16 回知的財産翻訳検定＜第 9 回和文英訳＞
知財法務実務１級（和文英訳）
標準解答例
Issue: Standard for determining inventive step of claimed
invention
Facts:Japanese patent number 3561899 entitled "Filter for
ventilating fans and manufacturing method of the same" wasdetermined invalid through an appeal for patent invalidation
at the Japan Patent Office (JPO). The owner of the patent at
issue filed an appeal with the Intellectual Property High Court(IPHC) in order to repeal the invalidation decision by the JPO
effectively cancelling the decision. The IPHC determined
there was due cause for cancelling the decision by the JPO'sdecision. Hereafter the decision of the court on the JPO'sdecision will be described by focusing on claim 1 of theinvention of the patent.
Court's discussion:
The invention of claim 1 of the patent is a filter fora ventilating fan configured with a metal filter frame and afilter member formed with an unwoven fabric wherein the metal
filter frame and the filter member of the unwoven fabric areadhered by a soluble emulsion adhesive agent including a film
forming polymer.
The JPO invalidated the invention of claim 1 of the patentbecause the invention could be easily made based on theinvention described in the microfilm of Japanese application
for utility model registration No. S58-136320, hereinafter"Invention A" and the description in Japanese patentapplication as disclosed in publication No. H07-188632(Reference 2), and the well-known technique described inJapanese patent application as disclosed in publications Nos.
H11-129645, S51-48404 and 2000-126523 (References 3-5). The
invalidation decision determines that Invention A issubstantially a filter cover for a range hood comprising anunwoven fabric filter attached to a grating part of the filter
and the difference between the invention at issue and Invention
A lies in that the invention at issue had employed a soluble
emulsion adhesive agent including a film forming polymer while
Invention A does not use such an adhesive agent. However, it
was determined in the decision that the problem to be solvedin the patented invention was to enable easy separation of an
unwoven fabric filter element from a metal filter frame after
expiration of the ventilator filter and disposal was awell-known technical problem and an ordinary person skilled in
the art would have easily selected an adhesive with a solubleor swellable component. The rationality behind the decision
was that the JPO determined that the problem to be solved in
the patent at issue was that during the disposal process,separation of the unwoven fabric filter member from the metal
filter frame after expiration of the life of the filter was
well-known, reference 2 described an adhesive with soluble andswellable components which was similar to an adhesive as
multiple materials were attached to each other, and an ordinary
artisan could have been motivated to select the adhesive witha soluble/swellable component. As a result, the JPO concluded
that it was not difficult for an ordinary artisan to employ "asoluble emulsion adhesive including a film forming polymer" as
the adhesive in Invention A to facilitate separation of thefilter member from the filter frame upon disposal.
In this context, the court found that the decision of theJPO was improper because the decision did not provide arationale for the reason why the configuration of the abovedifference was easily perceived if a problem to be solved by
the invention at issue had been well-known.
Furthermore, the court has found additional references
3-5 do not suggest the above problem in that in ventilator fanswith a metal filter frame to which unwoven fabric filter isadhered with an adhesive agent so that while the frame and thefilter member are firmly fixed during normal use, the filtermember can be removed from the frame easily after use for easy
separation for enabling separate disposal of each material.
Therefore, the court has determined that an ordinary
person skilled in the art could not easily arrive at thedifference in configuration of the invention at issue fromInvention A through applying the inventions of references 2-5
to Invention A.
(671 words)