuant to Article 47(1)1 of the former Patent Act.

[1] Articles 62, 63, and 170(1) and (2) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 200) / [2] Articles 6, 11, 47, and 65(6) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 200)

Bacoal Epid (BRITS THHHOOGY GRUP US US, INC. (Patent Attorney Park Im-con-Law, Counsel for defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

1. The plaintiff's claim is dismissed.

2. Litigation costs shall be borne by the plaintiff.

The decision made by the Intellectual Property Tribunal on November 30, 200 on the case No. 99 Won1215 shall be revoked.

1. Basic facts

In full view of the whole purport of the pleadings, the following facts can be acknowledged in the statements in Gap evidence Nos. 1, 4, 6, 8 and Eul evidence Nos. 2.

A. The content of the patent application invention of this case

(1) Name: Multi-story electronic machine for control of the boundary floor.

(2) The patent application date (priority date): April 25, 1995 ( October 26, 1992), 95-701589

(3) Applicants: Plaintiff

(4) The scope of the patent claim (amended on August 22, 1998)

청구항 41. 임의의 표면에 대해 운동하는 전기전도성 유체의 흐름을 제어하는 장치에 있어서, 상기 유체 내에 자속선을 가지는 자장{(x, y, z, t)}을 발생시키는 자장발생수단；상기 자장발생수단에 대해 미리 정한 방향으로 지향배치되는 전류발생수단으로서, 상기 자속선을 횡절하는 전류밀도{J

(x,y, z, ort) means of electric current generation which generates the foregoing fluids: and the above-mentioned self-head(s) and current density(J)

(i)the above-mentioned sub-sections (i) and the above-mentioned current density (J) by making at least one of the above-mentioned density and directions a timely change;

(x)The force (x, y, z, t) in respect of which the said flow is controlled by the flow of the fluids is not zero (0), above, on the surface above which the said flow controls the flow of the fluids = J;

x) Electric current flow control device with characteristics, including control methods designed to generate x).

In Claim 42.41, the above control means shall reduce the resistance (drag) above on the surface, and the above current density (J).

)Electric flow control devices with characteristics that change the direction.

In regard to claims 43.42, with the characteristics of both sides, electric flow control devices with the two-way surface named above,

4.With respect to the method of determining the flow control of the electric diver fluid which exercises on the surface of a voluntary surface, the current density provided in the said fluid by the electric source for the electric source to cut off the transmission line in the body above (x, y, z, t): A current density provided in the said body (J)

(x, y, z, t)}를 결정하는 단계；및 상기 자장 및 전류가 상기 유체 내에 상기 유체흐름을 제어하기 위한, 상기 표면에 수직한 0이 아닌 성분을 가지는 힘{(x, y, z, t)＝J

x) to form a x, the above sub-paragraph (b) and the current density (J)

(J) the above-mentioned, (i) and current density, provided for the ordinary changes offered to him and the average flow direction of him;

(i)the method of determining the flow flow control with a distinctive feature of setting the relative location and density;

(In the invention of this case, 44 claims exist in both paragraphs (1) through (4), but paragraphs (1) through (40) are determined to have non-obviousness in the trial decision of this case, and there is no dispute over both the plaintiff and the defendant, and thus the description is omitted).

(b) Plaintiff’s rejection rejection rejection appeal (Patent Tribunal 99 Won1215)

(1) Ruling of rejection

On February 26, 199, the Korean Intellectual Property Office rendered a ruling of rejection on the ground that the invention described in paragraphs (1) through (44) of the patent claim (hereinafter referred to as the "claim") of this case can easily be made by a person with ordinary knowledge in the art to which the invention pertains (hereinafter referred to as the "party") by an invention of 3,360,220 disclosed prior to the filing date of the priority claim for the invention of this case (hereinafter referred to as the "human invention"), and maintained the ruling of rejection of the original patent on the same ground.

(2) The result of the trial decision: November 30, 200, and the dismissal of the appeal.

