Patent

Date

August 30, 2021

Court

Right

Case

2020 (Gyo-Ke) 10044

Intellectual Property High
Court, First Division

number- A case in which with regard to a patent application related to an invention titled"Lipid-containing composition and use method," the court rescinded the JPO
Decision by finding that it contains errors in the determination concerning thedifference from the cited invention and in the determination as to whether thedifference could have been easily conceived of by a person skilled in the art.
Case type: Rescission of Appeal Decision of Refusal
Result: Granted
References: Article 29, paragraph (1), item (iii) and paragraph (2) of the Patent Act
Related rights, etc.: Patent Application No. 2014-99072
Decision of the JPO: Appeal against Examiner's Decision of Refusal No. 2016-5871
Summary of the Judgment
1. This case is a lawsuit seeking rescission of a decision made by the Japan Patent Office(the "JPO Decision") regarding a patent application related to an invention titled "Lipidcontaining composition and use method," that the claim for an appeal against theexaminer's decision of refusal was found to be groundless.
As the grounds for rescission, the Plaintiff alleged errors in the determination on
novelty and inventive steps in the invention for which Publication 5 is used as theprincipal cited document.
2. The court determined as outlined below and rescinded the JPO Decision by findingthat it contains errors in the determination concerning Difference 2 between theInvention in the Application and the Cited Invention (Publication 5 Invention) and in
the determination as to whether Difference 2 could have been easily conceived of by aperson skilled in the art.
(1) Error in the determination that Difference 2 is not a substantial difference
A. In light of the fact that the statement in Publication 5 "The recent dietary habits of
the Japanese are more westernized. …The fat intake has increased to 40g per day. In
conjunction with these changes, the types of diseases have also changed ... increased
and ... became a major social issue" is followed by the statement "However, as the study
progressed, the cause was found to be an imbalance in the intake of types of unsaturated
fatty acids that consist of fats" etc., it can be understood that Publication 5 does notstate that the fact that the fat intake increased to 40g per day is a problem nor does itisuggest the necessity to correct such situation.
In addition, looking at the statements in Publication 5 as a whole, there is nostatement or suggestion to the effect that withholding the fat intake up to 40g per day
is recommendable or that the "dose of omega-6 fatty acids" should be 40g per day or
per intake.
B. Even if it can be said that it is common general technical knowledge on health that"withholding the intake of a large amount of lipids" is recommendable, as stated in the
JPO Decision, the appropriate intake of lipids is considered to be changeable dependingon age, sex, energy intake, and other elements. Therefore, it is impossible to conclude
immediately from that fact that determining the "fat intake" to be no more than 40g per
day is common general technical knowledge, and it cannot also be said, on the premisethat this fact is common general technical knowledge, that determining the "dose ofomega-6 fatty acids" to be "no more than 40g" per day or per intake is common generaltechnical knowledge.
C. It cannot be found that Publication 5 has a substantial disclosure that the "dose ofomega-6 fatty acids" contained in Publication 5 Invention is to be no more than 40g(structure of the Invention in the Application related to Difference 2) even based oncommon general technical knowledge as stated in the JPO Decision, and it is found that
Difference 2 is a substantial difference.
(2) Error in the determination as to whether Difference 2 could have been easily
conceived of by a person skilled in the art
As stated above, Publication 5 has no statement or suggestion to the effect thatwithholding the fat intake up to 40g per day is recommendable and that the "dose ofomega-6 fatty acids" should be "no more than 40g" per day or per intake, and there isno evidence to find that determining the "dose of omega-6 fatty acids to be no morethan 40g" is common general technical knowledge. In light of the above, it cannot befound that a person skilled in the art who came across Publication 5 would have themotivation to adopt the structure of the Invention in the Application related to
Difference 2 in Publication 5 Invention. Therefore, it cannot be found that adopting the
aforementioned structure could have been easily conceived of by a person skilled in the
art.

ii

Judgment rendered on August 30, 2021
2020 (Gyo-Ke) 10044, Case of seeking rescission of the JPO decision
Date of conclusion of oral argument: July 20, 2021
Judgment
Plaintiff: Asha Nutrition Sciences, Inc.

Defendant: Commissioner of the Japan Patent Office

Main text
1. The decision made by the Japan Patent Office (JPO) on December 2, 2019,
concerning the case of appeal against Examiner's Decision of Refusal No. 2016 -5871
shall be rescinded.
2. The Defendant shall bear the court costs.
Facts and reasonsNo. 1 Claim
Same as paragraph 1 of the main text.
No. 2 Outline of the case
1. Outline of procedures at the JPO(1) A. The Plaintiff filed a new application for a patent (Patent Application No. 201499072; hereinafter referred to as the "Application") for an invention titled "Lipidcontaining composition and use method" on May 12, 2014 by dividing part of the patentapplication (Patent Application No. 2011-506377) for which the international
application date was April 20, 2009 (priority dates: April 21, 2008, June 25, 2008,
November 5, 2008, and April 17, 2009 (hereinafter collectively referred to as the"Priority Date"); priority country: United States) (Exhibit Ko 1).
Since the Application was refused as of December 17, 2015 (Exhibit Ko 5), thePlaintiff filed an appeal against the examiner's decision of refusal (Appeal against
Examiner's Decision of Refusal No. 2016-5871; Exhibit Ko 6) and made an amendmentof the claims (Exhibit Ko 7) on April 20, 2016.
The Plaintiff received a notice of grounds for refusal dated April 17, 2017 (Exhibit
Ko 12) and then made an amendment of the claims (Exhibit Ko 13) dated November 9,
2017.
1

B. Subsequently, the JPO made the decision that "the request for trial is groundless"(hereinafter referred to as the "Primary JPO Decision"; Exhibit Ko 15) on April 3, 2018.
On August 15, 2018, the Plaintiff filed a lawsuit seeking rescission of the Primary
JPO Decision (Intellectual Property High Court, 2018 (Gyo-Ke) 10117).
On April 12, 2019, the Intellectual Property High Court ruled that errors related tothe determination on the clarity requirements and support requirements,

out of thegrounds for the rescission alleged by the Plaintiff, were reasonable, and rendered a
judgment to rescind the Primary JPO Decision (hereinafter referred to as the "Judgmentin the Previous Lawsuit"; Exhibit Ko 16). The Judgment in the Previous Lawsuit later
became final and binding.
(2) Since the Judgment in the Previous Lawsuit became final and binding, the Plaintiff
received a notice of grounds for refusal dated May 28, 2019 (hereinafter referred to as
the "Notice of Grounds for Refusal"; Exhibit Ko 17) in the resumed Appeal against the
Examiner's Decision of Refusal No. 2016-5871 and made an amendment of the claims(hereinafter referred to as the "Amendment"; Exhibit Ko 18) dated September 4, 2019.
Subsequently, the JPO made the decision that "the request for the Appeal isgroundless" (hereinafter referred to as the "JPO Decision") on December 2, 201 9, anddelivered a certified copy thereof to the Plaintiff on December 18, 2019.
(3) The Plaintiff filed this lawsuit to seek rescission of the JPO Decision on April 15,
2020.
2. Statement of the claims
The claims after the Amendment consist of Claims 1 through 47 and the statementof Claim 19 is written as follows (hereinafter the invention related to Claim 19 isreferred to as the "Invention in the Application"; the underlined part is the part amended
by the Amendment; Exhibit Ko 18).
[Claim 19]
A lipid-containing compound that contains a mixture of lipids derived from different
sources, wherein the aforementioned compound contains a certain dose of omega -6
fatty acids and a dose of omega-3 fatty acids; the ratio of omega-6 and omega-3 is 4:1
or higher: and(i) omega-3 fatty acids are 0.1 to 20wt% of the total lipids in the aforementioned
compound;or(ii) a dose of omega-6 fatty acids is no more than 40g.
3. Summary of the grounds for the JPO Decision(1) Grounds for the JPO Decision are as stated in Attachment, "Written Decision2

