[1] Whether the cited invention provided in a judgment of newness and advancement of a patented invention must be clearly expressed (negative)

[2] In a trial against a rejection ruling where a ground for rejection ruling and another ground for rejection are discovered in a trial against a rejection ruling, whether the applicant shall be given an opportunity to submit a written opinion on a new ground for rejection by notifying the grounds for rejection (affirmative), and whether the applicant shall be given an opportunity to submit a written opinion even in the case where the decision was rendered for

[1] Article 29 (2) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001) / [2] Articles 62, 63, and 170 (2) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001)

[1] Supreme Court Decision 96Hu1514 delivered on August 26, 1997 (Gong1997Ha, 2891), Supreme Court Decision 98Hu270 delivered on December 8, 200 (Gong2001Sang, 306) / [2] Supreme Court Decision 88Hu950 delivered on August 8, 1989 (Gong1989, 1363), Supreme Court Decision 92Hu106 delivered on June 28, 1994 (Gong194Ha, 2109), Supreme Court Decision 97Hu341 delivered on November 28, 1997 (Gong1998Sang, 1112), Supreme Court Decision 309Hu3409 delivered on November 29, 205 (Gong3094 delivered on November 29, 205)

ELF E. E. E. (Patent Firm Korea, Patent Attorney Park Jae-soo et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 200Heo6288 delivered on July 19, 2001

The judgment below is reversed, and the case is remanded to the Patent Court.

1. The facts duly established by the court below are replaced by the following:

(1) On March 14, 1997, the Plaintiff claimed priority on an invention named “the method of conversion of low-point by-point by-products formed in the process of heat decomposition of 1,2-didichlorotan (hereinafter referred to as “patent application invention”) (hereinafter referred to as “patent application”) and filed a patent application on March 14, 1997 (number 1997-8785), but filed a rejection ruling on May 31, 1995, and filed an appeal with the Intellectual Property Trial and Appeal Board on July 31, 200 (No. 99 Won2179).

(2) 원고의 출원발명의 요지는 염화비닐을 제조할 때 1,2-디클로로에탄(이하, '디클로로에탄'이라 한다)의 열분해 과정에서 형성되는 경급 부생성물의 전환방법을 제공하는 것을 목적으로 하고, 그 기술적 구성은 에틸렌의 직접염소화 반응에 의하여 생성되는 디클로로에탄, 촉매와 염소가 있는 때에 20℃∼80℃의 온도에서, 염화비닐의 제조 후 생성되는 비점 83.7℃ 이하의 경급 부생성물을 직접적으로 염소화시키는 것으로서 그와 같은 구성으로 과량(과량)의 염소와 이를 제거하는 데 필요한 고가의 후처리 과정을 거치지 아니하고 디클로로에탄의 제조 후에 디클로로에탄의 열분해 과정에서 생성되는 경급 부생성물을 직접 전환할 수 있는 효과가 있다.

(3) The summary of the cited invention 1 and 2 is as follows.

The summary of the cited invention 1 is that the loss of DNA carbon was reduced by the process of manufacturing dypyl chlorides. Dyphere is that the dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere’s dyphere.

Meanwhile, the cited invention 2 (Hungary Patent No. 187692) is aimed at providing an additional method of chlorisome chloros (dilorichloros and 1,2-ethyl chloros are compounds the same as DNA carbon; hereinafter referred to as "dlorichloros") which are continuously removed from the flow recirculating in the light-water knife fore, and providing an additional method of chlorinated non-explicing at low cost, including chlorichloros, and other chlorinated hydrocarbons different from bents, with the introduction of a separate method of chlorinated 1 to 3 chemical reaction to chlorichloros, which is difficult to separate from elorichlorosic acids, and the additional method of chloridide ter reaction to chlorichloros, which is capable of removing from elorichloros, such as chlorichloros, and the additional equipment of elorichlorosic acids, which are capable of directly reactioning ethyl compoundss.

(4) The summary of the trial decision is that an invention described in Hungary No. 187692 (human invention 2) is related to the method of converting fluoral products generated in the process of heat decomposition into DNA 2; it is identical to the reaction of the light fluoral products generated in the composition of the invention directly into the flow of chlorate No. 3; however, it is not limited to the light fluoral products with a point of less than 83.7C because the light fluoral products are not directly added to the 7-level fluoral reaction of Hungary; thus, it is also different from the 7-level fluoral reaction of the light fluoralsium No. 9; the fluoral reaction of the light fluoral products is included in the flow of the fluoral reaction of the fluoral acid; and the bluoral content of the fluoral reaction is also different from the bluoral content of the ter.

