Patent Date
October 5, 2023
Court Intellectual Property High
Right
Court, Second Division
Case number 2022 (Gyo-Ke) 10125- A case in which a JPO decision was rescinded on the grounds that the decision
erred in the determination on whether or not a correction is compliant.
Case type: Rescission of Trial Decision of Invalidation
Result: Granted
References: Article 134-2, paragraph (9) and Article 126, paragraph (5) of the Patent
Act
Related rights, etc.: Patent No. 6585232
Decision of JPO: Invalidation Trial No. 2020-800082
Summary of the Judgment
1.

The present case is a suit against a trial decision that held a request forcorrection by the Plaintiff, who is a patentee, to be non-compliant and that invalidated
a patent with regard to an invention titled "COMPOSITIONS COMPRISING 2,3DICHLORO-1,1,1-TRIFLUOROPROPANE,
TRIFLUOROPROPENE,

2-CHLORO-1,1,1-

2-CHLORO-1,1,1,2-TETRAFLUOROPROPANE,

2,3,3,3-TETRAFLUOROPROPENE" (Number of claims: 7).

OR

The issue of this caseis the presence or absence of a violation of the correction requirement.
2.

The present judgment recognized the Plaintiff's claim to be well founded, andrescinded the present trial decision.
(1)

The reasons are outlined as follows.

A correction of the scope of claims, etc. must be made "within the scope of thematters disclosed in the description, claims, or drawings attached to a written
application" (Article 134-2, paragraph (9) and Article 126, paragraph (5) of the Patent
Act).

This can be interpreted as requiring that the invention be fully disclosed fromthe time of filing the original application to thereby ensure prompt granting of rights
and to prevent unforeseen disadvantages to third parties who acted on the premise of
the scope of the invention disclosed at the time of filing the application.

It isreasonable to interpret that the phrase "matters disclosed in the description, claims, ordrawings attached to a written application" means technical matters that can bederived by a person ordinarily skilled in the art after taking the entire disclosure of thedescription, claims, or drawings into overall consideration (hereinafter merelyreferred to as "the original technical matters").

In a case where a correction does not

introduce a new technical matter in relation to the original technical matters, it can bedeemed that the correction is made "within the scope of the matters disclosed in thedescription, claims, or drawings."

i

(2)

It can be found that the content of the original technical matters in the present

case is the following: in preparing HFO-1234yf, by-products and impurities containedin HFO-1234yf or its raw materials (HCFC-243db, HCFO-1233xf, HCFC-244bb) canbe present in small amounts as additional compounds; and with regard to Present
Invention 1 (A composition comprising HFO-1234yf, HFC-254eb, and HFC-245cb),
at least HFC-254eb and HFC-245cb are included as the additional compounds.
On the other hand, the present description, etc. state compositions comprising
HFC-254eb and HFC-245cb as well as other compounds in the process of preparing
HFO-1234yf.

However, the present description, etc. do not state anything about

HCFC-225cb.

In addition, from the statement of the present description, etc., itcannot be recognized to be obvious to a person ordinarily skilled in the art that thecomposition comprises HCFC-225cb due to HCFC-225cb being generated as a byproduct in the process of preparing HFO-1234yf or HCFC-225cb being contained as
an impurity in HFO-1234yf or its raw materials.

Thus, even taking into overall

consideration the entire statement of the present description, etc., a person ordinarily
skilled in the art cannot derive the technical matter of including HCFC-225cb in
Present Invention 1.
Further, Present Correction Invention 1 is "A composition comprising HFO 1234yf, HFC-254eb, and HFC-245cb (except for a composition comprising 1% byweight or more of HCFC-225cb)." (the underlined portion has been added by thecorrection).

By the present correction, a composition comprising 1% by weight ormore of HCFC-225cb has been excluded from Present Invention 1.

However, thepresent correction cannot be deemed to cause any change in the technical mattersconcerning Present Invention 1 stated in the present description, etc.