(copy)".
The summary is as follows: the Invention in the Application is an invention statedin Unexamined Patent Application Publication No. 1991-53869, which is a publication
distributed prior to the Priority Date of the Application (hereinafter referred to as"Publication 5"; Exhibit Ko 24) (hereinafter the invention is referred to as "Publication
5 Invention") or an invention that can be invented by a person skilled in the art easily
based on Publication 5 Invention and common general technical knowledge at the timeof the Priority Date of the Application; therefore the Invention in the Application cannot
receive a patent pursuant to the provisions of Article 29, paragraph (1), item (iii) or
paragraph (2) of said Article of the Patent Act; accordingly, the Application should be
refused without the need to examine the remaining claims.
(2) Publication 5 Invention that was found by the JPO Decision and the common featureand differences between the Invention in the Application and Publication 5 Invention
are stated below.
A. Publication 5 Invention
A health drink composition which has efficacy in the prevention and improvementof cardiovascular diseases such as heart diseases, and breast cancer, colon cancer, andother diseases through an intake of a proper balance of omega-3 and omega-6 fatty
acids; wherein the ratio of omega-3 and omega-6 fatty acids in the contained lipids is
1:4; and which is created by generating a mixed oil by adding 300ppm antioxidant to
15g of oil that is obtained by concentrating omega-3 fatty acids from skipjack fish oil
and also by adding 35g of evening primrose oil; stirring 100g of beta-cyclodextrin after
adding 100mL of water to it, kneading it with a homogenizer after adding the mixed oil,cleaning it with ethanol, collecting precipitation, drying it under reduced pressure atroom temperature, and obtaining approximately 70g of cyclodextrin powder of themixed oil, and then adding the cyclodextrin powder to the health drink.
B. Common feature and differences between the Invention in the Application andPublication 5 Invention(Common feature)"A lipid-containing compound that contains a mixture of lipids derived fromdifferent sources, contains omega-6 fatty acids and omega-3 fatty acids, with a ratio ofomega-6 and omega-3 of 4:1 or higher."(Difference 1)
The Invention in the Application specifies that "the compound contains a certain
dose of omega-6 fatty acids and a dose of omega-3 fatty acids; the ratio of omega-6 andomega-3 is 4:1 or higher"; however, in Publication 5 Invention, "the ratio of omega -3
3and omega-6 in contained lipid is 1:4" and it does not specify the dose.
(Difference 2)
In the Invention in the Application, it is specified that "(i) omega-3 fatty acids are
0.1 to 20wt% of the total lipids in the aforementioned compound; or (ii) a dose ofomega-6 fatty acids is no more than 40g."; however, in Publication 5 Invention, theratio of omega-3 fatty acid composition in the total lipids or the dose of omega-6 fatty
acids are not specified.
(omitted)
No. 4 Judgment of this court
1. Statement in the description in question
There are the following statements in the description attached to the application
form of the Application (hereinafter referred to as the "Description"; Exhibit Ko 1) (forTables 1 and 9 that are cited in the following statements, see the Attachment).
(1) [Background art]
[0002]
Fatty acids fulfill an important physiological function. Fatty acids consti tute an
extremely important component of the constituent units and cell membrane ofphospholipids and glycolipids. Fatty acids are the best bio-fuel molecule with the ability
to produce more than double per 1g of energy than carbohydrates or proteins. Fatt yacids have an impact directly on the function of many proteins through covalentmodification of the proteins. Fatty acids have an impact on membrane fluidity andrelevant cellular processes. In addition, fatty acids are also involved in gene regulation.
For example, prostaglandin, thromboxane, leukotriene, lipoxin, resolvin, and otherderivatives of fatty acids are also important hormones and bio-messengers. These
hormones and messengers have an impact on a broad range of physiological functions,such as angiomegaly, platelet aggregation, pain control, inflammation, and cellproliferation, etc.
[0003]
Human and animal bodies synthesize many kinds of fatty acids, which are carbon
chains of various lengths with double bonds of various numbers and position s. If the
double bond joins in a fatty acid chain, the fatty acids are converted into unsaturated
fatty acids that fulfill a significant role in physiological function. One of the methods
for tracking the position of the double bond in the unsaturated fatt y acid molecule is bymeasuring its distance from the end carbon, which is omega-carbon. For example, oleic
4acid C18 that has a double bond with the 9th carbon from the omega position is calledomega-9 fatty acid. Table 1 below shows various groups of unsaturated fatty acids thatare named by the position of the double bond from the omega position.
[0004]As indicated in the table above, linoleic acid (hereinafter referred to as "LA") andalpha-linolenic acid (hereinafter referred to as "ALA") are precursors of all omega-6
fatty acids and omega-3 fatty acids. It has been fully established that LA and ALA are"essential" fatty acids. LA and ALA must be supplied by one's diet. The reason is
because human beings and other mammals cannot synthesize LA and ALA from othersources. When these two essential fatty acids are lacking or in excess, many diseases
may occur. It is well-known that LA and ALA share the same metabolic pathway andthat if one of them is in excess, the requirement of the other increases or it may cause alack of the other one. In the same way as LA and ALA, oleic acid and other specificfatty acids and specific saturated fatty acids are also considered to be important forhuman nutrition although they can be produced in the human body. The latest science
shows evidence that an optimal amount of nonessential fatty acids is beneficial;
however, if it is in excess, it may hinder the activity and metabolism of essential fatty
acids and the amount of dietary fat may also have an impact on the m etabolism of fatty
acids. It is well known that the human body metabolizes ALA preferentially dependingon the amount of other fatty acids in the diet.
[0005]
Based on the evidence, it shows that antioxidants, phytochemicals, microbes,
vitamins, minerals, and other dietary elements (proteins, carbohydrates, etc.), as well
as hormones and genes are involved in the metabolism of essential fatty acids. In
addition, based on the human study, it is confirmed that there may be differences in theability to metabolize essential fatty acids between men and women. It is suggested thata sex hormone has something to do with these differences. Polyunsaturated fatty acidmolecules have a zigzag structure with a double bond. Since these molecules haveflexibility and they are not tightly crowded, they remain in liquid form even at low
temperatures, and therefore they gather and give flexibility to the organization. For thisreason, in colder climates, the human body has more benefits in having a larger amountof polyunsaturated fatty acids. However, a greater number of double bonds in the lipid
molecules may increase association with several diseases, and the possibility ofgenerating peroxidation increases, which may accelerate aging. This is another reason
for the need to take polyunsaturated fatty acids carefully.
[0006]
5

