Raccoa (Patent Attorney Jeong Young-young, Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

may 12, 2006

1. The decision made by the Intellectual Property Tribunal on June 24, 2005 on the case No. 2003 Won2907 shall be revoked.

2. The costs of lawsuit shall be borne by the defendant.

The same shall apply to the order.

1. Details and procedures of the invention;

A. Application invention of this case

(1) Patent Application No. 704048 of March 29, 2001 (International Date of August 26, 1999, Date of priority claim: October 7, 1998)

(2) The title of the invention: In case of entering the form of a letter of learning;

(3) Claims

It is as shown in the attached Form.

B. The procedural background

With respect to the Plaintiff’s patent application for the invention of this case, the Korean Intellectual Property Office examiner cannot be deemed to have written all the essential elements of the patent application of this case on November 29, 2002, and the patent examiner violated Article 42(4) of the Patent Act because the relationship between essential elements is unclear, and thus the claims 1 through 20 of the patent application of this case are similar to the comparable invention [Article 62636 of the European Open Patent Act ( March 16, 1994), composition, purpose, and effect of the patent application of this case, and thus, the Plaintiff sent to the Plaintiff a written notice stating the grounds for rejecting the patent application of this case under Article 29(2) of the Patent Act. Accordingly, the Plaintiff submitted a written opinion and written amendment to the Korean Intellectual Property Office on January 29, 2003.

After examining the above written opinion and amendment, on June 24, 2003, the examiner of the Korean Intellectual Property Office rendered a decision of rejection on the ground that the patent application invention of this case was extremely similar to the cited inventions, to the extent that the technical idea and composition could easily be made by the party concerned, and the elements stated in the claims can be easily made by the party concerned, and the elements indicated in the claims can not be seen as clearly and concisely stated because the combination relationship between the elements is unclear and thus the above reasons for rejection have not been resolved.

On July 24, 2003, the Plaintiff filed a petition for an appeal with the Intellectual Property Trial and Appeal Board against the above decision of refusal. The Intellectual Property Trial and Appeal Board deliberated the petition with 2003 Won2907, and subsequently dismissed the petition for appeal on June 24, 2005 on the following grounds:

C. Summary of the reasons for the trial decision

Of the pending invention in this case, the claim 8 of the patent application invention of this case: (a) what is the object of image and what is consular and on the surface through any specific technical means; and (b) is unclear as to what is the “commercial image” in the media storing order to detect the moving of users of the commercial image; and (c) is also unclear as to whether the “commercial image” can be identified by detecting the moving of users of the commercial image through any technical means; and (d) is not specified in the detailed technical composition as to whether the moving of the screen or the input of data can be carried out by detecting the moving of the screen through any technical means; and (e) is written only on the action and effect. Accordingly, the claim 8 of this case clearly stated the composition of the invention, which constitutes an invention, and thus, is contrary to Article 42(4) of the Patent Act.

As to this, the Plaintiff asserts that the invention of this case is characterized by the characteristic of consularizing the image of Mas and performing the movement of Mas and data input by reducing the moving of the user's hand over the image of this consular image. This characteristic composition is clearly specified in the independent claim. However, with regard to the fact that the image of Mas is consular, not the actual use of Mas and the image of Mas are indicated as "consularizing on the surface" in Paragraph 8 of this case, the Plaintiff stated that the image of Mas are consular consulars on the surface without specifying the "Masconsulars", which is an input DNA image, and that the computer is not consulars on the surface without specifying the "Mascococonsulars", and the Plaintiff's specific image is expressed as consulars on the surface without specifying the detailed technological composition, and it is not clearly stated in the technical composition and effects of the project. It is also possible to identify the location and effect of the user's image to carry out the process of inputting or data input of the user's image.

Therefore, claim 8 is ineligible to obtain a patent, and in a patent application, if there is a ground for rejection even if the patent application contains two or more claims, the patent application shall be rejected in entirety. Thus, the patent application invention of this case shall not be patentable.