Thus, thepresent correction has not added a new technical matter to the technical mattersdisclosed in the present description, etc.
(3)

The Defendant asserts that the present correction cannot be deemed to be acorrection excluding a portion identical to the Exhibit Ko 4 invention and cannot beallowed, because the disclaimer does not fall under "a correction excluding a portion
identical to an invention of the prior application from an invention claimed in a patentapplication."

However, in the Patent Act, it is not required to exclude only a portion

identical to the invention of the prior application, nor to exclude only a portion
identical to the prior art that was known prior to the filing of the patent application.
In addition, when a correction does not introduce a new technical matter in relation tothe original technical matters, it is difficult to consider that the correction will cause
unforeseen damage to third parties.

Thus, as an interpretation of the correctioniirequirement, it should be deemed to be unreasonable to add the requirements asasserted by the Defendant.
(4)

The present trial decision did not allow the present correction on the grounds

that the correction introduces a new technical matter, and invalidated the present
patent for the present invention.

However, the present correction cannot be deemed

to introduce a new technical matter, as mentioned above.

Therefore, it is inescapable

to rescind the present trial decision on the grounds that the trial decision erred in theinterpretation of the correction requirement stipulated in Article 126, paragraph (5) of
the Patent Act as applied mutatis mutandis under Article 134-2, paragraph (9) of thesame Act.

iii

Judgment rendered on October 5, 2023
2022 (Gyo-Ke) 10125 Case of seeking rescission of the trial decision
Date of conclusion of oral argument: August 1, 2023
Judgment
Plaintiff: The Chemours Company FC, Limited Liability Company
Defendant: AGC Inc.
Main text
1. The court shall rescind the decision made by the Japan Patent Office (JPO) on
August 16, 2022 with regard to the case of Invalidation Trial No. 2020 -800082.
2. The court costs shall be borne by the Defendant.
Facts and reasonsNo. 1 Judicial decision sought by the Plaintiff
The same gist as the main text.
No. 2 Outline of the case
The present case is a suit against a trial decision that invalidated a patent withregard to inventions according to Claims 1 to 7 of Patent No. 6585232, in which theissue is the presence or absence of a violation of the correction requirement stipulated
in Article 126, paragraph (5) of the Patent Act as applied mutatis mutandis under
Article 134-2 of the same Act.
1. History of procedures at the JPO (Entire import of the oral argument)(1) The Plaintiff is a patentee of the patent for the invention titled"COMPOSITIONS COMPRISING 2,3-DICHLORO-1,1,1-TRIFLUOROPROPANE,
2-CHLORO-1,1,1-TRIFLUOROPROPENE,

2-CHLORO-1,1,1,2-

TETRAFLUOROPROPANE, OR 2,3,3,3-TETRAFLUOROPROPENE" (Patent No.
6585232, hereinafter referred to as "the present patent").

For the present patent, adivisional application was filed on May 28, 2018 (Original filing date: May 7, 2009;
Priority claim under the Paris Convention: May 7, 2008, United States of America),
and establishment of a patent right was registered on September 13, 2019 (Exhibit Ko
55).
(2) The Defendant filed a request for a trial for invalidation of the present
patent (Number of claims: 7) on September 18, 2020.
1

The Japan Patent Officeexamined this request as the case of Invalidation Trial No. 2020-800082.

Then, theJapan Patent Office gave an advance notice of a trial decision on October 13, 2021
(Exhibit Ko 50).

The Plaintiff filed a written request for correction (Exhibit Ko 52;

hereinafter, correction made by this written request for correction will be referred toas "the present correction") on January 17, 2022, requesting that the scope of claimsof the present patent be corrected.

However, the Japan Patent Office held that thepresent correction shall not be allowed, and rendered a trial decision that "the patent
for the inventions according to Claims 1 to 7 of Patent No. 6585232 shall be
invalidated" (hereinafter referred to as "the present trial decision"; for the overseas
resident, 90 days were added to a statute of limitations for filing an action) on August
16 of the same year.