Many studies presented evidence for prevention and treatment of medical conditions
using a supply of omega-3 fatty acids and recommended a decreased intake of omega6 fatty acids. Relevant medical conditions are menopausal disorder, cardiovasculardisease, mental disability, neuropathy, musculoskeletal disorder, endocrine disorder,
cancer, digestive system disorder, geriatric condition, viral infection, bacterial infection,
obesity, overweight, renal disease, lung disorder, ophthalmopathy, skin disorder, sleep
disorder, dental disease, and immune system disease such as autoimmunity, etc. For
example, Patent Document 1 demonstrated lipid compounds for patients with ulcerative
colitis that contain omega-3 fatty acids, omega-6 fatty acids, and omega-9 fatty acids.
The omega-3 fatty acid content in these lipid compounds was significantly high. In thesame way, Patent Document 2, which was recently published, disclosed lipid
compositions which are used for patients with diabetes and contain omega-3 fatty acids,
omega-6 fatty acids, and omega-9 fatty acids, with specific ratios of omega-6 andomega-3 between 0.25:1 to 3:1.
(2) [Problem to be solved by the invention][0008]
It has been traditionally emphasized that we should increase the intake of omega -3
fatty acids while decreasing the intake of omega-6 fatty acids, but this cannot be a
sufficient relief in many cases. This is because of the uncertainty that is caused bydietary and demographic elements. Therefore, improved methods and treatment for
medical conditions and prevention using improved lipid compositions are considered
to be still needed. In fact, on January 26, 2009, the American Heart Association issued
a recommendation for the first time to correct the recognition that omega-6 fatty acidis not good for health (http://mericanheart.mediaroom.com/index.php?s=43&item=650).
Since the current methodology confuses people who take these fatty acids, it may cause
overdoses or inadequate intake of definitely important nutrients, which may lead tomajor health results.
(3) [Means of solving the problem][0009]The disclosure in question (hereinafter referred to as the "Disclosure") is related to
a composition and method for prevention and/or treatment of medical conditions related
to imbalances of one or multiple lipids that are related to other elements. For moredetails, the Disclosure is related to the composition using more advantageous sourcesof omega-6 fatty acids in the presence of nutritionally appropriate omega-3 fatty acids
and related to the use of methods. Furthermore, the Disclosure is also related to themethod and composition of delivering everyday omega-6 and omega-3 for prevention
6and/or treatment of medical conditions related to imbalance of one or more lipids aswell as to deliver omega-6 fatty acids and omega-3 fatty acids along with other nutrientsthat optimize bioavailability. The Disclosure is also related to the method of stably
delivering bioactive substances whose broad and sudden variations are considered to beharmful, for one day, one week, one month, or for a longer period. In addition, theDisclosure is related to the method of delivering everyday essential fatty acids within
the optimal range concerning the recommendation.
[0010]
An overall and general embodiment in the Disclosure is a lipid-containing
composition for mammals containing an optimal amount of fatty acids, antioxidants,
minerals, and phytochemicals and it is a composition based on one or more elementsthat are selected from a group including the age, sex, diet, bodyweight, physical activity,
medical conditions, and climate of the living environment of the subjects. The
composition is administered to the subjects through a stable delivery process as
explained later, according to one embodiment in the Disclosure. According to anotherembodiment in the Disclosure, fatty acids, antioxidants, minerals, and phytochemicals
that are contained in the lipid of the composition can at least be partially achieved byusing one or more of the following high concentration lipid sources: oil, butter, nuts,
and seeds.
(4) [0022]
Lipid compound
According to one embodiment, the Disclosure incorporates a rather high ratio ofomega-6 fatty acids into omega-3 fatty acids, while maintaining an optimal delivery
amount per day of both omega-6 fatty acids and omega-3 fatty acids. One of the reasonsfor maintaining a high ratio is because the content of antioxidants, minerals, andphytochemicals is high as essential components of the compound and nuts, seeds, andnut oil with other characteristics that are considered to eliminate the use of excess
omega-3 fatty acids are incorporated. In some cases, excess omega-3 fatty acids (thathave three to six double bonds) cause peroxidative stress. A specific embodiment of theDisclosure is considered to facilitate in-vivo formation of linoleic acid metabolites,
gamma-linolenic acid (three double bonds) and dihomo-gamma-linolenic acid (threedouble bonds), which are considered to have dose-dependent anti-inflammatory
characteristics and other health benefits. Nuts and seeds have a limited therapeutic
range and may have undesirable interactions and other characteristics requiring carefuluse. Therefore, the compound is delivered with a measured and optimized amount ofnuts and seeds along with oils.
7[0037]Administration
In some embodiments, a composition containing a lipid compound that is disclosed
in the Description can be administered to individuals in an arbitrary form that can betaken orally. This lipid compound can be packed in one, two, three, four, or more pieces
that are a mutually complementary amount per day. In some embodiments, the lipid
compound may be contained in one or more of the following items in some cases, but
is not limited to these: capsule, soft gel capsule, hard capsule, t ablet, powder, lozenge,or pill for single doses or for sustained release and controlled release that are preparedwith starch, sugar, diluent, granulating agent, lubricant, bonding agent, disintegrating
agent, and other carriers; powder or granule; nutritious supplement bar; bread, dessert,
pastry, truffle, pudding or cake and other bakery products; sealed single dose sachet or
resealable package where liquid, oil-blend, gel, sauce, dressing, spread, butter, drop,and semisolid materials are contained; liquid, etc.; or frying oil, cooking oil for skillets,
release oil, and other cooking oils. In some embodiments, the lipid compound may beconsumed orally by unsealing the package or it may be added as part of cooking
ingredients to pre-cooked or non-cooked prepared food (fats do not have to be added).
For example, the lipid compound may be used as a special cooking oil, butter, or
dressing or may be added to foods while such foods are prepared. In a specificembodiment, some or all of the ingredients of the composition may be processed bypeeling and/or not peeling off the skin, by soaking and/or not soaking in advance, bysprouting and/or not sprouting, by cutting and/or not cutting, by dicing, chopping,
pureeing, smashing, blending, grilling, baking, roasting, sautéing, and/or cooking or notcooking, not processing, and/or in another arbitrary method. Ingredients of thecomposition may be delivered in part or multiple parts of the various component of adiet or in order to supplement a diet, for example. In some embodiments, the lipidcontaining composition may be delivered using gelatinous cases, vials, pouches, or foils
in order to contain the composition. In some embodiments, the lipid-containing
composition may be part of enteral or parenteral compounds or combinations thereof.
In some embodiments, a diet plan may be considered for one day, one week, two weeks,
every two weeks, every two months, or one month, which includes various lipid
compounds stated in the Description by changing the compound to be administered
every day.
[0041]
One form in the Disclosure is to deliver fatty acids in a method so that the total
delivery amount per day of omega-6 and omega-3 from the lipid compound and other8diets are optimal for the recommended amount per day.
(5) [0050](Embodiment Example 3)
Lipid compound based on age, sex, and diet
One form in the Disclosure is to deliver a lipid compound that is prepared based onage, sex, and diet of an individual human subject. Table 9 below shows the dose range(unit: g) of total fatty acid content, the range of the ratio between monounsaturated fatty
acids and polyunsaturated fatty acids and the range of the ratio between
monounsaturated fatty acids and saturated fatty acids, the range of content of omega-6
fatty acids (unit: g), the range of the ratio between omega-9 fatty acids and omega-6
fatty acids; the range of content of omega-3 fatty acids (unit: g), and the range of theratio between omega-6 fatty acids and omega-3 fatty acids, by sex and age group, forvegetarians or non-vegetarians who take a large amount of antioxidants and/or a large
amount of phytochemicals, which are disclosed by the embodiments in the Disclosure.
[0061](Embodiment Example 6)
Compound based on medical conditions
In various embodiments, the lipid composition stated in the Description isadministered to individuals for the prevention and/or treatment of diseases, disorders,or conditions. For example, the lipid compound is used to relieve the symptoms ofmenopause, which occurs in the process where menstruation stops. The lipid compoundis used also to relieve the symptoms of endocrine disorders.
[0077](Embodiment Example 12)
Case study of hypercholesterolemia and cardiovascular diseases
Most of the subject hosts took low-fat vegetarian food, taking olive oil (75% of
which is monounsaturated fat), 1g of fish oil dietary supplement every day, and 1g of
total essential fatty acid (EFA) dietary supplement every day, and contracted
hypercholesterolemia. As part of the treatment, the intake of fish oil and EFA dietary
supplement was discontinued. Next, subjects were administered dietary supplements oflipid composition for daily intake that are composed mainly of a combination ofvegetable oil, nuts, and seeds and contain 11g of omega-6 fatty acids and 1.2g of omega3 fatty acids. As a result of administration of this lipid composition, LDL decreased
from 160mg to 120mg. When omega-3 was increased to 1.8g, very low-level bloodpressure, 90/55mmHg was observed; however, blood pressure was normaliz ed to105/70mmHg with 11g of omega-6 fatty acids and 1.2g of omega-3 fatty acids. When9omega-3 was decreased from 1.8g to 1.2g per day, the subject suffered arrhythmia andthe arrhythmia was tranquilized in two to three weeks. However, when omega -3 wasfurther reduced to 0.5g per day, arrhythmia continued.
[0078]
Based on this case study, it was demonstrated that when vegetable oil, nuts, andseeds in which the ratio of omega-6 fatty acids and omega-3 fatty acids is approximately
9:1 are supplied, LDL cholesterol level (dyslipidemia related to atherosclerosis) i n
blood is considered to significantly decrease. Based on this case study, it was also
demonstrated that the lipid composition and the ratio stated in the Description isconsidered to be helpful in relieving high blood pressure and arrhythmia.
2. Grounds for Rescission 1 (error in the determination on novelty and inventive steps
in the Invention in the Application for which Publication 5 is used as the principal cited
document)(1) Statements in Publication 5
Publication 5 (Exhibit Ko 24) has the following statements.
A. "2. Claim
Food containing highly unsaturated fatty acids for which fatty acid composition in
the food in the Claim is adjusted so that the ratio of omega-3 fatty acids and omega-6
fatty acids is 1:1 to 1:5." (Column 1, line 4 through line 7)
B. "(Industrial applicability)
The Invention is related to foods containing highly unsaturated fatty acids."(Column 1, line 9 through line 11)
C. "(Prior art)
Highly unsaturated fatty acids have two representative systems: omega-3 fatty acids
and omega-6 fatty acids (omega refers to the number from the end of the methyl groupof fatty acids to the carbon with the first double bond).
Examples of omega-6 fatty acids are linoleic acid, gamma-linolenic acid, andarachidonic acid; and examples of omega-3 fatty acids are alpha-linolenic acid,eicosapentaenoic acid, docosahexaenoic acid, etc. Based on the analysis of the fatty
acid intake by Japanese people, it is strongly biased towards omega-6. This is because
omega-6 fatty acids are contained in bird and animal meats, egg products, milk products,
and vegetable oil, such as corn and sunflower oils, and they are essential to Japanese
meals.
Foods containing omega-3 fatty acids are soybeans and canola oil, etc. (8 to 10%),
Japanese basil, perilla, flaxseed oils, etc. Omega-3 fatty acids are also contained inmarine fishes, and seaweeds in large quantity. However, these foods were consumed
10

