In determining the patent requirements for an invention of a product described in the manufacturing method, whether newness and inventive step should be examined by ascertaining that the product has the structure, nature, etc. specified by all the claims, including the description of the manufacturing method (affirmative)

Article 2 subparag. 3 of the Patent Act classifys an invention into “an invention of a thing,” “an invention of a method,” and “an invention of a method to produce a thing,” and even if the scope of a claim is written as a whole in the case of an invention containing a manufacturing method (hereinafter “the invention of a thing in which the manufacturing method is written”), the invention constitutes an invention of a thing, not an manufacturing method, but an article finally obtained, and thus, constitutes an invention of a thing. The scope of a claim for an invention of a thing must be written in a way that specifies the composition of a thing in which the invention is the subject of the invention. Thus, the scope of the claim for an article must be written in a way that specifies the structure and nature of the final product as a means that specifies the structure of the product in which the final product is made

Therefore, in determining the patent requirements for a product invention described in the manufacturing method, the technical composition of the invention is not limited to the manufacturing method itself, but it is necessary to examine whether there is newness, inventive step, etc. compared with prior art publicly notified prior to the filing of the application by identifying it as an object with the structure, character, etc. specified by all descriptions of the patent claim including the description of the manufacturing method.

Meanwhile, among the inventions in the field of biotechnology, high molecules, mixtures, metal, etc., there may be circumstances under which it is impossible or difficult to specify the goods obtained by any manufacturing method directly due to the structure, nature, etc., and it is difficult to specify the goods only by the manufacturing method. However, the same applies to these circumstances, even if the invention is a product invention in which the manufacturing method is indicated, its essence is “the invention of the goods” and the manufacturing method indicated in the claim is merely a means to specify the structure, nature, etc. of the goods. Thus, even though there is no such circumstance, the meaning of the manufacturing method stated by the manufacturing method is not different.

Article 2 subparag. 3 of the Patent Act

Supreme Court Decision 2004Hu3416 Decided June 29, 2006 (Gong2006Ha, 1445), Supreme Court Decision 2007Hu449 Decided May 11, 2007 (amended), Supreme Court Decision 2006Hu1100 Decided September 20, 2007 (amended), Supreme Court Decision 2006Hu3472 Decided August 21, 2008 (amended), Supreme Court Decision 2007Hu1053 Decided January 15, 2009 (amended), Supreme Court Decision 2006Hu3250 Decided March 26, 2009 (amended), Supreme Court Decision 2006Hu3250 Decided September 24, 2009) (amended)

가부시키가이샤 구라레 (주식회사 クラレ) (소송대리인 특허법인 코리아나 담당변리사 박해선 외 5인)

Defendant (Law Firm KEL, Attorneys Kim Yong-hoon et al., Counsel for the defendant-appellant)

Patent Court Decision 2008Heo6239 Decided April 8, 2011

The part concerning claims for patent registration (Omission) and (10) of patent registration number among the judgment below is reversed, and that part of the case is remanded to the Patent Court. The remaining grounds of appeal are dismissed.

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. As to the ground of appeal as to the claim(6) and (7)

A. On the grounds delineated below, the lower court determined that the nonobviousness of the claim 6 (hereinafter referred to as the "claim 6 invention of this case", among the patented invention of this case (patent registration number omitted, and the patented invention corrected by the final and conclusive decision of November 30, 2010 rendered by the Intellectual Property Trial and Appeal Board, November 30, 2010) named as "povin vinyl alcohol and light film" cannot be denied by the cited inventions as indicated in the holding of the lower judgment, and that the nonobviousness of the claim 7 invention of this case, which is a subordinate invention cited in the Claim 6 of this case, cannot be denied by the cited inventions, cannot be said to be denied by the cited inventions.

1) Composition 2 and 3 of the judgment of the court below in the instant Claim No. 6 invention are organicly combined with each other so that “PVA film is manufactured using polyvinyl alcohol (PVA), set forth in the hot water from 30 to 90°C of the weight of 100°C, which reduces the PVA film as a raw material, and 10cm square and 30 to 90°C, the thickness of which is 50°C, is left unattended for 4 hours in the number of 50°C.” Thus, the PVA film’s flow quantity at the time of leaving the PVA film for 10 to 60 ppm in the number of 50§C. It is hard to eliminate the effect of PVA film in the process of manufacturing the PVA’s form as water before its manufacturing process, thereby preventing it from being easily formed within the specific scope of the PVA film.