A certified copy of the present trial decision was served on the

Plaintiff on the 26th of the same month.
The Plaintiff filed the present suit on December 15 of the same year.
2. Summary of the invention(1) The statement of Claims 1 to 7 in the scope of claims of the present patent
before the present correction is as follows (hereinafter, the term "claim" will refer to aclaim in the scope of claims of the present patent unless otherwise specified).
[Claim 1]
A composition comprising
HFO-1234yf, HFC-254eb, and HFC-245cb.
[Claim 2]
Use of the composition according to Claim 1 as a refrigerant.
[Claim 3]
Use of the composition according to Claim 1 as a refrigerant in air conditioners,
freezers, refrigerators, heat pumps, water chillers, flooded evaporator chillers, direct
expansion chillers, centrifugal chillers, walk-in coolers, mobile refrigerators, mobile
air-conditioning units, and combinations thereof.
[Claim 4]
Use of the composition according to Claim 1 as an aerosol propellant.
[Claim 5]
Use of the composition according to Claim 1 as a foaming agent.
[Claim 6]
A method of using the composition according to Claim 1, wherein thecomposition comprises a composition that transfers heat from a heat source to a heatsink.
[Claim 7]
2

A method of using the composition according to Claim 1 as a refrigerant in acycle comprising a composition that undergoes a phase transition from a liquid to a
gas and returns.
(2) Content of the present correction
The statement "A composition comprising ..." in Claim 1 is corrected to recite"A composition comprising ... (except for a composition comprising 1% by weight ormore of HCFC-225cb)" (the same correction applies to Claims 2 to 7 that depend
from Claim 1).
3. Summary of reasons of the present trial decision(1) Whether the present correction complies with the correction requirement
A. Correction Matter 1 pertaining to the present correction is as mentioned in
2(2) above.
B. In the description, claims, or drawings attached to the written application forthe present patent (hereinafter referred to as "the present description, etc."), as astatement on a composition comprising all of "HFO-1234yf," "HFC-254eb," and"HFC-245cb", the contained amount (mole percent) of these components is shown ineach of the row "500" for temperature (°C) in Table 5 ([Table 6]) and the row "3" fortime in Table 6 ([Table 7]).
These were obtained by analyzing components of outflow from a reactor using
on-line GCMS.

Table 5 ([Table 6]) shows the outflow components when the reactor

temperature was changed, and Table 6 ([Table 7]) shows the outflow components
collected periodically at reactor temperatures of 575°C and 400°C.

Other than thesetwo, none of the outflows from the reactor is not shown to comprise all of "HFO 1234yf," "HFC-254eb," and "HFC-245cb" simultaneously.
Hence, the present description, etc. merely state a composition comprising allof "HFO-1234yf," "HFC-254eb," and "HFC-245cb" in an integrated manner without
specifically distinguishing the composition from many other compositions.
In addition, it cannot be found that the present description, etc. substantiallystate the composition comprising "HFO-1234yf," "HFC-254eb," and "HFC-245cb"
simultaneously with supporting evidence.
In order to assert that the correction of a so-called "disclaimer" with anumerical range limitation as in the present correction does not add a new matter, it
can be interpreted to require that an "excluded" subject matter can be deemed to exist;
i.e., it can be interpreted to require that the invention according to Claim 1 before thecorrection (hereinafter referred to as "Present Invention 1"; hereinafter, each of theinventions according to Claims 1 to 7 will be referred to as "Present Invention 1,"
3

"Present Invention 2," and the like according to each claim number; Present
Inventions 1 to 7 will collectively be referred to as "the present invention") can bedeemed to include "a composition comprising 1% by weight or more of HCFC-225cb",or that even if an "excluded subject matter" does not exist, Present Invention 1 can bedeemed to include "a composition comprising less than 1% by weight of HCFC225cb" because it will be explicitly indicated that the invention according to Claim 1
after the correction (hereinafter referred to as "Present Correction Invention 1")
includes "a composition comprising less than 1% by weight of HCFC-225cb."
However, Claim 1 before the correction does not include a definition for
HCFC-225cb, and Claims 2 to 7, which depend from Claim 1, also do not include a
definition for HCFC-225cb.

