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IP Court Case Summary:H24 (gyoke) 10405:

October 16, 2013, the Intellectual Property High Court (IP High Court) reversed JPO board of appeal’s decisionon the trial against examiner’s final rejection.
     
1. Claimed Invention and Cited Invention
The title of the invention at issue is “Method for Producing Germicidal Disinfectant Solution”. 
Claimed invention is “Method for producing a germicidal disinfectant solution for dilution, in which pH is adjusted by dissolving one of the acidic substances which is selected from citric acid, malic acid, tartaric acid, maleic acid, succinic acid, oxalic acid, a glycolic acid and acetic acid, after having mixed carbonated water or carbon dioxide gas with an aqueous solution of a chlorine agent which is selected from dichloro isocyanuric acid sodium, sodium hypochlorite, high bleaching powder and chloramine-T, in which the free density carbonate of the carbonated water is 100ppm – 3,000ppm.”
 
(note) The carbonated water in the sentence: “the free density carbonate of the carbonated water is 100ppm – 3,000ppm” is indicating that “carbonated water or carbon dioxide gas” means “carbonated water”. (IP High Court)
 
Claimed inventions before the amendment were as follows;
 
<Claim-1>
Method for producing a germicidal disinfectant solution for dilution, in which 
pH is adjusted by dissolving one of the acidic substances which is selected from citric acid, malic acid, tartaric acid, maleic acid, succinic acid, oxalic acid, a glycolic acid and acetic acid, hydrochloric acid, sulfuric acid, nitric acid, hydrogen sodium sulfate, sulfamic acid, phosphoric acid, preferably hydrochloric acid, after having mixed carbonated water or carbon dioxide gas with an aqueous solution of a chlorine agent which is selected from dichloro isocyanuric acid sodium, sodium hypochlorite, high bleaching powder and chloramine-T, preferably sodium hypochlorite.
<Claim-2>
Method for producing a germicidal disinfectant solution for dilution in Claim-1, in which the free density carbonate of the carbonated water is 100ppm – 3,000ppm.
 
Reasons for rejection by examiner are as follow;
<Reason-1>
In claim-1, when “carbonated water or carbon dioxide gas” is “carbon dioxide gas”, claimed invention is identical to cited invention. Then, claim-1 is not novel.
 
<Reason-2>
“The free density carbonate of the carbonated water is 100ppm – 3,000ppm” is not described in citation. However, claim-2 does not have inventive step.
 
2. Decision by Appeal Board
Claimed invention is the same as cited invention at the point of “an aqueous solution of the hydrochloric acid is dissolved after having mixed carbon dioxide gas with an aqueous solution of the sodium hypochlorite, and performed pH adjustment”. There is no difference between those two inventions. Then, claimed invention lacks novelty.
 
3. Decision by IP High Court
The notice of rejection before the judgment by the Board of Appeal was that there is no difference between claim-1 and cited invention. As for claim-2, the notice of rejection was only related to inventive step because of the difference between claim-2 and cited invention. 
There might be a possibility that substantially the rejection of present claim-1 against a novelty requirement has been already noticed to applicant because the rejection of former claim-1 against a novelty requirement has been already noticed to applicant. However, in this case, it was very difficult for applicant to understand that the present claim-1 is lacking a novelty from the notice of rejection as mentioned above. 
Then, finally IP high court decided that Board of Appeal had a violation of procedure, and this decision by Board of Appeal was cancelled.
 
<Comments>
In this decision, whether a procedure is violated is discussed from the applicant’s viewpoint as “whether an opportunity for an applicant to state an opinion was provided sufficiently “.
Board of Appeal in the Japan Patent Office will discuss this issue from this point of view from now.
 
http://www.ip.courts.go.jp/hanrei/pdf/20131021094813.pdf