2) However, the technical meaning of “the final usage rate of the PVA studs,” which was launched in the comparable invention 1, or the “PVA straw” which was initiated in the comparable invention 3, 4, and 5, is entirely different from that of the 2, 3, which is “the process to set the PVA straws before the manufacturing process in order to achieve the specific scope of the PVA usage quantity.” Moreover, the technical meaning of the 2, 3, is entirely different from the 3, which is “the process to set the PVA straws before the manufacturing process in order to achieve the specific scope of the PVA usage quantity. In addition, the 2, 3, as described in the 2, and 3, a professional engineer at all, that the 2, 3, which is capable of removing the PVA straws that are easily

3) Therefore, the instant Claim 6 invention can not be easily derived from comparable inventions in light of the fact that the composition of the instant Claim 6, including constituting 2 and 3, is an organic combination thereof, and that a person with ordinary knowledge in the technical field to which the invention pertains, can easily derive from comparable inventions.

B. In light of the relevant legal principles and records, the above determination by the court below is just, and there is no error in the misapprehension of legal principles as to the determination of inventive step of an invention or omission of judgment, contrary to

2. As to the ground of appeal on the invention Nos. 9 and 10 of this case

A. Article 2 subparag. 3 of the Patent Act classifys an invention into “an invention of a product”, “an invention of a method”, and “an invention of a method of manufacturing a product”. Thus, even if the scope of claims is written as a whole in the case of an invention containing a manufacturing method (hereinafter “the invention of a product”), the subject of the invention is not the manufacturing method, but the subject of the invention is the product itself finally obtained, and it constitutes an “an invention of a product.” The scope of claims for an invention must be written in a way that specifies the composition of a product. Thus, the method of manufacturing described in the scope of claims for an invention of a product must have meaning as a means that specifies the structure and nature of the product as a final product.

Therefore, in determining the patent requirements for a product invention described in the manufacturing method, the technical composition of the invention is not limited to the manufacturing method itself, but it is necessary to examine whether there is newness, inventive step, etc. compared with the prior art publicly notified prior to the filing of the application by identifying it as an object with the structure, character, etc. specified by all descriptions of the patent claim including the description of the manufacturing method.

Meanwhile, among the inventions in the field of biotechnology, high molecules, mixtures, metal, etc., there may be circumstances under which it is impossible or difficult to specify the goods obtained by any manufacturing method directly due to the structure, nature, etc., and it is difficult to specify the goods only by the manufacturing method. However, the same applies to these circumstances, even if the invention is a product invention in which the manufacturing method is indicated, its essence is “the invention of the goods” and the manufacturing method indicated in the claim is merely a means to specify the structure, nature, etc. of the goods. Thus, even though there is no such circumstance, the meaning of the manufacturing method stated by the manufacturing method is not different.

Unlike this, Supreme Court Decisions 2004Hu3416 Decided June 29, 2006, Supreme Court Decisions 2007Hu449 Decided May 11, 2007, 2007; 2006Hu1100 Decided September 20, 2007; 2006Hu3472 Decided August 21, 2008; 2007Hu3453 Decided January 15, 2009; 2009Hu3456 Decided March 25, 200, which held to the effect that the manufacturing method itself should be determined by comparing only the inventions specified as prior art, without considering the manufacturing method itself, unless there are such special circumstances.

B. The lower court determined that the nonobviousness of the instant Claim No. 6 invention is not denied in comparison with the cited inventions in comparison with the instant Claim No. 9 and Claim No. 10, which fall under the product invention indicated in the manufacturing method, using the “contest” as the product manufactured by the method of the instant Claim No. 6 invention as the scope of the patent claim, and immediately determined that the nonobviousness of the instant Claim No. 9 and Claim No. 10 is not denied.

In light of the aforementioned legal principles, with respect to the invention of this case, which falls under the invention of Articles 9 and 10 as indicated in the manufacturing method, the court below should have judged that the inventive step exists in comparison with the invention of all the claims, including the description of the manufacturing method, but the court below judged that the inventive step of the manufacturing method is not denied immediately on the ground that the inventive step of the invention of Articles 9 and 10 as indicated in the manufacturing method is not denied. Thus, the court below erred by misapprehending the legal principles as to the determination of inventive step of the invention of Articles as indicated in the manufacturing method, which affected the conclusion of the judgment. The ground of appeal pointing this out is with merit.

3. Conclusion

Therefore, the part of the judgment below regarding the invention of Articles 9 and 10 of the case is reversed, and that part of the case is remanded to the court below for a new trial and determination, and the remaining appeal is dismissed. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Shin Young-chul (Presiding Justice)