In addition, no statement on HCFC-225cb can be foundin the present description, etc. as well.
is included in Present Invention 1.

Hence, it is not clear whether "HCFC -225cb"

Further, there is no common general technicalknowledge that HCFC-225cb is contained in any of the reaction products stated in thepresent description, etc.
Furthermore, since there is no statement on HCFC-225cb in the present
description, etc., there is no other choice but to deem that the contained amount of
HCFC-225cb is unknown.

That is, it should be deemed that Present Invention 1 is

not supposed to include "HCFC-225cb."
Thus, it cannot be deemed that Present Invention 1 includes "a composition
comprising 1% by weight or more of HCFC-225cb", nor can it be deemed that Present
Invention 1 includes "a composition comprising less than 1% by weight of HCFC225cb."
C. As mentioned in the foregoing, Correction Matter 1 introduces a newtechnical matter in relation to the matters disclosed in the description, claims, ordrawings attached to the written application, and falls under the addition of a newmatter, thus violating the provision of Article 126, paragraph (5) of the Patent Act asapplied mutatis mutandis under Article 134-2, paragraph (9) of the same Act.
Therefore, the present correction cannot be allowed.
(2) Validity of the Present Invention
A. Exhibit Ko 4 (International Publication No. WO2007/086972) discloses "avolatile material containing CF 3CF=CH2 (HFC-1234yf) (10%), CF3 CF2CH3 (20%),
CF3CFHCH3 (48%), and HCFC-225cb (20%)" (hereinafter referred to as "Exhibit Ko
4 invention").

Thus, Present Invention 1 is the Exhibit Ko 4 invention.

In addition,

Present Inventions 2 to 7 are the Exhibit Ko 4 invention, or could easily have been
made by a person ordinarily skilled in the art on the basis of the Exhibit Ko 4
4

invention.

Therefore, the present invention may not be granted a patent under theprovision of Article 29, paragraph (1), item (iii) of the Patent Act or the provision of
Article 29, paragraph (2) of the same Act, and Reason 3 for Invalidation (novelty andan inventive step) is well founded.
B. Additionally, it is not possible to accept all of reasons for invalidation
asserted by the Defendant; i.e., Reason 1 for Invalidation (violation of t he clarity
requirement), Reason 2 for Invalidation (violation of the support requirement),
Reason 4 for Invalidation (lack of novelty and an inventive step based on Exhibit Ko
14 (International Publication No. WO2008/079265) on the premise of violation of thedivision requirement), and Reason 5 for Invalidation (lack of novelty and an inventive
step based on Exhibit Ko 16 (National Publication of International Patent Application
No. 2011-520017) on the premise of violation of the division requirement).
(omitted)
No. 5 Judgment of this court
1. Present invention(1) The present description, etc. state as shown in Attachment "Patent Gazette"(Exhibit Ko 55).
(2) Summary of the present invention
According to the statement in (1) above, the present invention relates to thefield of compositions useful as heat transfer compositions, aerosol propellants,
foaming agents, blowing agents, solvents, cleaning agents, carrier fluids, displacement
drying agents, buffing abrasion agents, polymerization media, expansion agents forpolyolefins and polyurethanes, gaseous dielectrics, fire extinguishers, and fire
extinguishers in the form of liquid or gas, and new environmental regulations have led
to the need for new compositions for use in refrigeration, air conditionin g, and heatpump apparatus, and against this background, compounds with low global warming
potential are of particular interest, and under these circumstances, the present
applicants have found that in preparing such new compounds with low global
warming potential, such as 1234yf, certain additional compounds are present in small
amounts ([0001] to [0003]).
2. Exhibit Ko 4
Exhibit Ko 4 (International Publication No. WO2007/086972), which wasinternationally published on August 2, 2007, discloses as follows (its Japanesetranslation is based on Exhibit Ko 6 (National Publication of International Patent5

Application No. 2009-514951) that is the corresponding national publication gazette).
[0002]
Background of the Invention
Many halocarbons, in particular lower halocarbons, are used in a variety of
applications, such as refrigerants, propellant gases, fire extinguishers, and foaming
agents, in foam and in many other forms.