relatively well before but are not seen as often on our tables today.
None of these omega-3 and omega-6 fatty acids can be biosynthesized in the humanbody. They are not interconverted between both fatty acid systems, and the ratio ofomega-3 and omega-6 in the human body demonstrates the ratio in foods." (Column 1,line 12 through column 2, line 16)
D. "The recent dietary habits of the Japanese are more westernized. The opportunities
for having meals consisting mainly of meats have increased drastically. The fat intake
has increased to 40g per day. In conjunction with these changes, the types of diseases
have also changed. The number of cases of cardiovascular diseases, such as
hypertension and heart diseases, and breast cancer, colon cancer, etc. has increased andthese aspects have also been westernized and become a major social issue. The causeof these diseases was considered to be the excessive intake of fatty acids. However, as
the study progressed, the cause was found to be an imbalance in the intake of types of
unsaturated fatty acids that consist of fats. This imbalance was caused by an excess intype 2 prostaglandin, leukotriene, etc. that are produced from arachidonic acids, which
are omega-6 fatty acids that are contained in meats in large quantity and thereby thebalance with type 3 prostaglandin and leukotriene that are produced by omega-3 fatty
acids is lost.
In consideration of these dietary habits, capsuled health foods of oil in whicheicosapentaenoic acid is highly concentrated, eggs in which the content of
eicosapentaenoic acid and docosahexaenoic acid has been increased by feeding
chickens fish oil, and other foods enriched with omega-3 fatty acids have beendeveloped." (Column 2, line 17 through column 3, line 17)
E. "(Problem to be solved by the invention)
Overdose of omega-6 fatty acids encourages the production of type 2 prostaglandin
and leukotriene, such as PGF 2-alpha, TXA2, etc., causes platelet aggregation andvasoconstriction, and induces arteriosclerosis and thrombosis. However, on the other
hand, it was reported that omega-3 fatty acids inhibit these diseases, control the
carcinogenic rate of breast cancer and colon cancer (L.M. Brander & K.K. Carroll,
Lipids 21, 285 (1985); R.K. Karmali et. al., J. Natl. Cancer Inst., 73, 457 (1984)), anddecrease the metastatic potential of cancer cells (T. Hori et. al., Chem. Pharm. Bull., 35,3925 (1987)).
Prostaglandin, leukotriene, thromboxane, etc. that are induced from highly
unsaturated fatty acids are called autacoid. They are produced in the kidney, liver, bloodvessels, and other cells, and have antipyretic actions, platelet aggregation, inhibition ofplatelet aggregation, hypertension, drops in blood pressure, and other inconsistent11

