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IP Court Case Summary:H23 (gyoke) 10191: 

February 28, 2012, the Intellectual Property High Court (IP High Court) reversed JPO board of appeal’s decision on the trial for invalidation of the patent. (Inventive step was discussed.)
 
The title of the invention is “Production of Polyether foam and the foamed thermoplastic”. The invention at issue is related to the production which includes “HFC-245fa” and “HFC-365mfc” as a foaming agent.
 
Citation-1 described the invention which is only different from claimed invention by including “HFC-141b” as a foaming agent. Citation-1 also described that “HFC-245fa” and “HFC-365mfc” are better than “HFC-141b” because “HFC-141b” provides bad influence in ozone layer.
 
The names of the compound are as follows.
“HFC-245fa” = 1,1,1,3,3- penta- fluoropropane
“HFC-365mfc” = 1,1,1,3,3- penta- fluorobutane
“HFC-141b” = 1,1- dichloro-1- fluoroethane
 
JPO board of appeal’s decided that claimed inventions have inventive step because claimed inventions have advantageous effects which were shown by additional experimental data.
 
IP High Court decided that the additional experimental data showed the results from the limited examples and limited methods. The advantageous effects cannot be recognized from these data. Therefore, IP High Court decided there is no inventive step. Then, JPO board of appeal’s decision was reversed.
 
IP High Court also showed an additional remark that inventive step should be decided by (1) recognizing the invention in citations, (2) recognizing the common and different between claimed invention and citations, and (3) considering the inventive step. In this JPO board of appeal’s decision, (1) and (2) are not enough. IP High Court showed the message for JPO board of appeal because this case will be remanded and decided again by JPO board of appeal. 
 
http://www.ip.courts.go.jp/hanrei/pdf/20120229164000.pdf