[1] Whether a new decision can be seen as a new decision where a report on the results of an examination that provides a notice of new grounds for rejection discovered in the pre-examination procedure commenced by the amendment and retains the original decision (negative), and whether the grounds for rejection before the amendment can be deemed to have been annulled where the Patent Tribunal recognizes that the amendment is legitimate (negative)

[2] In a case where the grounds for a trial ruling rejecting a request for a trial against a ruling of rejection conforms to the grounds and main purport of the ruling of rejection, whether new grounds for rejection are notified and the opportunity to submit a written

[1] Articles 47, 51, and 175(2) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001) / [2] Articles 62, 63, and 170(2) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001)

[1] Supreme Court Decision 2003Hu2782 decided Feb. 18, 2005 (Gong2005Sang, 523) / [2] Supreme Court Decision 2001Hu2757 decided Oct. 10, 2003 (Gong2003Ha, 2195) Supreme Court Decision 2006Hu1766 decided Jul. 26, 2007 (Gong2007Ha, 1398)

Mamalid et al. (Law Firm U.S. Patent & Patent Attorney Owon, et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 2004Heo2468 Decided January 13, 2006

All appeals are dismissed. The costs of appeal are assessed against the plaintiffs.

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

1. As to the grounds of appeal Nos. 1 and 2

Examining the reasoning of the judgment below in light of the record, the court below is justified in finding that the "hergrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgrgr

The judgment of the court below is not erroneous in the incomplete hearing as otherwise alleged in the ground of appeal.

2. As to the third ground for appeal

A. The record reveals the following facts.

The examiner of the Korean Intellectual Property Office issued a ruling of rejection on the ground that the first ground for rejection is not supported by the detailed description of the invention, which is composed of the method of manufacturing the thermal semiconductor, including the thermal cutting process, in which the final manufacturing density of the powder is at least 97%, rather than having the whole density of the final product at least 97%, and the first ground for rejection is not supported by the detailed description of the invention, which is composed of the method of manufacturing the thermal semiconductor by selecting the part of which the density is at least 97%. Thereafter, in the pre-examination procedure commenced by the amendment on July 3, 2002, the examiner notified the plaintiffs of the grounds for rejection that the invention of this case does not have non-obviousness, and then prepared a written report of examination that maintained the original decision on the ground that it did not constitute a change in the substance of the above amendment. After recognizing that the Intellectual Property Trial and Appeal Board was lawful, the patent examiner did not clearly explain the final ground for rejection as to the portion of the invention selected at least 97% of the final decision on the grounds for rejection.

(b) Whether the first ground for rejection has ceased to exist;

After an examiner notified the first ground for rejection in the examination procedure and rendered a ruling of rejection, the examiner notified the second ground for rejection by finding new grounds for rejection different from the first ground for rejection in the examination procedure commenced by an amendment, and even if an examiner prepared a report of the results of the examination that maintained the second ground for rejection on the ground that the second ground for rejection has not been annulled, the above report of the results of the examination is merely a reference to the deliberation of the trial procedure conducted thereafter and cannot be deemed a new decision (see Supreme Court Decision 2003Hu2782, Feb. 18, 2005). In addition, according to Articles 47 and 51 of the former Patent Act (amended by Act No. 6411, Feb. 3, 2001; hereinafter referred to as the "former Patent Act"), the patent applicant can make an amendment to the extent that the substance and drawings attached to the patent application are not modified, so even if the Patent Tribunal recognizes the amendment as lawful, it is not deemed to have been corrected before the amendment.

In light of the above legal principles, it cannot be deemed that the first ground for rejection as to the non-obviousness did not exist on the ground that the examiner notified the second ground for rejection in the pre-examination procedure that the examiner did not have non-obviousness and completed the same report as a result of the examination, or that the Patent Tribunal recognized the correction as lawful on July 3, 2002 by the Intellectual Property Tribunal.

C. Whether a new notification of grounds for rejection should be given in a trial proceeding against a ruling of rejection after correction

According to Articles 62, 63, and 170(2) of the former Patent Act, which provide for the rejection ruling and the notification of reasons for rejection of a patent application, where a trial on a rejection ruling finds any other reason for rejection different from that of the rejection ruling, the patent applicant shall be given an opportunity to submit a written opinion on the new reason for rejection by notifying the patent applicant of the reason for rejection. However, where the reason for rejection of the request for a trial on a rejection corresponds to that of the rejection ruling, it shall not be deemed that a trial ruling was rendered for a new reason different from that of the rejection ruling. Thus, even in such case, the patent applicant shall not be notified of the new reason for rejection and be given an opportunity to submit a written opinion thereon (see Supreme Court Decision 2006Hu1766, Jul.

Examining the above reasons for rejection ruling by the examiner of the Korean Intellectual Property Office and the reasons for the decision of rejection by the Korean Intellectual Property Tribunal, it cannot be said that the contents of the detailed expression are consistent. However, since the contents of the claim concerning the part related to the selection of the end-of-end part of the invention of this case are inconsistent with those of the detailed explanation, the claim cannot be supported by the detailed explanation, and thus, it is consistent with the main purport of Article 42 (4) 1 of the former Patent Act, which violates Article 42 (1) of the former Patent Act. Thus, even if the correction was made on July 3, 2002, the reasons for the decision cannot be said to be a new reason for rejection to provide the plaintiffs with separate opportunity to state their opinions.

D. Therefore, even if the court below prepared a report maintaining the original decision on the ground of lack of inventive step in the examination pre-examination procedure commenced by amendment, it cannot be deemed that the grounds for rejection of the statement were annulled, and the patent invention of this case 1 cannot be viewed as a new ground for rejection because it still failed to resolve the lack of description despite the amendment.

The judgment of the court below is not erroneous in the misapprehension of legal principles as to the notification of the reasons for appeal.

3. Regarding ground of appeal No. 4

The Plaintiffs asserted that the refusal of the patent application invention in this case on the grounds of minor defects in the specification contravenes the legislative intent of the Patent Act, which is the protection of invention, but the defect cannot be deemed to be minor as to the special application that failed to meet the specification requirements under the Patent Act. Thus, the lower court’s rejection of the patent application in this case is justifiable.

This part of the grounds of appeal cannot be accepted.

4. Conclusion

Therefore, all appeals are 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 on the bench.

Justices Cha Han-sung (Presiding Justice)