The term "halocarbon" as used hereinmeans a compound containing carbon, one or more halogens, and hydrogen as an
optional element.

Halocarbons of particular interest in the present invention are "C3

halocarbons," which are halocarbons having three carbon atoms in their chain,includingC3hydrochlorofluorocarbons,hydrofluoroolefins.

C3hydrofluorocarbons,

and

C3

Examples of such compounds include CF 3CF2 CHCl2 (HCFC-

225ca), CClF2CF2CHClF (HCFC-225cb), CF3CF2CH2Cl (HCFC-235ca), CF3CF2CH3(HFC-245cb), CF3CFHCH3 (HFC-254eb), and CF3CF=CH2 (HFO-1234yf).
[0009]
Summary of the Invention... The present U.S. applicants have found an advantageous method and/or
means of converting a halocarbon blend such as HCFC-225ca, in particular an
isomeric blend of HCFC-225ca and HCFC-225cb, into a composition comprising
HCFC-225cb but comprising little or no HCFC-225ca....
[0010]... In certain preferred embodiments, the conversion step, which preferablycomprises reduction, produces C3 hydrofluorocarbons including pentafluorinated C3hydrofluorocarbons, such as CF 3CF2CH3 (HFC-245cb), and tetrafluorinated C3hydrofluorocarbons, such as HCF 2CF2CH3.

In certain preferred embodiments, thepreferred conversion step produces C3 hydrofluoroolefins such as trifluorinated C3hydrofluoroolefins, tetrafluorinated C3 hydrofluoroolefins, and pentafluorinated C3hydrofluoroolefins,forexamplethetrifluorinatedolefinCF 3 CH=CH2,

thetetrafluorinated olefin CF 3CF=CH2 (HFC-1234yf), and the pentafluorinated olefin
CF3CF=CFH (HFC 1225ye) ....
[0012]
Thus, one aspect of the present invention relates to an advantageous method of
preparing a hydrofluorocarbon directly from a halocarbon blend comprising HCFC 225cb, and more preferably from a blend comprising HCFC-225cb and HCFC-225ca.
Preferably, this method is carried out without converting a substantial amount of theHCFC-225cb to other compounds.

In particular embodiments, this method

comprises the steps of: (a) providing a halocarbon blend comprising 1,3-dichloro6

1,1,2,2,3-pentafluoropropane (HCFC-225cb) and at least one other halocarbon that is
not a hydrofluorocarbon; and (b) contacting the blend with a reducing agent underconditions effective to convert at least a substantial portion of the at least one otherhalocarbon into at least one hydrofluorocarbon.

In certain preferred embodi ments,

the other halocarbon is a C3 HCFC, preferably HCFC-225cb, and the onehydrofluorocarbon preferably comprises at least one C3 hydrofluoroolefin, preferably
at least one tetrafluoropropene, and even more preferably CF 3CF=CH2 (HFO-1234yf).
[0013]
Another aspect of the present invention relates to a method of selectively
reducing one or more compounds in a halocarbon blend comprising HCFC -225cb ....
In particular embodiments, this method preferably comprises the steps of: (a)providing a halocarbon blend comprising HCFC-225cb and at least one otherhalocarbon that is not a hydrofluorocarbon; and (b) contacting the blend with areducing agent to reduce at least a portion of the other halocarbon without reducing amajority of the HCFC-225cb, preferably without reducing more than about 90 percent
by weight of the HCFC-225cb.
[0015]
Preferred blends according to the present invention are those comprising thecompound HCFC-225cb .... In still other preferred embodiments, the blend consists
essentially of from about 1 to about 99 percent by weight of HCFC-225cb (morepreferably from about 40 to about 55 percent by weight of HCFC-225cb) and fromabout 1 to about 99 percent by weight of HCFC-225ca (more preferably from about 45
to about 60 percent by weight of HCFC-225ca).
[0027]
Working Example 2:This working example describes the reduction of a blend of HCFC -225ca/cb
with excess hydrogen at 120°C.
[0028]The reaction of Working Example 1 was repeated, except that the reaction was
conducted at 120°C.
analyzed by GC.