actions. They balance each other and normally maintain biogenic homeostasis. However,when the balance is lost, thrombosis, myocardial infarction, hypertension, immunologic
disease (diabetes, asthma, psoriasis), allergic symptoms, etc. are manifested. Attention
must be paid not to take omega-3 fatty acids alone, but to take both omega-3 and omega6 fatty acids in a balanced manner.
However, as mentioned above, today's Japanese meals are biased towards an intakeof omega-6 fatty acids.
In order to correct this situation, there are foods and nutritional supplements inwhich omega-3 fatty acids, etc. are highly concentrated and added. However, if theseproducts are taken in excess, it leads adversely to an overdose of omega-3 fatty acids
and it may cause a new disease. As such, omega-3 and omega-6 fatty acids must be
taken in an appropriate ratio.
The Invention aims to provide foods in which the fatty acid composition of lipids isadjusted to an appropriate ratio so that omega-3 and omega-6 fatty acids can be
consumed in a balanced manner and the prevention and correction of theaforementioned diseases can be expected." (Column 3, line 18 through colum n 5, line
15)
F. "(Means of solving the problem)
Foods in the Invention are characterized by containing highly unsaturated fatty
acids for which fatty acid composition is adjusted so that the ratio of omega-3 fatty
acids and omega-6 fatty acids is 1:1 to 1:5.
Omega-3 fatty acids used in the Invention are highly unsaturated fatty acids
obtained from lipids derived from marine animals, such as sardine oil, skipjack oil,squid oil, cod liver oil, menhaden oil, etc. For example, docosahexaenoic acids,
eicosapentaenoic acids, alpha-linolenic acids, etc. are common; however, their sources
are not limited to seaweeds, microbes, animals, plants, etc. There is no problem withconcentrating these oils into highly-concentrated docosahexaenoic acids andeicosapentaenoic acids by means of physical, chemical, and biochemical methods. In
addition, alpha-linolenic acids, etc. are generally considered to be plant-based, but theirsources may be microbes, animals, etc. or anything. On the other hand, representative
examples of omega-6 fatty acids are linoleic acids, alpha-linolenic acids, and otherhighly unsaturated fatty acids, but their sources are not limited specifically and include
microbes, plants, and animals. In addition, food forms are not limited to the embodim ent
examples mentioned later.
Fatty acid composition of the foods in the Invention is adjusted so that the ratio ofomega-3 fatty acids and omega-6 fatty acids is 1:1 to 1:5. If the ratio is lower than this12range, this causes an excess of omega-3 fatty acids, and if the ratio is higher than thisrange, this causes an excess of omega-6 fatty acids. In both cases, it is not preferable
due to the intake imbalance of omega-3 and omega-6 fatty acids." (Column 5, line 16
through column 7, line 5)
G. "(Effects of the Invention)
Based on the Invention, it is possible to provide foods for which the ratio of omega 3 fatty acids and omega-6 fatty acids of lipids contained therein are adjusted to maintainan appropriate ratio, 1:1 to 1:5. Therefore, omega-3 and omega-6 fatty acids can betaken in a proper balance and effects for the prevention and improvement ofcardiovascular diseases, such as hypertension and heart diseases, and breast cancer,
colon cancer, and other diseases can be expected." (Column 7, line 6 through line 13)
H. "Embodiment Example 4(Health drinks)
300ppm of mixed tocopherols was added as antioxidants to 15g of oil (IV:190.2,
POV: 0.56, eicosapentaenoic acid: 6.3%, and docosahexaenoic acid: 26.9%) in whichomega-3 fatty acids were concentrated by wintering skipjack oil. In addition, 35g ofevening primrose oil (IV: 104, POV: 0.23, linoleic acid: 71.1%, and alpha-linolenic
acid: 10.0%) was added to create the mixed oil. 100g of beta-cyclodextrin was stirred
after adding 100mL of water, and then the aforementioned mixed oil was added and thebeta-cyclodextrin was kneaded with a homogenizer for approximately 25 minutes. It
was cleaned with ethanol twice and the precipitation was collected. The precipitation
was dried under reduced-pressure at room temperature and approximately 70g of
cyclodextrin powder of mixed oil was obtained. The cyclodextrin powder was added tothe health drinks with the composition indicated in the following table. Dispersion of
cyclodextrin powder into the health drinks was easy up to approximately 3%. In
addition, the ratio of omega-3 fatty acids and omega-6 fatty acids in the contained lipids
was approximately 1:4. The powder health drinks were stored in a refrigerator for
approximately 150 days; however, there was no big change to the taste.
Table: Composition of health drinks
NaCl

0.85g/L

KCl

0.35g/L

CaCl2

0.15g/L

MgCl2

0.15g/L

Citric acid

1.35g/L

Citric soda

1.10g/L

L-glutamic acid soda

0.05g/L
13

Glucose

20g/L

Sugar

20g/L

Fruit juice

30g/L" (Column 10, line 12 through column 12, line 3)(2) Error in the finding of the common feature and overlooking of differences
The Plaintiff alleged that Publication 5 has no disclosure on the point that the healthdrink in Embodiment Example 4 has a structure wherein "the ratio of omega -3 fatty
acids and omega-6 fatty acids in the contained lipids is 1:4"; the health drink stated in
Publication 5 is different from the Invention in the Application on the point that it does
not have the aforementioned structure; and therefore, it is an error that the JPO Decisionfound that the point of having the aforementioned structure is a common feature
between the Invention in the Application and Publication 5 Invention and the difference
was overlooked. Therefore, it is examined as follows.
A. According to the statement ((1) H. above) in Embodiment Example 4 in Publication
5, Publication 5 contains the statements that [i] antioxidants (300ppm of mixed
tocopherols) were added to 15g of "oil (IV:190.2, POV: 0.56, eicosapentaenoic acid:
6.3%, and docosahexaenoic acid: 26.9%) in which omega-3 fatty acids wereconcentrated by wintering skipjack oil" and 35g of "evening primrose oil (IV: 104, POV:
0.23, linoleic acid: 71.1%, and alpha-linolenic acid: 10.0%)" to create the "mixed oil"and that [ii] 100g of beta-cyclodextrin was stirred after adding 100mL of water, and theaforementioned "mixed oil" was added and the beta-cyclodextrin was kneaded with ahomogenizer for approximately 25 minutes; the beta-cyclodextrin was cleaned withethanol twice and the precipitation was collected; and the precipitation was dried under
reduced-pressure at room temperature and approximately 70g of cyclodextrin powderof the aforementioned "mixed oil" was obtained.
Also, Publication 5 further states following the aforementioned statements, "Thecyclodextrin powder was added to the health drinks with the composition indicated in
the following table. Dispersion of cyclodextrin powder into the health drinks was easy
up to approximately 3%. In addition, the ratio of omega-3 fatty acids and omega-6 fatty
acids in the contained lipids was approximately 1:4." According to these statements, thepart in the aforementioned statement "the ratio of omega-3 fatty acids and omega-6
fatty acids in the contained lipids was approximately 1:4." is understood to represent
that as a result of measurement of the lipid content of the "health drink" with thecomposition shown in the Table of Embodiment Example 4 to which cyclodextrin
powder of the aforementioned "mixed oil" was added, the ratio of omega-3 fatty acids
and omega-6 fatty acids was approximately 1:4. On the other hand, Publication 5 has
no statement concerning the measurement method of fatty acid composition; however,14

