[1] In a case where the scope of a claim for the invention of a product contains a method of manufacturing the product, whether it shall be compared with the invention publicly known prior to the filing of the claim in consideration of the manufacturing method in determining the inventive step of the invention (negative with qualification)

[2] The case affirming the judgment of the court below which denied inventive step by comparing only the products obtained by the method without considering the manufacturing method itself as stated in the claim(s), on the ground that the subject of the claim(s) of the patented invention using the name of "label combinations as a labelling device and manufacturing method thereof" does not have difficulty directly specifying its composition

[1] The scope of a claim for the invention of a product shall be specified by the method of directly specifying the composition of the product, barring special circumstances. Thus, even if the scope of a claim for the invention of a product contains a method of manufacturing the product, barring special circumstances, such as where it is inevitable to specify the product only by such method, in determining the inventive step of the invention in question, the method of manufacturing shall not be required to consider it, and it shall be compared only to the invention specified as the product by the description of the claim prior to the application.

[2] The case affirming the judgment of the court below which denied inventive step by comparing only the products obtained by the method with the comparable inventions without considering the manufacturing method itself as stated in the claim, on the ground that the scope of the patent claim for a patented invention using the name of "label combination gold machine and its manufacturing method" does not have difficulty directly specifying its composition

[1] Articles 29(2) and 42 of the Patent Act / [2] Articles 29(2) and 42 of the Patent Act

Geum-il Industry (Patent Attorney Full-time et al., Counsel for the defendant-appellant)

C&T Co., Ltd. (Law Firm C&T, Attorneys Park Dong-dong et al., Counsel for the defendant-appellant)

Patent Court Decision 2004Heo11 delivered on November 5, 2004

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

We examine the grounds of appeal.

1. In case where the claim(s) for the invention of a product contains a description to specify the product in the manufacturing method, it shall be treated in determining the inventive step of the patented invention;

A. Inasmuch as the scope of a claim for the invention of a product is indicated by the method of directly specifying the composition of the product, barring special circumstances, the scope of the claim for the invention of a product shall be compared to the invention publicly known before the application, in determining the inventive step of the invention, unless there are special circumstances, such as where the method of manufacturing the product is specified only by the method of manufacturing, unless there are special circumstances, such as where it is inevitable to specify the product only by the method of manufacturing.

B. Examining the reasoning of the judgment below in light of the above legal principles and the records, the court below held that it was not difficult for the court below to directly specify the composition of the Belgium-combined fund for the display labelling device, which is the object of paragraphs (4), (6), (12) and (13) of the patent claim of this case. The court below did not err in the misapprehension of legal principles as to the invention's invention's invention's invention's invention's invention's invention's invention's invention's invention's invention's invention's invention's "one-day annual installments is part of the upper part from the front part of the upper part of the upper part to the upper part of the upper part," and "one-day annual installments is part of the upper part from the upper part of the upper part to the upper part from the front part of the upper part of the upper part." The court did not err in the misapprehension of legal principles as to the invention's invention's invention's invention's invention's invention's invention's invention's invention's invention's invention's 13.

2. Whether the nonobviousness under Articles 3 through 6, 9, 12 and 13 of the scope of the patent application of the instant patent invention is denied

Examining the reasoning of the judgment below in light of the records, the court below is just in holding that the inventive step of the patented invention in this case (registration number No. 196030) using the name of "Belgium Combined with the Belgium No. 196030) and the comparable invention 1, 2, and 3 as indicated in the judgment of the court below is denied as the patent claim Nos. 3 through 6, 9, 12, and 13 of the patented invention in this case are combined with comparable invention 1, 2, or comparable invention 1, and 3, and there is no error in the misapprehension of legal principles as to the inventive step and numerical determination of the patented invention, as alleged in the ground of appeal.

3. Conclusion

Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices.

Justices Shin Hyun-chul (Presiding Justice)