[1] Purport of Articles 82(2) and 134 of the former Patent Act, and in a case where the grounds for rejection and other grounds for rejection are discovered in an appeal trial, whether to give an opportunity to submit a written opinion by notifying the grounds for rejection (affirmative)

[2] The case reversing the original trial decision that did not give the applicant an opportunity to submit a written opinion, even though the appellate trial discovered the reason for rejection ruling and other grounds for rejection

[1] Article 82 (2) of the former Patent Act (amended by Act No. 4207 of Jan. 13, 1990) provides that "if an examiner intends to make a decision of rejection by deeming that a patent application falls under any subparagraph of paragraph (1) and that there is a ground for rejection, he shall notify the applicant of the ground for rejection and give him an opportunity to submit a written opinion within a specified period," and Article 134 of the same Act provides that Article 82 of the same Act shall apply mutatis mutandis to a trial on an appeal against a ruling of rejection where the ground for rejection and other grounds for rejection are discovered in a trial against an appeal against a ruling of rejection, the examiner shall notify the applicant of the ground for rejection. The purport of each provision above is that an invention subject to a patent refers to the creation of a new high-level technical idea using laws of nature, and it is necessary to judge whether the invention is an invention eligible for a patent, and thus the examiner requires high expertise and cannot have such knowledge equally, and thus, the examiner shall also notify the applicant of the ground for rejection, at least if it is known.

[2] The case reversing the original decision that did not give the applicant an opportunity to submit a written opinion, even though the appellate trial found the grounds for rejection and other grounds for rejection

[1] Articles 82(2) and 134 (see current Article 63), and 170(2) of the former Patent Act (amended by Act No. 4207, Jan. 13, 1990) / [2] Articles 82(2) (see current Article 63) and 134 (see current Article 170(2)) of the former Patent Act (amended by Act No. 4207, Jan. 13, 1990)

[1] Supreme Court Decision 88Hu950 delivered on August 8, 1989 (Gong1989, 1363), Supreme Court Decision 92Hu1066 delivered on June 28, 1994 (Gong1994Ha, 2109), Supreme Court Decision 98Hu300 delivered on November 12, 199 (Gong199Ha, 2504)

Hani-si Rocop (Law Firm Central Patent Office, Attorneys Lee Byung-ho et al., Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

Korean Intellectual Property Office Decision 96Na603 dated September 30, 1997

The original decision shall be reversed. The case shall be remanded to the Intellectual Property Tribunal.

The grounds of appeal are examined.

1. According to the reasoning of the judgment of the court below, since the composition of Paragraph 39, which is within the scope of the patent claim stated in the amendment of the original invention, can be easily claimed from the European Patent Office (EPE) No. 015255 of the Patent Gazette and each invention listed in Section 2093132 of the UK, and the scope of the patent claim and paragraphs 39 and 54 of the above decision are included in the effects of the patent application, the court below is just in holding that paragraph 57 of the newly added scope of the patent claim is "No. 14, 16, 18, and 4 stories" (hereinafter the same shall apply) and "No. 5 of the previous specifications of the patent claim" (hereinafter referred to as "No. 25 of the previous specifications of the patent claim") were 5 and no more than 5 of the previous specifications of the patent claim were able to be transported by the previous specifications of 20 air transport facilities (hereinafter referred to as "No. 54 of the new specifications of the patent claim").

2. Article 82(2) of the former Patent Act (amended by Act No. 4207 of Jan. 13, 1990) provides that "an examiner shall notify the applicant of the grounds for rejection and give him/her an opportunity to submit a written opinion within a specified period, if he/she intends to find that a patent application falls under any of the subparagraphs of paragraph (1) and that a patent application falls under any of the subparagraphs of paragraph (1)." According to Article 134 of the same Act, if he/she finds the grounds for rejection and other reasons for rejection in a trial on a complaint against an application for rejection, the provisions of Article 82 shall apply mutatis mutandis, and if an examiner intends to refuse the patent application, he/she shall notify the applicant of the grounds for rejection. The purport of each provision is that an invention subject to a patent refers to the creation of a highly new technical idea using laws of nature, and it is necessary to examine whether the invention is an invention eligible for a patent, and thus the examiner cannot have such knowledge equally, and thus, it shall be notified that there is an opportunity for the applicant to submit a written reason for rejection.

3. In light of the above legal principles and records, Paragraph 39 of the scope of the patent claim, which is the ground for rejection in the original condition, is an invention related to the method of transporting semiconductor waferfers by entering them through the process of transportation, location reduction, correction, etc. from the Karate wafers, and Paragraph 57 of the patent claim scope which is the ground for rejection at the original trial as the ground for rejection at the appellate trial, is an invention related to a device which can be adjusted by a computer (150) with a luminous waferferfers (132,134) equipped with a luminous wafers (132,134) to reduce the location of the waferfers in the transport of semiconductor waferfers, and the two inventions cannot be deemed the same invention. Thus, even if the inventive step of the invention is not recognized as identical to the subject of the invention, the court below's decision of rejection is not consistent with the two grounds for rejection, and there is no obvious reason for rejection different from the grounds for rejection as stated in the above Paragraph 2 of the grounds for rejection.

4. Therefore, the decision of the court below shall be reversed, and the case shall be remanded to the Intellectual Property Tribunal corresponding to the court below for a new trial and determination. It is so decided as per Disposition with the assent of all participating Justices.

Justices Lee Yong-woo (Presiding Justice)