(3) Summary of the grounds for the instant trial decision

(A)Paragraphs 1, 20 and 40, among claims independent of the invention claimed in this case, shall be recognized as non-obviousness of the cited invention, and also paragraphs 2 through 19, 21 through 39, subordinate claims to paragraphs 1 and 20 above, shall be recognized.

(b)However, claims 41 to 44 of the invention of this case can not be patented under the provisions of Article 29 (2) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2000; hereinafter the same) because they can easily be claimed from the contents of the cited invention.

(C) Accordingly, if there are two or more claims, if there is a ground for rejection even in one claim, the entire patent application shall be rejected (see, e.g., Supreme Court Decision 94Hu203, Dec. 26, 1995). Thus, the entire patent application invention of this case, including the remaining claims of the patent application invention, shall not be patentable.

2. The parties' assertion

A. Summary of the ground for revocation of the plaintiff's trial decision

(1) On the grounds of the trial decision of this case, the Korean Intellectual Property Trial and Appeal Board held that although the claims 1 to 40 among the claims in the patent application of this case are non-obviousness, the entire patent application should be rejected due to the lack of non-obviousness. The grounds for the trial decision of this case are clearly different from the grounds for rejection of the original rejection ruling that the whole claims in the patent application of this case should be rejected due to lack of non-obviousness, and the decision of this case is ultimately erroneous.

Therefore, the Korean Intellectual Property Tribunal should have made a decision to revoke and review the original rejection ruling pursuant to Article 176 of the former Patent Act on the ground that the grounds that the grounds for rejection were erroneous, or should have made a decision based on the result of correction after deciding whether to delete the claims deemed non-obviousness by notifying the applicant of the new grounds for rejection and giving the applicant an opportunity for correction pursuant to Article 170 of the same Act. However, the decision of this case is unlawful as it violates the procedure of Article 170 of the former Patent Act, since it has made a decision to dismiss the Plaintiff’s claim and maintain the original rejection ruling without going through such correction procedure.

(2) Of the claims in the instant patent application invention, the Plaintiff renounced the right to obtain a patent and submitted to the Korean Intellectual Property Office a withdrawal letter that the patent application is withdrawn, among the claims in the instant patent application invention, which are determined to have no inventive step in the trial decision. Thus, the Plaintiff’s withdrawal of the patent application is a sole act that waives the right to obtain a patent and withdraws the patent application, and it does not require anyone’s consent or consent, and it is permitted unless any restriction is imposed by law. The former Patent Act does not impose any restriction on partial waiver of the right to obtain a patent or partial withdrawal of the patent application

However, Article 47(1) of the former Patent Act provides that a patent application may amend the specification or drawing(s) of the patent application and limits the period for correction in cases where the reasons for rejection are notified or a rejection ruling is rendered. Article 47(3) of the same Act provides that the case where the scope of a patent is reduced shall be the case where an amendment is made to the scope of a patent. However, in the current patent system where the claim is reduced, the withdrawal of a patent application for part of a claim among multiple claims shall not be deemed to constitute a reduction to the scope of a patent under the above Act. Thus, the above provision concerning restrictions on amendment cannot be applied to the withdrawal

In addition, Article 215 of the former Patent Act provides that a patent shall be deemed granted or a patent shall be deemed granted for each claim in applying Article 65(6) and Article 119(1) of the former Patent Act with respect to a patent or a patent right with two or more claims. Article 65(6) provides that "Where a patent application is abandoned, invalidated, or withdrawn after the laying open of the application, when a ruling of refusal becomes final and conclusive, when a ruling of revocation under Article 74(3) of the former Patent Act becomes final and conclusive, or when a ruling of invalidation under Article 133 becomes final and conclusive, the right under Article 215(2) of the former Patent Act shall be deemed to have never existed." Article 119(1) provides that "no patentee may waive a patent right without the consent of an exclusive licensee, pledgee, or non-exclusive licensee under Article 39(1), 100(4), or 102(1) of the former Patent Act, each of the above provisions provides that "no patent right shall be waived at any time during several claims.

