May 18, 2022

But Examiner, We Have a Different Point of View — A case Report onInventive Step
By Jiro Yasuhara
Edited by Masakazu Ito
MIYOSHI & MIYOSHI
Case info:
Intellectual Property High Court
Reiwa 1 (Gyo-Ke) Case No. 10159
Decision delivered on April 15, 2021
Plaintiff’s patent application (JP2014-220371) relates to an X-ray fluoroscopy
apparatus. The Patent Office rejected the claim as lacking inventive step.
The Court has now determined that the claim involves inventive step and rescinded thePatent Office’s decision of rejection.
BACKGROUND
Plaintiff’s inventive apparatus has essentially the same general structure and purpose asa conventional X-ray fluoroscopy apparatus, as illustrated in Figure 1 of the patentapplication. It is used during a surgery, by two persons (not including the patient!): asurgeon who performs the surgery, and an operator who operates the apparatus.

Imager 1 is movable at C-shaped arm 13 having X-ray source 21 and camera 32/33. The
operator moves imager 1 to direct the camera to the exact position of the patient’s body1

needing to be imaged. The surgeon performs the surgery while simultaneously
monitoring the X-ray image displayed on monitor 17 of monitor cart 2. The X-ray
image provides the surgeon with additional visual information that he cannot obtainwith the naked eyes. The same image is displayed on another monitor 10, present on
imager 1, so that the operator can see what the surgeon is seeing and adjust the cameraposition according to what the surgeon is wanting to see.
INVENTION
The problem with the conventional X-ray fluoroscopy apparatuses, as recognized by thepresent inventors, was the surgeon and the operator have different viewpoints. This isexplained in Figure 3.

Operator 44 generally stands on the opposite side of the patient, so surgeon 42’s righthand side is operator 44’s left-hand side, and vice versa. Moreover, operator 44 often
needs to shift his own standing positions and directions, as shown in the figure, in orderto properly manipulate imager arm 13. Therefore, the image displayed on monitor 10
can be quite non-intuitive for operator 44 considering the actual standpoint from which
he sees patient 41 at any given moment. This makes the operator’s job difficult.
The essence of the claimed invention is that the image displayed on monitor 10 isconfigured to be rotatable.
This is explained in Figure 6 (compare Figure 6 with Figure 3). Figure 6 (a) is the image
displayed on monitor 17 and seen by surgeon 42. When operator 44 stands in the first
position (drawn with solid lines in Figure 3), the operator may rotate the image
displayed on monitor 10 to appear like (b). When operator 44 stands in the second2

position (drawn with dashed lines in Figure 3), the operator may rotate the image
displayed on monitor 10 to appear like (c). Thus, the operator can monitor the sameimage as seen by the surgeon, but in an orientation that is more intuitive for the operator
himself. This makes his job (i.e., moving the camera-position for the surgeon) easier.
The image can be rotated electronically, or monitor 10 itself can be rotated manually.
PATENT OFFICE’S REJECTION
Patent Office cited two prior art documents, D1 and D2.
D1 (JP 2006-122448A) discloses a prototype (conventional) X-ray fluoroscopy
apparatus. D1 discloses monitors but not rotatable monitors.
D2 (JP 2009-022602A)) discloses an X-ray fluoroscope system in which the surgeon wears a Head-Mounted
Display (HMD). Figure 1 of D2 is shown below.

HMD 110 is a see-through glass and an X-ray image monitor at the same time.
Importantly, according to the disclosures of D2, the surgeon’s standing position isdetected by pressure sensor 111 in the floor, and the orientation of the X-ray image
displayed on HMD 110 is automatically changed according to his standing positions
sensed by pressure sensor 111. Figure 14 (a) to (c) show the surgeon’s different standing
positions relative to operating table 106 and the surgeon’s corresponding visions 301
through HMD including X-ray images 302.
Patent Office rejected the claim as lacking inventive step based on the combination ofD1 and D2, reasoning that D2 teaches to rotate the X-ray image based on the position of
the viewer so that the viewer’s naked-eye vision and the X-ray image are aligned in the3same orientation.
COURT’S JUDGEMENT- As stated in D2, the problem solved by the invention of D2 is to enable the surgeon toview a preferred X-ray image without help from another person.
- As a solution to the problem, D2 discloses rotating the X-ray image of the HMD basedon the information sent from the floor sensor detecting the surgeon’s standing positions.
- In contrast, the problem addressed by the present invention is that X-ray image which
is viewed by both surgeon and operator does not align with the operator’s point of view
since the operator looks at the patient from different positions/directions than thesurgeon does. This problem is not disclosed or suggested by D1 or D2.
- Patent Office erred by disregarding the facts that the rotated X-ray image of D2 is seenby the surgeon and that the rotation is based on the standing position of the surgeon, andas a consequence, Patent Office unfairly abstracted/expanded the D2’s disclosures.
COMMENTS
Defendant (Patent Office) submitted two Exhibits, among others, which were patentdocuments describing a surgical microscope system and a surgical endoscope system,
respectively, in each of which a first surgeon and an assistant surgeon view the same
microscopic or endoscopic image but displayed on different monitors, at least one of themonitors being invertible/rotatable according to the view-angle of the respective viewer.
Interestingly, the Court opined that the surgeon-operator pairs in the X-ray fluoroscope
surgeries are in different work dynamics than those seen between two surgeons, because
traditionally the operators of X-ray fluoroscope are reconciled to the auxiliary role andobediently follow the instructions from the surgeon to move the camera, without being
particularly conscious about their own inconveniences. The Court commented that thepresent invention can be regarded as significant in that it picked up the problem fromthe viewpoint of the apparatus operator who is not a surgeon. This case may illustratethat a particular workplace context in which the technology is practiced can influence
the determination of whether a claim involves inventive step.
This article is meant to provide a general introduction to the Japanese IP case in an easy-to-read format
for foreign audience. In translating the languages used by the laws, courts, patent office, patents, patentapplications, and any cited documents, literal accuracy may have been sacrificed in favor of ease ofreading and simplification. The original texts of the court’s decision discussed in this article are available
from the following link. https://www.ip.courts.go.jp/app/hanrei_jp/detail?id=5544

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