The case denying the inventive step of the patented invention on the ground that the composition described in the claims of the patented invention falls under a composition that is naturally included in the comparable invention, although not explicitly indicated

Article 29(2) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001)

Testecate Co., Ltd. (Patent Attorney Shin Sung-sung et al., Counsel for the defendant-appellant-appellee)

Korea Exchange Bank, Inc.

Korea Media Co., Ltd. (Patent Attorney Kim Young-young, Counsel for defendant-appellee)

Patent Court Decision 2006Heo1056 Decided September 20, 2007

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

We examine the grounds of appeal.

In light of the record, the claim 3 of the patented invention of this case (hereinafter “claim 3 invention of this case”), RF/IF division, Moctoc control division, protoctoc control division, data transmission control division, DSS/CP book, ESP/CPU book, ORM and RAM division, which constitute the claim 4 of the patent invention of this case (hereinafter “claim 3 invention of this case”), are merely a composition that must be held as a matter of course if a wireless device, which wirelessly receives data from the base station and communicates by wireless reception from the base station, is nothing more than a composition that must be carried out. Thus, it is denied that the claim 3 invention of this case can easily make inventions by combining the cad learning function that is attached to the cadembing device of comparable inventions 4 of this case, etc. as indicated in the judgment below.

In addition, the scope of the claim 4 of the instant patent invention (hereinafter “instant Claim 4”) constitutes a network server and caption language learning terminal under paragraph (4) of the instant patent invention (hereinafter “instant Claim 4”), and the “copib or hard disc” in the cited Invention 3 as indicated in the judgment of the court below is different from the “copib or hard disc in which data created by motiveing house on the video and audio records are stored.” However, the “foreign language learning machine” in the Cited Invention 2 is not explicitly indicated in the cited Invention 4. However, in the cited Invention 4, the aforementioned composition is merely a document stating the existing communication network and devices that have no choice but to use the system transmitting data through the radio communication network, and thus, the nonobviousness of the instant Claim 4 invention can be easily combined with the cited Invention 2 and 3, and thus, the nonobviousness of the instant Claim 3 is denied.

Nevertheless, the lower court determined that the nonobviousness of the Claims Nos. 3 and 4 of this case and the Claims Nos. 3 and 3 and 4 of this case are not denied, on the premise that the cited inventions do not contain some compositions of the Claims Nos. 3 and 4 of this case, and that the nonobviousness of the Claims Nos. 5, 14, 15, and 18 of the Patented Invention cannot be denied, by erroneously understanding the technologies of the patented invention or the cited inventions, thereby affecting the conclusion of the judgment by misapprehending the legal doctrine on determining the nonobviousness of the patented invention

Therefore, without further proceeding to decide on the remaining grounds of appeal, 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.

Justices Lee Hong-hoon (Presiding Justice)