The volatile materials (44 g) collected in a cold trap wereAs a result, the GC confirmed the production of CF 3CF=CH2(HFC-1234yf) (10%), CF 3CF2CH3 (20%), CF3CFHCH3 (48%), and HCFC-225cb(20%).

GC of the pot residue mainly confirmed the solvent ethanol and unreacted

225cb.
3. Whether or not the present correction is compliant(1) The present correction is that the statement "A composition comprising
7

HFO-1234yf, HFC-254eb, and HFC-245cb." of Claim 1 in the scope of claims of thepresent patent is corrected to recite "A composition comprising HFO-1234yf, HFC254eb, and HFC-245cb (except for a composition comprising 1% by weight or moreof HCFC-225cb)." (the portion to be corrected by the present correction is underlined).
By the present correction, Claims 2 to 7, which depend from the statement of Claim 1,
are also corrected.
(2) The present correction was requested by the Plaintiff, who is the respondentof the trial for patent invalidation with regard to the present patent, in response to a nadvance notice of a trial decision (Exhibit Ko 50; Article 164-2, paragraph (1) of the
Patent Act) to the effect that a reason for invalidation is found on the grounds of lackof novelty and an inventive step over Exhibit Ko 4 invention (Exhibit Ko 52; A rticle134-2, paragraph (1), the main clause of the same Act).
(3) A correction of the scope of claims etc. must be made "within the scope ofthe matters disclosed in the description, claims, or drawings attached to a written
application" (Article 134-2, paragraph (9) and Article 126, paragraph (5) of the Patent
Act).

This can be interpreted as requiring that the invention be fully disclosed fromthe time of filing the original application to thereby ensure prompt grant of rights andto prevent unforeseen disadvantages to third parties who acted on the premise of thescope of the invention disclosed at the time of filing the application.

It is reasonable

to interpret that the phrase "matters disclosed in the description, claims, or drawings
attached to a written application" means technical matters that can be derived by aperson ordinarily skilled in the art after taking the entire disclosure of the description,
claims, or drawings into overall consideration (hereinafter merely referred to as "theoriginal technical matters").

In a case where a correction does not introduce a newtechnical matter in relation to the original technical matters, it can be deemed that thecorrection is made "within the scope of the matters disclosed in the description,
claims, or drawings."(4) In the present case, it can be recognized that the present correction wasmade "within the scope of the matters disclosed in the description, claims, ordrawings" for the following reasons.
A. (A) The statement of the scope of claims for Present Invention 1 is "A
composition comprising HFO-1234yf, HFC-254eb, and HFC-245cb."

It is apparent

that the composition literally comprises HFO-1234yf, HFC-254eb, and HFC-245cb.
As far as the composition literally comprises these compounds, it can be interpreted
that compositions comprising any materials other than these compounds may be
included in the scope of claims.
8(B) The present description, etc. state that "The applicants have found that in
preparing new compounds with low global warming potential, such as 1234yf, certain
additional compounds are present in small amounts." ([0003]), "According to thepresent invention, there is provided a composition comprising HFO-1234yf and at
least one additional compound selected from the group consisting of HFO-1234ze,
HFO-1243zf, HCFC-243db, HCFC-244db, HFC-245cb, HFC-245fa, HCFO-1233xf,
HCFO-1233zd, HCFC-253fb, HCFC-234ab, HCFC-243fa, ethylene, HFC-23, CFC-13,
HFC-143a, HFC-152a, HFO-1243zf, HFC-236fa, HCO-1130, HCO-1130a, HFO-1336,
HCFC-133a, HCFC-254fb, HCFC-1131, HFC-1141, HCFO-1242zf, HCFO-1223xd,
HCFC-233ab, HCFC-226ba, and HFC-227ca.

