[1] Method of determining whether the nonobviousness of an invention is denied

[2] The method of determining the inventive step of an invention in a case where a claim described in the claims contains multiple elements / The elements to deny the inventive step of an invention by citing various prior technical documents

[1] Article 29(2) of the Patent Act / [2] Article 29(2) of the Patent Act

[2] Supreme Court Decision 2014Da42110 Decided July 23, 2015 (Gong2015Ha, 1221)

Choh Co., Ltd. (Patent Dan Patent & Patent Attorney Gu-Appellee et al., Counsel for the defendant-appellant)

High Techs Holdings, Incolates (Attorneys crude Dai-soo et al., Counsel for the defendant-appellant)

Patent Court Decision 2013Heo1658 Decided November 21, 2013

The part of the lower judgment regarding (patent registration number omitted) patent claims as provided in paragraphs (17) through (22), (24, and (27) of the patent claims 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 invention of this case Nos. 12 through 16, 23, 25, 26, and 28

A. In principle, the scope of protection of a patented invention is determined by the descriptions of the claims. As such, in a case where the technical scope is apparent solely based on the descriptions of the claims, a limitation on the description of the claims shall not be interpreted by other descriptions of the description: Provided, That where the technical composition of the patented invention is unknown or it is impossible to determine the technical scope even if the descriptions are known, a supplement may be made by other descriptions of the specification; however, it is not permissible to expand and interpret the description of the claims by other descriptions of the specification (see Supreme Court Decision 2010Hu2605, Mar. 29, 2012).

B. The lower court determined that the nonobviousness of the instant patent invention (patent registration number omitted) Claim Nos. 12 (hereinafter referred to as “instant Claim Nos. 13 through 16, 23, 25, 26, and 28 of this case, which is subordinate invention, is denied by comparison invention Nos. 13 through 16, 23, 26, and 28 of this case, on the grounds as follows: (a) the lower court determined that the nonobviousness of the instant patent invention, which is the subordinate invention, is denied by comparison invention Nos. 13 through 16, 23, 26, and 28 of this case, is also denied.

(1) In light of the general meaning of the above terms in the pertinent technical field and the overall description of the specification of the instant patent invention, the instant Claim No. 12 invention merely has an electronic shielding function to prevent the leakage of the electromagnetic wave due to the difference in the function as an electricity contacter that contacts the electric electric electric electric racker and the electric racker’s electric racker function, and it cannot be interpreted by limiting it to the degree of carbon and flexibility to the extent that it can be contacted by forming an enclosed surface with the eMI rack.

(2) In addition, Article 12 of the instant Claim No. 12 provides that “EMI’s dogbl” includes cases where “EMI’s dogbl” took into account the overall description of the specification of the instant patent invention, without any other additional components.

(3) Based on such interpretation, it is substantially identical to the attachment method of the EMI’s 12 invention, the contacter of comparable inventions 1, and the attachment method of comparable inventions 2, in that both the electric contacter and the electronic shielding function, and the remainder of the instant Claim 12 invention, all of which are initiated in or can be easily derived from comparable inventions 1 or 2.

(4) Furthermore, as long as the meaning of the EMI's Trabbbl in the instant Claim Nos. 12 is interpreted as above, the effect of the instant Claim Nos. 12 cannot be seen as improving the shielding efficiency in high-frequency compared to the cited invention Nos. 1 or 2. Thus, the effect of the instant Claim Nos. 12 is likely to be predicted from the cited Invention No. 1 or 2, and it is not obvious.

C. Examining the records in accordance with the aforementioned legal principles, the said determination by the lower court is justifiable. In so doing, it did not err by misapprehending the legal doctrine on the interpretation of claims and the determination of inventive step, or by failing to exhaust all necessary deliberations or omitting judgment.

2. As to the invention of this case Nos. 17 through 22, 24, and 27

A. In order to determine whether the nonobviousness of a invention is denied, in light of the scope and content of prior art, differences between the invention subject to the determination of inventive step and prior art, and technological level of a person with ordinary knowledge in the art to which the invention pertains (hereinafter “ordinary technician”), etc., even though the invention subject to the determination of inventive step differs from prior art, it is necessary to examine whether the invention overcomes such difference and can easily derive the invention from the prior art. In such cases, on the premise that the person with ordinary skill becomes aware of the technology described in the specification of the invention subject to the determination of inventive step, it is difficult to ex post facto determine whether the invention could easily be made by the person with ordinary skill.

