2006 (Gyo-ke) 10563 Case of seeking rescission of the JPO decision of dismissal of
motion to invalidation of Patent
Rendition of judgment: May 30, 2008; Date of conclusion of oral argument: March 21,
2008
Judgment
Plaintiff: Tamura Kaken CorporationCounsel attorneys: NAKAJIMA Satoshi and ABE TakanoriCounsel patent attorney: AGATA Akira
Defendant: Taiyo Ink MFG, Co., Ltd
Counsel patent attorneys: SUZUE Takehiko, KONO Akira, NAKAMURA Makoto, and
HORIUCHI Mihoko
Sub-agent of a counsel patent attorney: OGA Masahiro
With regard to the abovementioned case between the parties mentioned above, thiscourt shall render the judgment as follows, based on the opinions heard from theCommissioner of the Japan Patent Office pursuant to Article 180-2 of the Patent Act.
Main Text
The plaintiff ’s claim is dismissed.
The plaintiff shall bear the court costs.
Facts and reasonsNo. 1 Judicial decision sought by the plaintiff
A judgment where “the court shall rescind the decision made by the Japan Patent
Office (JPO) on November 28, 2006 with regard to the case seeking invalidation of apatent No. 2005-80204.”No.2 Outline of the case
The plaintiff filed a request to the Japan Patent Office (JPO) for a trial for invalidationof a patent for the inventions defined by Claim 1 and Claim 22 included in the scope ofclaims in the description for the defendant’s patent mentioned in 1(1) below (hereinafterreferred to as the “Patent”) (provided, however, that the abovementioned description
shall be the description amended by the written amendment dated July 17, 1997;
hereinafter such description shall be referred to as the “Description”), and the JPO
made a decision to the effect that the Patent should be invalidated (hereinafter referred
to as the “Preceding JPO Decision”). Therefore, the defendant filed an action to seek
cancellation of the Preceding JPO Decision (hereinafter referred to as the “Preceding
Suit”). Subsequently, the defendant filed a request for a trial for correction, and the1Intellectual Property High Court made an order to cancel the Preceding JPO Decision.
In this case, the plaintiff seeks rescission of a JPO decision that approved thecorrections made by the defendant under a request, which was deemed to have been
made pursuant to Article 134-3, paragraph (5) of the current Patent Act (hereinafter
such corrections shall be referred to as the “Corrections”), and dismissed the request fora trial for invalidation (this JPO decision shall hereinafter be referred to as the “JPO
Decision”).
1. Circumstances of the procedures taken at the JPO and other relevant authorities(1) Patent (Exhibits Otsu No. 1 and No. 2)
Patentee: Defendant
Name of the inventions: “Photosensitive thermosetting resin composition and methodof forming solder resist pattern by use thereof”
Date of filing: November 30, 1987 (Japanese Patent Application No. SHO 62-299967)
Date of registration: November 14, 1997
Patent number: 2133267(2) Procedures for the trial for invalidation in question, etc.
Date of request for a trial: June 30, 2005 (Case seeking invalidation of Patent No.
2005-80204)
Date of the Preceding JPO Decision: November 29, 2005
Conclusion reached in the Preceding JPO Decision: “The patent for the inventions
stated in the scope of claims of the patent registered as Patent No. 2133267 shall be
invalidated.”
Date of filing the Preceding Suit: January 6, 2006 (2006 (Gyo-Ke) 10007)
Date of request for trial for correction: March 30, 2006
Date of decision to cancel the JPO Decision in the Preceding Suit: April 26, 2006
Date on which the Corrections were deemed to have been requested: July 5, 2006
Date of the JPO Decision: November 28, 2006
Conclusion reached in the JPO Decision: “The corrections are allowed. The request fora trial for invalidation in question is dismissed.”
Date of service of transcript of the JPO Decision: December 8, 2006 (to the plaintiff)
2. The inventions prior to the Corrections and the inventions after the Corrections,which were found by the JPO Decision
The JPO Decision found the inventions prior to the Corrections as stated in Claim 1
and Claim 22 included in the scope of claims in the Description (hereinafter theinvention stated in Claim 1 included in the scope of claims and the invention stated in
Claim 22 included in said scope of claims shall be referred to as “Initial Invention 1” and2

“Initial Invention 2,” respectively) to be the following inventions corrected through theCorrections (the underlined parts are the corrected portions; Claim 22 included in thescope of claims prior to the Corrections has been corrected to Claim 21 in connection
with the deletion of Claim 18 included therein; hereinafter the inventions stated in
Claim 1 and Claim 21 included in the scope of claims after the Corrections shall bereferred to as “Present Invention 1” and “Present Invention 2,” respectively, and bothinventions shall be collectively referred to as the “Present Inventions”).
“1 A photosensitive thermosetting resin composition, comprising,(A) a photosensitive prepolymer possessing at least two ethylenically unsaturated
bonds in the molecular unit thereof, which is one type or two or more types ofphotosensitive preploymer selected from one or more of the groups prescribed in (a), (b),or (c) below:(a) (a-1-1) a reaction product obtained by causing the secondary hydroxyl group of(a-1) a complete esterification product of the epoxy group produced by the esterification
reaction of a novolak type epoxy compound and an unsaturated monocarboxylic acid toreact with any one type or two or more types of saturated or unsaturated polybasic acidanhydride, such as phthalic acid, tetrahydrophthalic acid, hexahydrophthalic acid,maleicacid,

