In the invention of a product, where the description required by Article 42(3) of the former Patent Act concerning the “working” of the invention of a product, and the production, use, etc. of all the goods specified in the claim(s) is not indicated in the description, whether the product satisfies the requirements prescribed under the above provision(negative)

In the case of an invention of a product, “working” refers to an act of producing, using, etc. an article. As such, in a case where there is no description required under Article 42(3) of the former Patent Act (amended by Act No. 8197 of Jan. 3, 2007) regarding the entire production, use, etc. of a product specified in the claim of an invention, it cannot be deemed that the invention satisfies the requirements prescribed under the above provision. Therefore, even in an invention of a product expressing the scope of elements limited in numerical value, it does not require an example to show the entire numerical scope limited in the claim. However, if a person with ordinary knowledge in the technical field to which the invention pertains produces or uses a product over the whole numerical scope without adding excessive experiments or special knowledge to the technical level at the time of application, the requirement prescribed under the above provision cannot be satisfied.

Article 42(3) of the former Patent Act (amended by Act No. 8197 of Jan. 3, 2007)

Copia Co., Ltd. (Patent Attorney Jin-young et al., Counsel for the defendant-appellant)

Shaki Hakikia (Before the change: Qakikikiki (Attorneys Park Sung-soo et al., Counsel for the plaintiff-appellant)

Patent Court Decision 2012Heo6717 Decided January 25, 2013

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

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

1. Article 42(3) of the former Patent Act (amended by Act No. 8197, Jan. 3, 2007; hereinafter the same) provides that the detailed description of the invention shall state the purpose, composition, and effect of the invention to the extent that a person with ordinary knowledge in the art to which the invention pertains (hereinafter referred to as “ordinary technician”) can easily implement the invention. This is to clarify the technical content and scope of the invention to be protected as a patent right by disclosing its contents to a third party easily recognizable only with the specification. As such, the scope of the description required under the above provision refers to the extent that a person with ordinary skill can understand the invention accurately by viewing it as the level of technology at the time of the application, without adding excessive or special knowledge (see, e.g., Supreme Court Decisions 2003Hu2072, Nov. 24, 2006; 2007Hu13, Oct. 13, 2011).

In addition, in the case of an invention of a product, “working” refers to an act of producing, using, etc. the product. Thus, in a case where there is no description stated in the above degree as to the production, use, etc. of all the products specified in the claim of the invention, it cannot be deemed that the elements stipulated in the above provision are satisfied. Therefore, even in an invention of a product expressing the scope of elements in numerical value limited, it is not required to show the whole numerical scope limited to the claim of the product, but it is not required for an example to show the whole numerical scope limited to the claim of the product. However, if an ordinary technician can not produce or use the product over the whole numerical scope without adding excessive experiments or special knowledge in light of the technology level at the time of the application, it

2. Review of the reasoning of the lower judgment and the record reveals the following circumstances.

A. At the time of the original adjudication, claim 1 (hereinafter “claim 1 invention of this case”) of the patent invention of this case (patent registration number omitted), is an invention of the product “heat dysty stypherical polyspherm stypherm stypher,” which is composed of two or more kinds of medium and composites mixed, in which they are manufactured by mixing them, and the claim is specified that the film roll satisfies all of the following requirements:

In other words, in all samples produced well in the normal field film, the heat reduction rate of the maximum water reduction direction within the range of 【3% from the average value (hereinafter “requirements”) 【within the scope of 【3%, (2) the content ratio of the maximum side-to-face component unit from the average value 【 within the scope of 【2 miles per cent (hereinafter “requirements B”), and (3) the heat reduction rate of the direction directly linked to the maximum water reduction direction is entered within the scope of 【1% from the average value (hereinafter “requirements B”).

B. With regard to the above requirements, the detailed description of the patented invention of this case contains the technical feature that, by applying the specific manufacturing methods to suppress changes in the maximum ratio of the most secondary constituent unit and the fluctuation in the film surface temperature in the process, it indicates the requirement sub-paragraph (b) and the requirement that indicate “equal heat accumulation rate” through the film epicol epicol epicol, which satisfy all the requirements for “equal creation” in the film epicol epicol epicol epicol epicol epicol epicol epicol epicol epicol.