Therefore, the patent application invention of this case should be revoked on the ground that the patent application of the claim Nos. 41 to 44 recognized as non-obviousness in the trial decision of this case had been retroactively extinguished by the legitimate withdrawal of the applicant. Thus, the trial decision of this case on the ground that the patent application of this case No. 41 to 44 invention did not have non-obviousness

(b) Markets:

(1) Whether the grounds for the instant trial decision are grounds for rejection different from the grounds for rejection

(1) Facts recognized.

In full view of the whole purport of arguments as to Gap evidence Nos. 1 through 7, the Korean Intellectual Property Office notified the plaintiff of his opinion on the ground that the claim Nos. 1 through 44 of the invention claimed in the patent application of this case could easily be patented by the cited invention, and the plaintiff submitted his opinion as of February 2, 1999, and on this basis, the plaintiff rejected the patent application of this case on the ground that the plaintiff's rejection of the above notified rejection ground was not completely resolved on the 26th of the same month after re-examination of the patent application of this case, and the Korean Intellectual Property Tribunal rejected the plaintiff's decision of rejection on the ground that the plaintiff's rejection ground that the invention Nos. 1 through 40 of the patent application of this case was recognized as non-obviousness compared to the cited invention, and the plaintiff's rejection of the claim Nos. 41 through 444 of the patent application of this case on the ground that the cited invention could not be easily patented by the cited invention.

(2) Determination

Article 63 of the former Patent Act provides that "When an examiner intends to make a ruling of rejection under Article 62, he/she shall notify the patent applicant of the reason for rejection and give him/her an opportunity to submit a written opinion within a specified period." On the other hand, Article 170 (1) and (2) of the same Act provides that where an examiner finds any reason for rejection different from that of the ruling of rejection in the procedure for a trial on objection to the ruling of rejection, he/she shall notify the applicant of the new reason for rejection by applying mutatis mutandis the above Article 63. The purport of each provision is to determine whether an invention for which a patent application is filed is eligible for a patent, he/she shall have high expertise, and even if an examiner or a judge needs to have such knowledge, he/she shall not be able to obtain such knowledge. Thus, it would be too harsh that an examiner or a trial examiner immediately makes a ruling of rejection or rejection on the ground for rejection without giving the applicant an opportunity to submit an opinion, or that a new opportunity to submit an opinion in the procedure of rejection is not notified due to the new reason for rejection.

Therefore, it is not uniformly referred to the grounds for rejection that are different from the grounds for rejection that should be notified in a trial procedure, but it is not a case where a new or non-obviousness is no longer granted by citing documents completely different from the cited documents that are based on the lack of originality or non-obviousness in the adjudication procedure, or where a rejection is denied by admitting documents that are entirely different from the cited documents that are based on the lack of originality or non-obviousness in the adjudication procedure, such as the case where a new or non-obviousness is found in the adjudication procedure, but no opportunity to present or correct the grounds for rejection found in the adjudication procedure is granted.

In this case, the trial decision of this case contains a ground of refusal on the ground that the non-obviousness of claims 41 to 44 of this case in the patent application invention of this case is naturally included in the ground of refusal in the trial decision of this case, so long as the documents concerning the cited invention of this case and the documents concerning the cited invention of this case set forth in the grounds of rejection of the original rejection ruling are the same as the identical invention on the grounds that no non-obviousness exists, the ground of rejection that the whole of claims 1 to 44 of the patent application invention of this case should be rejected because the non-obviousness of claims 41 to 44 of the patent application of this case should not be denied because the grounds of rejection in the trial decision of this case should be rejected compared with the cited invention of this case, the notification of the grounds of rejection in the trial decision of this case and the opportunity to present opinions, and the grounds of rejection in the trial decision of this case should not be seen as "a ground of rejection or amendment" of Article 170 (2) of the former Patent Act.

Therefore, the plaintiff's assertion that the grounds for rejection in the decision of this case are different from the grounds for rejection is without merit.

