There is no novelty because the use is substantially identical to the process in cited document.
IPニュース
2011.06.19
IP Court Case Summary:H22 (gyoke) 10256:
On March 23, 2011, the Intellectual Property High Court (IP High Court) reversed JPO board of appeal’s decision that there is novelty because the use is not described in the cited document.
The invention at issue is related to “A superoxide anion decomposing agent” that is specified by the process using “a fine powder of platinum”.
On the other hand, cited document disclosed the process using “a fine powder of platinum”. Moreover, the cited document disclosed “a fine powder of platinum” has the property to decompose a superoxide anion, but there is no expression of “A superoxide anion breaking agent” in the cited document.
IP High Court mentioned that the use as “A superoxide anion decomposing agent” is substantially identical to the process for decomposing a superoxide anion. Therefore, IP High Court mentioned that the property of “a fine powder of platinum” is only added to the claim, and then claimed invention lacks the novelty.
Moreover, IP High Court mentioned that because generally, as for use invention, the well-known compound falls under Patent Law Article 29-1, it will lack the novelty. However, there is exceptionally room where a patent is formed as “invention of product” as well as “invention of process” if, for example, the non-well-known property is found on the compound.