The composition comprises less thanabout 1 percent by weight of the at least one additional compound." ([0004]), "In one
embodiment, the total amount of the additional compounds in the composition
comprising HFO-1234yf ranges from more than zero percent by weight to less than 1
percent by weight." ([0012]).

In view of these statements, the present description,etc. can be deemed to state: [i] in preparing HFO-1234yf, certain additional
compounds are present in small amounts; and [ii] the total amount of additional
compounds in the composition comprising HFO-1234yf ranges from more than zero
percent by weight to less than 1 percent by weight.
In addition, taking into the overall consideration the statements of [0013],[0016], [0019], [0022], [0030], and [Figure 1] in the present description, etc., thepresent description, etc. can be deemed to state that by-products generated in theprocess of preparing HFO-1234yf and impurities contained in HFO-1234yf or its raw
materials (HCFC-243db, HCFO-1233xf, HCFC-244bb) fall under the additional
compounds.
B. On the basis of each statement in A above, it can be found that the content
of the original technical matters in the present case is the following: in preparing
HFO-1234yf, by-products and impurities contained in HFO-1234yf or its raw
materials (HCFC-243db, HCFO-1233xf, HCFC-244bb) can be present in small
amounts as the additional compounds; and with regard to Present Invention 1, at least
HFC-254eb and HFC-245cb are included as the additional compounds.
On the other hand, the present description, etc. state compositions comprising
HFC-254eb and HFC-245cb as well as other compounds in the process of preparing
HFO-1234yf ([Table 6] Table 5, [Table 7] Table 6).

However, the present

description, etc. do not state anything about HCFC-225cb.

In addition, from thestatement of the present description, etc., it cannot be recognized to be obvious to aperson ordinarily skilled in the art that the composition comprises HCFC-225cb due
9to HCFC-225cb being generated as a by-product in the process of preparing HFO1234yf or HCFC-225cb being contained as an impurity in HFO-1234yf or its raw
materials.

Thus, even taking the entire statement of the present description, etc. into

overall consideration, a person ordinarily skilled in the art cannot derive the technicalmatter of including HCFC-225cb in Present Invention 1.
C. Present Correction Invention 1 is "A composition comprising HFO-1234yf,
HFC-254eb, and HFC-245cb (except for a composition comprising 1% by weight ormore of HCFC-225cb)."

By the present correction, a composition comprising 1% byweight or more of HCFC-225cb has been excluded from Present Invention 1.
However, in light of B above, the present correction cannot be deemed to cause anychange in the technical matters concerning Present Invention 1 stated in the present
description, etc.

Thus, the present correction has not added a new technical matter tothe technical matters disclosed in the present description, etc.
D. The present trial decision interpreted that in order to recognize that thecorrection of a so-called "disclaimer" with a numerical range limitation does not add a
new matter, it can be interpreted to require that an "excluded" subject matter can bedeemed to exist; i.e., Present Invention 1 can be deemed to include "a composition
comprising 1% by weight or more of HCFC-225cb", or that even if an "excluded"
subject matter does not exist, Present Invention 1 can be deemed to include "acomposition comprising less than 1% by weight of HCFC-225cb" because it will be
explicitly indicated that Present Invention 1 includes "a composition comprising lessthan 1% by weight of HCFC-225cb."

On this basis, the present trial decision

determined that the present correction introduces a new technical matter on the
grounds that in the present case, Present Invention 1 cannot be deemed to include "acomposition comprising 1% by weight or more of HCFC-225cb", nor can Present
Invention 1 be deemed to include "a composition comprising less than 1% by weightof HCFC-225cb."
Then, the determination by the present trial decision will be discussed.

As

mentioned in B above, the present description, etc. do not state anything about HCFC 225cb.

However, as mentioned in A(A) above, the statement of the scope of claims

for Present Invention 1 can be interpreted to mean a composition that may comprise
any materials other than HFO-1234yf, HFC-254eb, and HFC-245cb as far as thestatement literally comprises HFO-1234yf, HFC-254eb, and HFC-245cb.