As to this, the plaintiff argues that "the trial decision of this case has a mistake in finding the original rejection ruling as to the claim 1 to 40 of the invention of this case, even though the plaintiff recognized that the original rejection ruling was wrong, the plaintiff did not reverse it." Thus, if at least two claims exist in the invention of this case, the patent application should be rejected in whole, and if there are no grounds for rejection even one claim, the patent application should be rejected in the case where there are at least two claims of this case. As in the case of this case, even if the non-obviousness is recognized in the trial decision as to some claims among a large number of claims determined to have no non-obviousness, the decision of rejection as to the non-obviousness of the other claims is justified, and as long as the decision

(2) Whether a partial withdrawal of a patent application is lawful

(1) Facts recognized.

In full view of Gap evidence and Eul evidence Nos. 8 and Eul evidence Nos. 2, the plaintiff submitted to the Korean Intellectual Property Office on March 31, 2001, which was after the decision of this case, a letter of withdrawal of the application to waive the right to obtain a patent as to the claim Nos. 41 through 44 of the invention of this case and withdraw the patent application therefor. As to this, the Korean Intellectual Property Office may recognize the fact that the application cannot be withdrawn with respect to part of the claim Nos. 11 of the former Enforcement Rule of the Patent Act (amended by Ordinance of the Ministry of Commerce, Industry and Energy No. 114 of Oct. 25, 200) on the ground that the patent application cannot be withdrawn.

(2) Determination

On the other hand, the former Patent Act only stipulates several provisions concerning the withdrawal of all of the patent applications (Articles 6, 11, and 65(6) of the former Patent Act), and does not provide any provision concerning partial withdrawal of the patent application. If a partial withdrawal of the patent application is recognized, it is allowed to separately delete part of the claim without any time limit, and thus, it would unreasonably delay the examination and undermine the stability of the procedure, contrary to the purport of Article 47 of the former Patent Act, to ensure prompt patent examination procedures by imposing strict time limit on the amendment. Accordingly, it would be difficult to allow a partial withdrawal of the claim under Article 47(3)1 of the former Patent Act, apart from the removal of some claims by the method of reducing the scope of the patent application under Article 47(1) of the former Patent Act.

Therefore, the plaintiff's withdrawal of the application for the invention of this case is an amendment by the method of reducing the claim amount under Article 47 (3) 1 of the former Patent Act, and the amendment must be made within the specified period under Article 47 of the former Patent Act. Since the plaintiff's submission of the withdrawal of the application of this case for the correction exceeds the prescribed period for correction, it is recognized by the plaintiff himself, the part of the application of this case is not valid.

In addition, in applying Articles 65(6) and 119(1) to a patent or patent right with two or more claims, the patent shall be deemed to have been granted or to have been established for each claim. Article 65(6) of the former Patent Act provides that "when a patent application is abandoned, invalidated or withdrawn after the disclosure of the application, when a decision of refusal becomes final and conclusive under Article 74(3), and when a decision of revocation under Article 133 becomes final and conclusive, the right under paragraph (2) shall be deemed not to have existed from the beginning." Article 119(1) provides that "the patentee, pledgee, or non-exclusive licensee under Article 39(1), 10(4), or 102(1) provides that "no patent right may be waived without the consent of the non-exclusive licensee under Article 39(1), 100(4), or 102(1) of the former Patent Act shall be interpreted to have been partially invalidated or partially invalidated under Article 15(1) of the former Patent Act."

C. Sub-committee

Therefore, while finding the ground of rejection and maintaining the original rejection ruling on the ground of the rejection ruling, it cannot be deemed that there was an error of not notifying in advance the plaintiff who is the applicant, and there is no validity of applying the patent under Articles 41 through 44 among the invention claimed in the patent application in the patent application in the patent application in the above case. The fact that the above claim in the patent application in the patent application in the above case cannot be patented because the party can easily make an invention from the cited invention, there is no dispute between the parties, and if there is no ground of rejection even one of the multiple claims in the patent application in the patent application in the above case, the plaintiff's trial decision dismissing the plaintiff's request on the ground of this conclusion is legitimate.

3. Conclusion

Therefore, the plaintiff's claim of this case is dismissed as it is without merit, and it is so decided as per Disposition.

Judges Kim Jong-soo (Presiding Judge)