[1] Where a patent claim for an invention claimed in a patent application contains so-called functional expressions such as function, effect, nature, etc., the method of interpretation to determine the contents of the invention

[2] The case holding that the nonobviousness of the patent claim No. 15 amended by the patent application claim No. 15, whose name is "a voice control method", may be easily claimed by a person with ordinary skills from comparable inventions 1 and 2

[1] The patent requirement under Article 29(1) and (2) of the Patent Act, i.e., when determining a newness and inventive step, the content of the invention must be determined on the premise of comparison with the invention as provided under each subparagraph of paragraph (1) of the same Article. Therefore, the scope of a patent application is a matter to be protected by the patent applicant, barring any special circumstance, barring any special circumstance, the confirmation of the contents of the invention must be based on the matters indicated in the patent application, and it is not allowed to limit or expand the scope of a patent application according to any other description, such as the detailed description or drawings. This legal principle also applies where the patent application contains a so-called functional expression, such as function, effect, character, etc., not ordinary structure, method, substance, etc., but also the patent application contains a description that specifies the invention in accordance with the function, effect, nature, etc. of the patent application. However, it is a principle to interpret that the patent application refers to all inventions with such function, nature, etc. as stated in the scope of a patent application.

[2] The case holding that since the amended patent claim 1 of the amended patent claim No. 15, "a method of determining the form of character by the operation of display language," the term "a method of determining the form of character by the operation of display language," includes the composition of "a method of determining the form of character by the operation of display language," and according to the detailed description, such as the detailed description of the invention or drawing, it is interpreted that the composition of selecting the form of character by the operation of display language or determining the form of character, it includes "a composition determining the form of character by selecting the character from the display of the screen of the character," which is part of 2 "a method of converting the character of the voice or the voice prepared in advance from the outside, based on the characteristic information of the body type of the character," which is part of 1 and 2 "a method of converting the character by the nature of the character into the form of the body type of the character," which is part of the composition 3 "a method of converting the character into the character of comparable invention 1 and 2."

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

[1] Supreme Court Decision 97Hu990 Decided December 22, 1998 (Gong1999Sang, 229) Supreme Court Decision 2005Hu1486 Decided September 6, 2007 (Gong2007Ha, 1580) Supreme Court Decision 2006Hu3625 Decided October 25, 2007

Plaintiff (Attorney Hwang Young-ju et al., Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 2007Heo623 Decided November 8, 2007

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

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

1. In determining whether an invention claimed in a patent application is new and non-obviousness, the contents of the invention must be determined on the basis of comparison with the invention described in each subparagraph of Article 29(1) and (2) of the Patent Act. Since the patent applicant wishes to be protected as a patented invention, barring any special circumstance, the confirmation of the contents of the invention shall be based on the matters described in the patent application and it is not allowed to limit or expand the scope of the patent application according to different descriptions such as the detailed description or drawings. This legal principle also applies to a case where the patent application contains a so-called functional expression such as function, effect, character, etc., not ordinary structure, method, and material, but also a case where the patent application contains a so-called functional expression such as function, effect, nature, etc. (see Supreme Court Decision 2005Hu1486, Sept. 6, 2007). Thus, in a case where the patent application contains a specific description of the invention in accordance with the function, nature, etc., of the invention, the meaning of the invention should be reasonably understood within 207.

2. We examine the above legal principles and records.

A. In principle, the term “a decision-making means to determine the body type of a character” as stated in paragraph 15 (hereinafter “instant Claim Nos. 15) of the amended claim No. 15 (hereinafter “instant Claim No. 15”) using the title “a voice control method” shall be interpreted as “any composition that functions or functions to determine the body type of a character by the operation of the display language” as “a composition that determines the body type of a character by the operation of the display language.” However, according to the detailed description or drawings, etc., as to the body type of the character, a definition or explanation has been made to mean the extension and weight of the character, and as to the method to determine the body type of the character, the term “a decision-making method to determine the body type of the character” as indicated in the judgment of the court below, “a decision-making method to select the body type of a character by means of the composition and appearance of the display character in the direction of its operation at will and to determine the body type of the character as an selective character.”

B. Examining the nature of the voice entered from outside or prepared in advance as to the “means of conversion based on the characteristic information about the body style of character” as to the composition 2 of the instant Claim No. 15 as indicated in the judgment of the court below, if a person with ordinary knowledge in the art to which the instant invention pertains (hereinafter “ordinary technician”), is able to clearly recognize the detailed technical composition of the means of conversion of the voice based on the technical formula as at the date of priority claim, and thus, it does not constitute a so-called functional expression. Further, each of the constituent parts of the instant Claim No. 1 and Claim No. 2, which correspond thereto, have a means of converting the voice into the voice. However, it is not a characteristic information about the body style, such as expansion, weight, etc., but is a basis for gender or age, and such difference is merely a person with ordinary skill, which makes it easier for a person with ordinary skill to easily adopt and change without any particular technical difficulty, and thus, can be derived from the composition of the instant Claim No. 1 and Claim No. 2. 15.

C. Therefore, the nonobviousness of the instant Claim No. 15 invention is denied since an ordinary skilled person could easily make an invention from comparable inventions 1 and 2. The lower court construed the composition 1 set forth in the claim No. 15 of the instant Claim No. 15 as one of the constituent elements indicated in the specification implementation, which is “a composition in which flass arbitrarily construct a character in the direction and direction in the vertical direction and horizontal direction by constructing the character in the vertical direction and horizontal direction,” and deemed that the nonobviousness of the instant Claim No. 15 invention is merely an exclusive use of widely used art for a game program. However, the lower court was justifiable and did not err by misapprehending the legal doctrine on the determination of inventive step of the instant Claim No. 15, contrary to what is alleged in the grounds of appeal.

3. 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 Kim Nung-hwan (Presiding Justice)