in "Reference 3.2 Fatty acid composition and quantitative method" in the "Standard
Methods for the Analysis of Fats, Oils and Related Materials Established by Japan Oil
Chemists' Society, 2003," issued in July 2003 (Exhibit Otsu 2), there is the following
statement, "There are cases where you need to know the fatty acid composition of oil
contained in the food and where you need to know the content of the specific fatty acids.
In the former case, extract lipids from the food, sample a specific amount, esterify it,
and measure it with gas chromatography. In the latter case, correctly sample a specificamount from the extracted lipids, correctly add internal standards to it, esterify it, andanalyze it with gas chromatography. Then, calculate the fatty acid amount based on therelationship between the ratio of peak areas and the ratio of weight of internal standards
and fatty acids." There are statements concerning a method of gas chromatographymeasurement after saponification, methyl esterification, or propyl esterification ofsamples and preparation of methyl ester solution or propyl ester solution respectively
in the sections of "General animal and plant oils" (Reference 3.2.1), "Oils containing
short-chain fatty acids" (Reference 3.2.2), "Oils containing highly unsaturated fatty
acids" (Reference 3.2.3), and the "Act on Japanese Agricultural Standards" (Reference
3.2.4). Based on these statements, it is found that, at the time of Priority Date of the
Application, it was common general technical knowledge that the gas chromatographymeasurement method existed as a standard for measurement of the fatty acidcomposition of lipids contained in food.
Based on the aforementioned common general technical knowledge, it can be said
that a person skilled in the art who came across Publication 5 would understand that thestatement in Publication 5, "the ratio of omega-3 fatty acids and omega-6 fatty acids inthe contained lipids was approximately 1:4." is the statement of the fact that, as a resultof measurement of the lipid content of the "health drink" with gas chromatography, theratio of omega-3 fatty acids and omega-6 fatty acids was approximately 1:4. Therefore,
it is found that Publication 5 has a disclosure that the health drink indicated in
Publication 5 has a structure wherein "the ratio of omega-3 and omega-6 fatty acids inthe contained lipids is 1:4."
B. On the other hand, the Plaintiff alleged as follows: [i] When the ratio of omega-3
fatty acids and omega-6 fatty acids is obtained according to the statement in
Embodiment Example 4 in Publication 5 based on the weight of fatty acids that is
calculated for skipjack oil and evening primrose oil that are raw materials of the healthdrink in Embodiment Example 4, the rate is "1:5.7" and is not consistent with thestatement in Publication 5, "the ratio of omega-3 fatty acids and omega-6 fatty acids inthe contained lipids was approximately 1:4." and therefore, Publication 5 does not15substantially disclose that the health drink in Embodiment Example 4 has the structure
wherein "the ratio of omega-3 fatty acids and omega-6 fatty acids in the contained lipids
is 1:4."; and [ii] for example, there is a method of using an improvement method of
BF3·MeOH method, NaOMe method, and HCl·MeOH method for the derivatization
method of fatty acids, which is a pretreatment of a measurement method using gas
chromatography; measurement values of omega-3 fatty acids vary depending on the
difference in the derivatization method (Exhibit Ko 36); it is obvious that this difference
in measurement values has a big impact on the ratio of omega-3 fatty acids and omega6 fatty acids; however, since Publication 5 has no statement of the fact that fatty acids
were measured and the measurement conditions (the use of gas chromatography andderivatization method of samples, etc.), it cannot be said that Publication 5 substantiallydiscloses that the health drink in Embodiment Example 4 has the structure wherein "theratio of omega-3 fatty acids and omega-6 fatty acids in the contained lipids is 1:4."
However, it is as stated in A. above that a person skilled in the art who came acrossPublication 5 would understand that the statement in Publication 5, "the ratio of omega3 fatty acids and omega-6 fatty acids in the contained lipids was approximately 1:4." isthe statement of the fact that, as a result of measurement of the lipid content of the"health drink" with gas chromatography, the ratio of omega-3 fatty acids and omega-6
fatty acids was approximately 1:4.
In addition, the aforementioned statement in Publication 5 shows the ratio of fatty
acids in the lipids contained in the "health drink" that was produced from the raw
material, the mixed oil, that is stated in Embodiment Example 4 through the processesof kneading with a homogenizer, cleaning, collecting precipitation, reduced-pressure
drying, etc., and it is obvious that fatty acid composition of the raw material, the mixedoil, may change during these processes. Therefore, even if the aforementioned ratio is
not consistent with the ratio of omega-3 fatty acids and omega-6 fatty acids in thecomposition (1:5.7) that is obtained based on the weight of the fatty acids that is
calculated for skipjack oil and evening primrose oil that are raw materials as alleged by
the Plaintiff, the aforementioned ratio cannot be said to be unnatural.
Furthermore, for example, there is a method of using an improvement method of
BF3·MeOH method, NaOMe method, and HCl·MeOH method for the derivatization
method of fatty acids, which is a pretreatment of a measurement method using gas
chromatography. Even if the measurement values of omega-3 fatty acids vary dependingon the difference in the derivatization method, that fact itself cannot be a basis fordenying that the aforementioned statement in Publication 5 is understood to be astatement that, as a result of measurement of the lipid content of the "health drink" with16

gas chromatography, the ratio of omega-3 fatty acids and omega-6 fatty acids wasapproximately 1:4.
Consequently, the aforementioned allegation of the Plaintiff cannot be adopted.
C. As mentioned above, since it is found that Publication 5 has a disclos ure that thehealth drink stated in Publication 5 has the structure wherein "the ratio of omega -3 fatty
acids and omega-6 fatty acids in the contained lipids is 1:4," there is no error that the
JPO Decision found the point of "containing omega-6 fatty acids and omega-3 fatty
acids and the ratio of omega-6 and omega-3 is 4:1 or higher" as a common feature
between the Invention in the Application and Publication 5 Invention.
Consequently, the allegation of the Plaintiff indicating an error in the finding o f thecommon feature and overlooking of differences in the JPO Decision is groundless.
(3) Error in the determination concerning Difference 2
The Plaintiff alleged concerning Difference 2 that [i] in consideration of thestatement in Publication 5 and common general technical knowledge on health to theeffect that withholding the intake of a large amount of lipids is recommendable, itcannot be considered to use a lipid-containing compound that contains omega-6 fatty
acids exceeding 40g as one "dose" and that "the dose of omega-6 fatty acids is to be no
more than 40g" (structure of the Invention in the Application related to Difference 2) isan obvious matter equivalent to be disclosed even though there is no relevant statementin Publication 5; therefore, it is an error that the JPO determined that Difference 2 is
not a substantial difference or that it is a technical matter that a person skilled in the art
can easily conceive of to determine the "dose of omega-6 fatty acids to be no more than40g" in Publication 5 Invention, irrespective of whether the meaning of "dose" is the"dose" per intake or the "dose" per day. Therefore, this point is examined in thefollowing.
A. (A) Publication 5 (Exhibit Ko 24) has the following statements: [i] As "prior art,""The recent dietary habits of the Japanese are more westernized. The opportunities forhaving meals consisting mainly of meats have increased drastically. The fat intake has
increased to 40g per day. In conjunction with these changes, the types of diseases havealso changed. The number of cases of cardiovascular diseases, such as hypertension andheart diseases, and breast cancer, colon cancer, etc. has increased and these aspects havealso been westernized and become a major social issue. The cause of these diseases wasconsidered to be excessive intake of fatty acids. However, as the study progressed, thecause was found to be an imbalance in the intake of types of unsaturated fatty acids thatconsist of fats. This imbalance was caused by an excess in type 2 prostaglandin,
leukotriene, etc. that are produced from arachidonic acids, which are omega -6 fatty
17