Further, it

can be deemed that the fact that the present correction has specified "except for acomposition comprising 1% by weight or more of HCFC-225cb" explicitly indicatesthat Present Correction Invention 1 does not include a composition comprising 1% by10weight or more of HCFC-225cb, but it cannot be deemed that the same fact has
explicitly indicated that Present Correction Invention 1 is a composition comprisingless than 1% by weight of HCFC-225cb.
E. Therefore, it should be deemed that the present correction does not introduce
a new technical matter in relation to the original technical matters.
(5) The Defendant asserts that the present correction cannot be deemed to be acorrection excluding a portion identical to Exhibit Ko 4 invention and cannot beallowed, because the disclaimer does not fall under "a correction excluding a portion
identical to an invention of the prior application from an invention claimed in a patentapplication."
However, it is provided that when a correction of the scope of claims is madein accordance with Article 134-2, paragraph (1) of the Patent Act, the correction mustremain within the scope of the matters disclosed in the description, claims, ordrawings attached to a written application and must not substantially enlarge or alter
the claims (the same Article, paragraph (9) and Article 126, paragraphs (5) and (6) of
the same Act), but it is not further required to exclude only a portion identical to theinvention of the prior application nor to exclude only a portion identical to the prior
art that was known prior to the filing of the patent application.

In addition, when acorrection is made "within the scope of the matters disclosed in the description,
claims, or drawings"; that is, when a correction does not introduce a new technicalmatter in relation to the original technical matters, it is difficult to consider that thecorrection will cause unforeseen damage to third parties.

Thus, as an interpretationof the correction requirement stipulated in the same paragraph, it should be deemed to
be unreasonable to add the requirements as asserted by the Defendant.
Furthermore, the Defendant asserts that it cannot be allowed to freely define
the content of the correction invention in the form of a disclaimer.

In this regard, thepresent correction is a correction made in response to the advance notice of the trial
decision to the effect that a reason for invalidation is found on the grounds of lack ofnovelty and an inventive step over Exhibit Ko 4, as mentioned in (2) above.
However, as mentioned in 2 above, Exhibit Ko 4 discloses not only Exhibit Ko 4
invention but also discloses that the invention "relates to an advantageous method of
preparing a hydrofluorocarbon directly from a halocarbon blend comprising HCFC 225cb. ... this method is carried out without converting a substantial amount of theHCFC-225cb into other compounds." ([0012]), and that "Preferred blends according
to the present invention are those comprising the compound HCFC-225cb.

In ...

other preferred embodiments, the blend consists essentially of from about 1 to about11

99 percent by weight of HCFC-225cb ..." ([0015]).

Taking each disclosure of

Exhibit Ko 4 into consideration, the present correction can be deemed to intend to
exclude a portion that is probable to be regarded as substantially identical to theinvention disclosed in Exhibit Ko 4.

Thus, the present correction cannot be deemed

to freely define the content of the correction invention independently of the invention
disclosed in the prior art Exhibit Ko 4.
(6) The present trial decision did not allow the present correction on the
grounds that the correction introduces a new technical matter, and invalidated thepresent patent for the present invention.

However, the present correction cannot be

deemed to introduce a new technical matter, as mentioned above.

Therefore, it isinescapable to rescind the present trial decision, on the grounds that the present trial
decision erred in the interpretation of the correction requirement stipulated in Article
126, paragraph (5) of the Patent Act as applied mutatis mutandis under Article 134-2,
paragraph (9) of the same Act.
No. 6 Conclusion
As mentioned in the foregoing, the Plaintiff's claim is well founded and thus
shall be affirmed.

Therefore, the judgment is rendered as mentioned in the main text.

Intellectual Property High Court, Second Division
Presiding Judge: SHIMIZU Hibiku
Judge:

ASAI Ken

Judge:KATSUMATA Kumiko

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Attachment "Patent Gazette" (omitted)

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