【Facts without any dispute, Gap 1-1-5, Gap 2, Eul 4, the purport of the whole pleadings

2. Whether the trial decision is legitimate;

A. The plaintiff's assertion

(1) The grounds for rejection at the time of the instant decision of rejection do not state all the essential elements of the claim under paragraphs (1) and (8) and it is unclear that the relationship between them is unclear. Whether the subject of the order is unclear in the claims indicated in the grounds for the instant decision of rejection, or not, the reason why it is unclear is that all the essential elements of the claims are not indicated in the claims, and the subject and meaning are completely different, and the contents of the submission or amendment of the opinion may completely change. Accordingly, the instant decision of rejection constitutes a new ground for rejection, which is based on the new ground for rejection that did not give the applicant an opportunity to present his opinion, and is unlawful

(2) Whether the description of a claim is legitimate should be determined on the basis of whether or not a person with ordinary knowledge in the technical field is specified to the extent that he can clearly understand, recognize, and reproduce the technical scope or the scope of right of the patent by supplementing not only the description of the claim, but also the detailed description or example of the specification. In other words, even if the invention is specified in a computer-related invention, such as the invention of this case, it cannot be said that there is lack of the description of the claim solely on the ground that the invention is specified as a function or function. In other words, if a person with ordinary knowledge in the technical field can present a specific object that has a function or function specified in the claim in consideration of the technical awareness at the time of the application, to the extent that it can be understood and reproduced, the description of the legitimate claim should be deemed to be the description of the claim. Paragraph (8) of the patent-related invention of this case, as a person with ordinary knowledge in the technical field, clearly understand the technical scope or scope of right by understanding and realize it, but also refer to the description and drawings of this case.

B. Determination

Article 62 of the Patent Act provides that "an examiner shall make a decision of refusal if the patent application falls under any ground for refusal prescribed in the patent application." Article 63 of the Patent Act provides that "an examiner shall notify the patent applicant of the ground for refusal and give him an opportunity to submit a written opinion within a designated period of time when he/she intends to make a decision of refusal pursuant to Article 62." Article 170 of the Patent Act provides that Articles 63 through 63 of the Patent Act shall apply mutatis mutandis to a trial against the decision of refusal. Article 63 of the Patent Act provides that "Article 63 applicable mutatis mutandis pursuant to paragraph (1) shall apply only where he/she discovers any ground for refusal different from that of the decision of refusal." Article 63 of the Patent Act provides that "In a trial against the decision of refusal, the grounds for rejection shall be consistent with the ground for refusal at least with the decision of refusal, and where an examiner finds any ground for rejection different from the ground for rejection in a trial against the decision of refusal, he/she shall give him/her an opportunity to submit a new written opinion on the ground for rejection (see Supreme Court Decision 207.

As above, the purport of granting an opportunity to submit a written opinion to the applicant is that an invention subject to a patent refers to the creation of a highly new technical idea using the law of nature, so in determining whether it is an invention eligible for a patent, the examiner is required to have highly professional knowledge and cannot have any knowledge so that it is possible to obtain a patent, and thus, the rejection ruling is immediately harsh to the applicant without having an opportunity to correct errors that may arise from the seafarerism system by preventing errors and explaining the applicant, and immediately is too harsh (see Supreme Court Decision 98Hu515 delivered on May 29, 2001). Therefore, in notifying the grounds for rejection, the claims and applicable provisions that are the object of the refusal should be specified in detail, and the contents of the grounds for rejection should be stated in an objective detail so that the applicant can clearly understand the meaning thereof.

In this case, the grounds for rejection granted an opportunity to submit a written opinion to the Plaintiff cannot be deemed to have stated all the essential elements and the relationship between the essential elements is unclear. The summary of the grounds for the trial decision of this case means that the composition of claims, the subject or the meaning of the claims is unclear. However, the absence of all the essential elements is merely an omission of all or part of the elements, and cannot be deemed to have the same meaning as the composition of claims, the subject or the meaning of the claims is unclear, and it cannot be deemed that the essential element itself is the premise that the relationship between the essential elements is unclear, and therefore, it cannot be deemed to have the same content as the composition, the subject or meaning of claims is unclear (in light of the fact that an examiner of the Korean Intellectual Property Office, at the time of the decision of refusal, did not resolve the grounds for rejection on the ground that all the elements stated in the claims of the invention of this case are merely abstractly stated, and thus, it cannot be understood that the grounds for rejection of the applicant’s subjective notice cannot be objectively understood as the subject of the grounds for rejection.

Therefore, it constitutes a new ground for rejection different from that of the rejection rejection decision, and thus, the Korean Intellectual Property Trial and Appeal Board rendered the instant trial decision without implementing a new ground for rejection despite that it should have given the Plaintiff an opportunity to submit a written opinion on the new ground for rejection. Thus, the instant trial decision violates Articles 170(2) and (1) and 63 of the Patent Act without examining the remaining issues.

3. Conclusion

If so, the decision of this case must be revoked, so the plaintiff's claim is justified.

Judges Hwang Han-sik (Presiding Judge)