acids that are contained in meats in large quantity and thereby the balance with type 3
prostaglandin and leukotriene that are produced by omega-3 fatty acids is lost." ((1) D.
above); [ii] As "Problem to be solved by the invention," "Overdose of omega-6 fatty
acids encourages the production of type 2 prostaglandin and leukotriene, such as PGF 2 alpha, TXA2, etc., causes platelet aggregation and vasoconstriction, and induces
arteriosclerosis and thrombosis." However, on the other hand, it was reported thatomega-3 fatty acids inhibit these diseases, control the carcinogenic rate of breast cancer
and colon cancer (...), and decrease metastatic potential of cancer cells (...). Attention
must be paid not to take omega-3 fatty acids alone, but to take both omega-3 and omega6 fatty acids in a balanced manner. However, as mentioned above, today's Japanese
meals are biased towards an intake of omega-6 fatty acids. In order to correct thissituation, there are foods and nutritional supplements in which omega-3 fatty acids, etc.
are highly concentrated and added. However, if these products are taken in excess, itleads adversely to an overdose of omega-3 fatty acids and it may cause a new disease.
As such, omega-3 and omega-6 fatty acids must be taken in an appropriate ratio." "TheInvention aims to provide foods in which the fatty acid composition of lipids is adjusted
to an appropriate ratio so that omega-3 and omega-6 fatty acids can be consumed in abalanced manner and the prevention and correction of the aforementioned diseases canbe expected." ((1) E. above); [iii] as the "Means of solving the problem," "Foods in theInvention are characterized by containing highly unsaturated fatty acids for which fatty
acid composition is adjusted so that the ratio of omega-3 fatty acids and omega-6 fatty
acids is 1:1 to 1:5." "Fatty acid composition of the foods in the Invention is adjusted sothat the ratio of omega-3 fatty acids and omega-6 fatty acids is 1:1 to 1:5. If the ratio islower than this range, this causes an excess of omega-3 fatty acids, and if the ratio ishigher than this range, this causes an excess of omega-6 fatty acids. In both cases, it is
not preferable due to the intake imbalance of omega-3 and omega-6 fatty acids." ((1) F.
above); [iv] As "Effects of the Invention," "Based on the Invention, it is possible toprovide foods for which the ratio of omega-3 fatty acids and omega-6 fatty acids oflipids contained therein are adjusted to maintain an appropriate ratio, 1:1 to 1:5.
Therefore, omega-3 and omega-6 fatty acids can be taken in a proper balance and effects
for the prevention and improvement of cardiovascular diseases, such as hypertension
and heart diseases, and breast cancer, colon cancer, and other diseases can be expected."((1) G. above).
Based on these statements, it is found that Publication 5 disclosed the following
points: [i] concerning the technical meaning of foods containing highly unsaturated
fatty acids (the "Invention") that is stated in Publication 5, the causes of cardiovasc ular18diseases, such as hypertension and heart diseases, and breast cancer, colon cancer, andother diseases had been considered to be the "excessive intake" of fatty acids before,
but as the study progressed, it is found to be caused by an imbalanced intak e of typesof unsaturated fatty acids that consist of fats; and [ii] Japanese meals today are biased
toward an intake of omega-6 fatty acids and, in order to correct this situation("overdose" of omega-6 fatty acids), foods and nutritional supplements were developedby highly concentrating and adding omega-3 fatty acids, etc.; however, if these products
are taken in excess, it results in an "overdose" of omega-3 fatty acids and may cause a
new disease; therefore, it is necessary to take omega-3 and omega-6 fatty acids in an
appropriate ratio; consequently, the "Invention" aims to provide foods in which the fatty
acid composition of lipids is adjusted to be at an appropriate ratio so that omega -3 andomega-6 fatty acids can be taken in a proper balance and prevention and improvementof the aforementioned diseases can be expected; as the means of solving the problem,
it adopted a structure containing highly unsaturated fatty acids that is adjusted so thatthe fatty acid composition has the ratio of omega-3 fatty acids and omega-6 fatty acidsof 1:1 to 1:5 and thereby omega-3 and omega-6 fatty acids can be taken in a properbalance and the effects of prevention and improvement of cardiovascular diseases, suchas hypertension and heart diseases, and breast cancer, colon cancer, and other diseases
are expected. In addition, according to the statement in Publication 5 mentioned in (1)above, in light of the fact that Publication 5 states, by setting the range of theappropriate ratio (1:1 to 1:5) of omega-3 fatty acids and omega-6 fatty acids, that "If
the ratio is lower than this range, this causes an excess of omega-3 fatty acids, and if
the ratio is higher than this range, this causes an excess of omega-6 fatty acids." ((1) F.
above), the term "overdose" is used to express the condition where the intake balance(ratio) of omega-3 fatty acids and omega-6 fatty acids is lost. On the other hand, it isfound that when expressing the condition where the "intake amount" is large, the term
"excessive intake" is used and the term "overdose" is not used in relation to the "intake
amount."When examining the allegation of the Plaintiff based on the above, in light of thefact that the statement in Publication 5, "The recent dietary habits of the Japanese are
more westernized. The opportunities for having meals consisting mainly of meats haveincreased drastically. The fat intake has increased to 40g per day. In conjunction withthese changes, the types of diseases have also changed. The number of cases ofcardiovascular diseases, such as hypertension and heart diseases, and breast cancer,
colon cancer, etc. has increased and these aspects have also been westernized andbecome a major social issue." is followed by the statement "However, as the study
19

progressed, the cause was found to be an imbalance in the intake of types of unsaturated
fatty acids that consist of fats." etc., it is natural to understand that Publication 5 does
not state that the fact that the "fat intake" increased to "40g per day" is a problem nor
does it suggest the necessity to correct such situation.
In addition, looking at the statements in Publication 5 as a whole, there is nostatement or suggestion to the effect that withholding the fat intake up to 40g per day
is recommendable or that the "dose of omega-6 fatty acids" should be no more than 40g
per day or per intake.
(B) Next, even if it can be said that it is common general technical knowledge on healththat "withholding the intake of a large amount of lipids" is recommendable, as stated in
the JPO Decision, the appropriate intake of lipids is considered to be changeable
depending on age, sex, energy intake amount, and other elements. Therefore, it is
impossible to conclude immediately from that fact that the "fat intake" should be no
more than 40g per day is common general technical knowledge, and it cannot also be
said, on the premise that this fact is common general technical knowledge, that
determining the "dose of omega-6 fatty acids" to be "no more than 40g" per day or per
intake is common general technical knowledge. In this case, there is no other evidence
to find that determining the "dose of omega-6 fatty acids to be no more than 40g" iscommon general technical knowledge.
B. (A) Taking the findings in A. above together, it cannot be found that Publication 5
has a substantial disclosure concerning the statement that the "dose of omega-6 fatty
acids is to be no more than 40g," which is contained in Publication 5 Invention, evenbased on common general technical knowledge as stated in the JPO Decision.
Then, it is not found that Publication 5 Invention has the structure wherein the "doseof omega-6 fatty acids is no more than 40g" (structure of the Invention in the
Application related to Difference 2), and therefore, it is found that Differen ce 2 is a
substantial difference.
The JPO Decision that is different from the above is incorrect.
(B) Next, as it is found in A. above, Publication 5 has no statement or suggestion to theeffect that withholding the fat intake up to 40g per day is recommendable and that the"dose of omega-6 fatty acids" should be "no more than 40g" per day or per intake, andthere is no evidence to find that determining the "dose of omega-6 fatty acids to be no
more than 40g" is common general technical knowledge. In light of the above, it cannot
be found that a person skilled in the art who came across Publication 5 wo uld have themotivation to adopt the structure of the Invention in the Application related to
Difference 2 in Publication 5 Invention. Therefore, it cannot be found that adopting the20