2. The lower court determined as follows based on the foregoing factual basis.

(1) As to whether the patent application invention is non-obviousness compared with the cited invention 1

The patent application invention and cited invention 1 are an invention as to the method of converting by-products (by-products) from the process of manufacturing salting vinyl by heating dlochloros. It is identical in that the by-products are introduced into the flow of the outlet of the direct salt extinguishing reaction apparatus at the front stage of heat decomposition process, and they are reactioned with salt additionally. The reaction condition also includes not only DNA carbon and salt in the flow of the outlet of the direct salt extinguishing reaction apparatus. ② The patent application invention is 20 to 80§¯, and the quoted invention 1 is overlap with the patent application invention with 20 to 90§¯, ③ since the patent application invention contains 1 by-products (the detailed explanation is chlorate), there is no difference in the remaining ratio of 1 by-products from the perspective that it is the upper concept of the cited invention 1, but it is obviously different from the initial by-products in terms of the additional by-products that are the target of salt extinguishing at the lower level than the final by-products of 1, 2007.

(2) As to whether it is unlawful to regard the cited invention 2 as the grounds for rejection

The cited invention 2 is limited to substances subject to additional salt fire extinguishing, and the difference between the cited invention 1 and the effects of the quoted invention is significant. Accordingly, since the substance of the quoted invention 1 and the quoted invention 2 are different, even if the plaintiff submitted the quoted invention 2 in the request for examination and the trial procedure and made a statement of his/her opinion, the trial decision that the cited invention 2 was justified on the ground of the cited invention 2 without notifying the grounds for rejection and giving an opportunity to submit a written opinion, is unlawful.

3. However, the lower court’s aforementioned determination is difficult to accept for the following reasons.

(1) The cited invention provided in the judgment of newness or inventive step of an invention is not only the invention whose entire technical composition is clearly expressed, but also the invention can be compared if, even if it is insufficient, a person with ordinary knowledge in the technical field can easily grasp the cited invention in accordance with the technical or empirical rule at the time of disclosure (see Supreme Court Decision 98Hu270 delivered on December 8, 200).

In this case, the quoted invention 1 does not clearly state whether the decomposition products are light oil, heavy oil, or heavy oil in relation to the subject matter of additional salt fire extinguishing, but it is light oil by-products whose nonpoints are 80.1C, and erochloroethylene is 87.2C, but it can be deemed that it is a light-level product whose nonpoints are 87.7C, which is less than 83.7C, and it is difficult to separate it from the specifications of the quoted invention 1 as a light-level product, and it is difficult to separate it from the specifications of the cited invention, which is a material that is classified as light-level by-products, and it is difficult to separate it from the specifications of the cited invention from the technological standpoint of the cited invention as a light-level product to reduce the heat melting by-products of DNA into Grade 1, and thus, it is difficult to separate it from the specifications of the cited invention as a eroxic solution to the eroxification process.

Unlike the above, the court below determined that the invention is inventive step by deeming the decomposition 1 of the quoted invention as referring to all by-products, including a medium-class compound, and it is erroneous in the application of Article 29(2) of the former Patent Act (amended by Act No. 6411, Feb. 3, 2001; hereinafter the same) concerning the inventive step of the invention by erroneous determination of the technical content of the quoted invention 1, and thus, it affected the conclusion of the judgment, and therefore, the judgment of the court below cannot be reversed.

(2) Article 62 of the former Patent Act provides that an examiner shall make a ruling of rejection if the patent application falls under a ground for rejection, and Article 63 of the same Act provides that an examiner shall notify the patent applicant of the ground for rejection and give him an opportunity to submit a written opinion within a prescribed period of time when he/she intends to make a ruling of rejection under Article 62. Article 170(2) of the same Act provides that the provisions of Article 63 shall apply mutatis mutandis in a trial against a ruling of rejection where the ground for rejection and other reasons for rejection are discovered in a trial against a ruling of rejection. Since these provisions are so-called mandatory provisions, the reasons for a ruling of rejection against a ruling of rejection must be consistent with the reasons for rejection in the main purpose of the ruling of rejection at least in a trial against a ruling of rejection, and a patent applicant shall be given an opportunity to submit a written opinion against a new reason for rejection (see Supreme Court Decision 2001Hu2757, Oct. 10, 2003).

In this case, the examiner made a rejection ruling to the effect that the patent application invention does not have inventive step compared with the cited invention 1, and the trial ruling affirmed the rejection ruling on the ground that the patent application invention does not have inventive step compared with the cited invention 2. In general, it cannot be readily concluded that two documents are the same materials or that the substance of the document is the same. However, it is reasonable to deem that the quoted invention 1's decomposition generation is a light-level by-products that are difficult to separate the patent applicant into general separate evidences because the parts related to comparison with the patent application invention 1 and the quoted invention 2 are substantially identical in line with the grounds of rejection ruling and its main purpose, and therefore, it cannot be deemed unlawful even if the Patent Tribunal notified the plaintiff of the ground of rejection ruling and did not provide the plaintiff with an opportunity to submit a written opinion in the trial proceedings against the rejection ruling.

Unlike this, since the purport of the cited invention 1 and the quoted invention 2 are different, the judgment of the court below that the decision of rejection is unlawful without notifying the grounds for rejection under Article 2 of the quoted invention and giving an opportunity to submit a written opinion, and that the ruling of rejection is justified, it is erroneous in the application of the interpretation of Articles 63 and 170 of the former Patent Act, which affected the conclusion of the judgment, and therefore, the judgment of the court below is not reversed.

4. Therefore, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Jack-dam (Presiding Justice)