As can be seen, it is a technical task that can achieve various manufacturing conditions in relation to each numerical scope of (i) the requirement of (ii) the difference in the formation of a efficiencies that make a process of mixing two or more kinds of (ii) effics, and (iii) the difference in the heat efficiencies so as to indicate uniform and uniform heat efficiencies throughout the whole efficiencies, and (iv) the difference in the heat efficiencies is narrow to the numerical scope of the requirement of (v) efficencies. The detailed description of the patented invention of this case is presented

In other words, (1) it is presented that (1) the average length, etc. of the product chips for the primary constituent unit shall be the uniformization of the form of chips, and that the chips with a slope angle of not less than a certain level are used as manufacturing methods for the uniform formation of the echis within a certain range of the voltager capacity (hereinafter “making methods”); (2) the echis are used as manufacturing methods for the uniform formation of the echis within a certain range of the voltager capacity; and (3) the echis are used as manufacturing methods for the uniform formation of the echis in which the difference in the surface temperature of film measured at a voluntary point during the annual and after heat treatment process within a certain range of average temperature (hereinafter “heat control methods”).

C. However, the following are examined in light of the detailed description of the instant patent invention in relation to the manufacturing method.

(1) First of all, the composition method is only followed and the heat control method is not followed, and the physical size specified as the result of the measurement does not enter the numerical range of the requirements : Provided, That the 6-10th of the implementation process does not expressly specify the result of measurement on physical properties, but is manufactured by applying the same development method as those of the requirements 1-5th of the implementation process, so it may be anticipated that the physical properties, which are specified as the result of the measurement, can be seen as visible from the physical properties included in the numerical range of the requirements : (a) and (b) are manufactured by applying the heat control method, and the physical parts specified as the result of the measurement fall within each numerical range of the requirements :

(2) However, the physical flights indicated or anticipated from 6 to 10 is nothing more than a part of the respective numerical scope of the requirement : (a) the difference between the heat reduction rate in the maximum water reduction direction of the requirement : (b) the difference from the average value is less than 【3%; (c) the minimum value is less than -0.8% of the average value in the preceding 6 years; (d) the fact that the maximum value in the preceding 7 days is more than +0.8% of the average value is less than that of the narrow numerical range, i.e., e. the -0.8% of the average value, and entry within the scope of less than 0.8% of the average value, cannot be viewed as an example. (b) Moreover, the content of the maximum value in the requirement : (c) the difference in the content of the maximum secondary constituent unit - from 0% of the average value is less than 【2% of the average value, and it cannot be less than 0% of the average value -4% of the average value.0% of the average value.

(3) Although the circumstances are different, if the detailed description of the patented invention in this case intends to equal the creation of films, one of the creation methods should be employed, and if it is desirable to concurrently adopt heat control methods in order to equal the heat accumulation rate, and the change in the creation of films is merely stated in the contents that it is desirable to restrain the change in the heat reduction agreement, and it is not found any implications or cancer that can be seen to achieve the difference in the physical nature of the remaining numerical range rather than that that that can be seen as being seen in the execution of the above mentioned above among the numerical range of each numerical range between the creation methods and the rupture method.

Rather, while applying the heat control method more than the example 7, the film surface temperature was more uniform, and the film creation is also uniform. However, the performance example 9 shows that all the heat reduction rate in the direction of the maximum water reduction direction and the number reduction rate in the direction of the maximum water reduction direction is not uniform than the example 7.

3. Examining the above circumstances in light of the legal principles as seen earlier, since the statement alone does not add excessive experiments or special knowledge to the technical level at the time of the filing of the application, the product cannot be produced throughout the entire numerical scope limited to the claims of paragraph (1) of this case. Thus, the invention of Paragraph (1) of this case, which is a subordinate invention citing the Claim 1 of this case and the Claim 3, 5, and 10 of this case, and the Claim 11 of this case, which is an invention of the product manufactured by the film roll from the claims of Claim 1 or 3 of this case, all of the inventions of Paragraph (11) of this case, which are the invention of the product manufactured by the film roll, are not in compliance with the specification requirements under Article 4

Nevertheless, the lower court determined that: (a) the repetition of the instant patent invention cannot be denied without properly examining whether a person with ordinary skills stated in the specification in order to facilitate production of the product throughout the entire limited numerical scope; and (b) satisfied the specification requirements under Article 42(3) of the former Patent Act. Therefore, the lower court erred by misapprehending the legal doctrine on the specification requirements of the patent invention, thereby adversely affecting the conclusion of the judgment. The allegation in the grounds of appeal assigning this error is with merit.

4. Therefore, without examining the remaining grounds of appeal, we reverse the judgment of the court below, and remand the case to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Kim Chang-suk (Presiding Justice)