aforementioned structure could have been easily conceived of by a person skilled in theart.
The JPO Decision that is different from the above is incorrect.
C. On the contrary, the Defendant alleged that [i] Publication 5 contains the statementsthat the intake of fat increased to 40g per day and that it is found to be a pro blem; since
Publication 5 Invention is an invention based on restriction of the excessive intake oflipids (fat) and with the technical idea to take omega-6 and omega-3 fatty acids in aproper balance, it is natural to withhold the intake of omega-6 fatty acids that are partof unsaturated fatty acids, which are part of lipids, and a person skilled in the art has astrong motivation to specify the intake as no more than 40g, which is found to be an
excessive intake of lipids as a whole; and [ii] in addition, lipid intake per day is also
generated from foods other than the health drink composition of Publication 5 Invention,and therefore setting the upper limit to be no more than 40g of omega-6 fatty acids per
day or per intake is a technical matter that a person skilled in the art can easily makeand a person skilled in the art can easily conceive of adopting the structure of theInvention in the Application related to Difference 2 in Publication 5 Invention.
However, as explained in A. (A) above, the statement in Publication 5 "The recent
dietary habits of the Japanese are more westernized. The opportunities for having meals
consisting mainly of meats have increased drastically. The fat intake has increased to
40g per day. In conjunction with these changes, the types of diseases have also changed.
The number of cases of cardiovascular diseases, such as hypertension and heart diseases,
and breast cancer, colon cancer, etc. has increased and these aspects have also been
westernized and become a major social issue." does not state that the fact that the "fatintake" increased to "40g per day" is a problem nor does it suggest the necessity tocorrect such situation.
In addition, looking at the statements in Publication 5 as a whole, there is nostatement or suggestion to the effect that withholding the fat intake up to 40g per day
is recommendable or that the "dose of omega-6 fatty acids" should be no more than 40g
per day or per intake.
Furthermore, in this case, there is no other evidence to find that determining the"dose of omega-6 fatty acids to be no more than 40g" is common general technicalknowledge.
Consequently, it cannot be found that a person skilled in the art who came acrossPublication 5 would have the motivation to adopt the structure of the Invention in the
Application related to Difference 2 in Publication 5 Invention, and therefore theaforementioned allegation of the Defendant cannot be adopted.
21

(4) Summary
As mentioned above, the JPO Decision has an error in the determination concerning
Difference 2, and therefore it cannot be found that the Invention in the Application is
the same invention as Publication 5 Invention and it cannot be found that a person
skilled in the art could have easily made the Invention in the Application bas ed on
Publication 5 Invention and common general technical knowledge.
Consequently, the Plaintiff's Grounds for Rescission 1 are well-grounded.
No. 5 Conclusion
As mentioned above, the Plaintiff's Grounds for Rescission 1 are well-grounded,and therefore the JPO Decision should be rescinded without the need to makedeterminations on the other remaining points.
Intellectual Property High Court, First Division
Presiding judge: OTAKA Ichiro
Judge: KOBAYASHI YasuhikoJudge: OGAWA Takatoshi

22

(Attachment)[Table 1]
Table 1. Outline of several types of fatty acids
Fatty acid name

General formula

Starting molecule forbiosynthesis

Omega-3

CH3-CH2 -CH=CH-R-COOH

Alpha-linolenic acid

Omega-6

CH3-(CH2)4-CH=CH-R-COOH

Linoleic acid

Omega-7

CH3-(CH2)5-CH=CH-R-COOH

Palmitoleic acid

Omega-9CH3-(CH2)7-CH=CH-R-COOH

Oleic acid

[Table 9]
Table 9. Dose of lipids based on age and sex of vegetarians and non-vegetarians whotake a large amount of antioxidants and phytochemicals

Infants
7 to 12 months
Children
1 to 3 years old
Men
4 to 8 years old
9 to 13 years old
14 to 18 years old
19 to 30 years old
31 to 50 years old
51 to 70 years old
Over 70 years old
Women
4 to 8 years old
9 to 13 years old
14 to 18 years old
19 to 30 years old
31 to 50 years old
Pregnancy
Lactation period
Menopause

Range oftotal fats(g)Range of theratio ofmonounsaturated
and
polyunsaturated
fatty acids

Range of theratio ofmonounsaturated
and saturated
fatty acids

Range ofomega-6(g)Range ofthe ratioofomega-9andomega-6

Range ofomega-3(g)Range ofthe ratioofomega-6
andomega-3

10-50

1:1-3:1

1:1-5:1

1-10

1:1-3:1

0.1-3

4:1-45:1

10-60

1:1-3:1

1:1-5:1

2-15

1:1-3:1

0.1-3

4:1-45:1

10-75
15-80
20-10020-100
20-80
15-80
15-80

1:1-3:1
1:1-3:1
1:1-3:1
1:1-3:1
1:1-3:1
1:1-3:1
1:1-3:1

1:1-5:1
1:1-5:1
1:1-5:1
1:1-5:1
1:1-5:1
1:1-5:1
1:1-5:1

2-25
2-30
2-35
2-40
2-40
2-30
2-30

1:1-3:1
1:1-3:1
1:1-3:1
1:1-3:1
1:1-3:1
1:1-3:1
1:1-3:1

0.1-4
0.1-4
0.2-5
0.2-5
0.2-5
0.2-5
0.2-5

4:1-45:1
4:1-45:1
4:1-45:1
4:1-45:1
4:1-45:1
4:1-45:1
4:1-45:1

12-70
15-80
20-80
20-80
15-80
24-10024-10015-80

1:1-3:1
1:1-3:1
1:1-3:1
1:1-3:1
1:1-3:1
1:1-3:1
1:1-3:1
1:1-3:1

1:1-5:1
1:1-5:1
1:1-5:1
1:1-5:1
1:1-5:1
1:1-5:1
1:1-5:1
1:1-5:1

2-25
2-25
2-30
2-30
2-30
2-35
2-35
2-30

1:1-3:1
1:1-3:1
1:1-3:1
1:1-3:1
1:1-3:1
1:1-3:1
1:1-3:1
1:1-3:1

0.1-3
0.1-3
0.2-4
0.2-4
0.2-4
0.2-5
0.2-5
0.2-4

4:1-45:1
4:1-45:1
4:1-45:1
4:1-45:1
4:1-45:1
4:1-45:1
4:1-45:1
4:1-45:1

23