In addition, in cases where claims described in the claims are multiple elements, each element is an object of inventive step determination as a whole, which is an organic combination of each element, and each element is not an object of inventive step determination independently. Thus, in determining inventive step of the invention, the determination of inventive step of the invention should only be based on whether multiple elements mentioned in the claims are publicly known after decomposition of multiple constituent elements, and the difficulty of composition as a whole that is systematically combined based on the unique task solution principle should be considered. In addition, in order to deny inventive step of the invention by citing various prior art literature, the unique effects of the invention as a whole should also be considered together. In addition, even if there are cases where the cited technology is presented in the prior art literature or it is not so, it should be easily recognized that the person with ordinary skills can easily recognize the inventive step of the invention in light of the level of technology, technical common sense, basic task of the relevant technology, development trend, demand of the relevant industry, etc. at the time of the application for the invention.

B. We examine the above legal principles and records.

(1) The instant Claim No. 17 invention is limited to the subordinate claim of the instant Claim No. 12, that “EMI Robbbb,” which is a subordinate claim to the instant Claim No. 12, to include the electric prior support floor. However, in consideration of the overall description of the specification of the instant patent invention, the instant “electric prior support floor” can be seen as a constituent element for the method of efficiently attaching the instant Claim No. 17, which is a solution task for the instant patent invention, on the MPI Mobrogy, and attaching it to the SMT (Surface Mo Mobrogy, and on the surface page) machine, giving the strongness to prevent any transformation that may arise in the SMT process, i.e., the constituent element for the method of efficiently attaching the instant Claim No. 17.

(2) On the other hand, the cited invention 2 did not appear to have any component corresponding thereto. Meanwhile, the cited invention 4 shows that “the second floor, which is a metal story that gives a considerable cut to the first floor, which is a carbon material studio, so that the shape can be maintained when the stringk is not supported.”

(3) However, according to the specification of comparable invention 4, it can be seen that the above invention presented the second floor, which is an element of performing the function not to excessively display the eMI manual, on the premise of the method installed in a manual without relation to the SMT process.

(4) In addition, according to the specification of comparable invention 2, the attachment means of the above invention is a component that carries out the function of cutting off and fixing the monitoring force of the EMC (Electic Commonity, electronic suitability), and ② the above invention is not a point of view that the problem of the device installed with carbon materials is suitable for the SMT process, but rather a point of view that it has already been recognized in terms of frequent attachment with the eMC netboard and a frequent attachment with eMC netboard. Under such perception, even if it is employed in the attachment method of comparable invention 2, its location is natural to consider that the attachment method of the above invention 4 is combined with the eMC realboard, namely, the part that combines with the attachment method, namely, the conclusion home, the attachment method, and the electronic suitability. However, if it is intended to attach the attachment method of comparable invention 2, it is difficult to establish a separate and complicated method to create a structure that can change the attachment method itself into a high level of eM structure by comparing it with the outer structure.

(5) Ultimately, the description of the specification of the cited invention 2 and 4 as above is based on ① the combination of the second floor of comparable invention 4 with the attachment method of comparable invention 2: (a) the combination of the second floor of comparable invention 4 is presented in the EMI’s eMI’s clock blick blick blclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclclcl

(6) Thus, unless it is determined ex post on the premise that the ordinarily skilled person already knows the contents of the invention disclosed in the specification of the instant patent invention, it cannot easily derive from the cited invention 2 and 4 the limitation composition of the instant Claim 17 invention, and such ex post determination is not allowed as seen earlier. Accordingly, the instant Claim 17 invention cannot be deemed non-obviousness by the Cited Invention 2 and 4. As long as the non-obviousness of the instant Claim 17 invention is not denied, the instant Claim 18 through 22, 24, 27 invention, which is a subordinate claim citing the instant Claim 17 invention, cannot be said to be denied.

(7) Nevertheless, the lower court determined that the nonobviousness of the instant Claim 17 invention was denied by the comparison invention 2 and 4, on the ground that “if the attachment method 2 of an invention in Bluet is made of the materials with carbon, the degree of attaching the electric utility support floor commenced in the comparable invention 4 may not be easily considered by demonstrating ordinary creative ability according to the degree of the strength required for the attachment means, and the existence of the need to attach the support floor for the electric utility-related racker materials is different from the application of the SMT process.” Furthermore, on the premise of such determination, the lower court determined that the nonobviousness of the instant Claim 17 invention is also denied by deeming that the nonobviousness of the instant Claim 18 through 22, 24, and 27, which are subordinate claims thereto, is also denied. In so determining, the lower court erred by misapprehending the legal doctrine on the determination of inventive step, thereby affecting the conclusion of the judgment.

3. Conclusion

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

Justices Lee Sang-hoon (Presiding Justice)