succinicacid,

itaconic

methylendomethylenetetrahydrophthalic

acid,

acid,

chlorendic

methyltetrahydrophthalic

acid,
acid,

trimellitic acid, pyromellitic acid, or benzophenonetetracarboxylic acid;(a-1-2) a reaction product obtained by causing the reaction product of a diisocyanate
and a (meth)acrylate possessing one hydroxyl group in the molecular unit thereof toreact with the secondary hydroxyl group of the abovementioned complete esterification
product (a-1);(a-2-1) a reaction product of a saturated or unsaturated polybasic acid anhydride andthe secondary hydroxyl group of (a-2), a partial esterification product of epoxy groupproduced by the esterification reaction of a novolak type epoxy compound and an
unsaturated monocarboxylic acid; and(a-2-2) a reaction product obtained by causing the reaction product of a diisocyanate
and a (meth)acrylate possessing one hydroxyl group in the molecular unit thereof toreact with the secondary hydroxyl group of the abovementioned partial esterification
product (a-2);(b) (b-1) a complete etherification product of epoxy group produced by the
etherification reaction of a novolak type epoxy compound and an unsaturated phenol
compound;(b-1-1) a reaction product of the secondary hydroxyl group of the abovementioned

3

complete etherification product (b-1) and a saturated or unsaturated polybasic acidanhydride;(b-1-2) a reaction product obtained by causing the reaction product of a diisocyanate
and a (meth)acrylate possessing one hydroxyl group in the molecular unit thereof toreact with the secondary hydroxyl group of the abovementioned complete etherification
product (b-1);(b-2) a partial etherification product of the epoxy group produced by the
etherification reaction of a novolak type epoxy compound and an unsaturated phenol
compound;(b-2-1) a reaction product of the secondary hydroxyl group of the abovementioned
partial etherification product (b-2) and a saturated or unsaturated polybasic acidanhydride; and(b-2-2) a reaction product obtained by causing the reaction product of a diisocyanate
and a (meth)acrylate possessing one hydroxyl group in the molecular unit thereof toreact with the secondary hydroxyl group of the abovementioned partial etherification
product (b-2); and(c) allyl compounds, such as (c-1) diallyl phthalate prepolymers and (c-2) diallyl
isophthalate prepolymers;(B) a photoinitiator;(C) a photopolymerizable vinyl monomer and/or an organic solvent as a diluent; and(D) a finely powdered epoxy compound possessing at least two epoxy groups in themolecular unit thereof and exhibiting sparing solubility in the abovementioned diluent
to be used, which is at least one epoxy compound in a solid or semi-solid state selectedfrom a group consisting of diglycidyl phthalate resin, heterocyclic epoxy resin, bixylenol
type resin, biphenol type epoxy resin, and tetraglycidylxy lenoylethane resin.
Provided that, a photosensitive thermosetting resin composition, comprising (A) “areaction product obtained by causing phthalic anhydride to react with the epoxy
acrylate obtained by causing a cresol novolak type epoxy resin to react with acrylic acid,(B) “2-methyl anthraquinone” and “dimethyl benzyl ketal” corresponding to a
photoinitiator, (C) “pentaerythritoltetraacrylate” and “cellosolve acetate,” and (D) amultifunctional epoxy resin (“TEPIC” manufactured by Nissan Chemical Industries,
Ltd.; Registered Trademark) which is “an epoxy compound possessing at least two epoxy
groups in the molecular unit thereof,” shall be excluded.”“21 A method of forming a solder resist pattern on a printed circuit board which ischaracterized by the processes of first applying a photosensitive thermosetting resin
composition comprising:4

(A) a photosensitive prepolymer possessing at least two ethylenically unsaturated
bonds in the molecular unit thereof, which is one type or two or more types ofphotosensitive prepolymers selected from one or more of the groups prescribed in (a), (b),or (c) below,”(a) (a-1-1) a reaction product obtained by causing the secondary hydroxyl group of(a-1) a complete esterification product of the epoxy group produced by the esterification
reaction of a novolak type epoxy compound and an unsaturated monocarboxylic acid toreact with any one type or two or more types of saturated or unsaturated polybasic acidanhydrides, such as phthalic acid, tetrahydrophthalic acid, hexahydrophthalic acid,maleicacid,

succinicacid,

itaconic

methylendomethylenetetrahydrophthalic

acid,

acid,

chlorendic

methyltetrahydrophthalic

acid,
acid,

trimellitic acid, pyromellitic acid, or benzophenonetetracarboxylic acid;(a-1-2) a reaction product obtained by causing the reaction product of a diisocyanate
and a (meth)acrylate possessing one hydroxyl group in the molecular unit thereof toreact with the secondary hydroxyl group of the abovementioned complete esterification
product (a-1);(a-2-1) a reaction product of a saturated or unsaturated polybasic acid anhydride andthe secondary hydroxyl group of (a-2), a partial esterification product of epoxy groupproduced by the esterification reaction of a novolak type epoxy compound and an
unsaturated monocarboxylic acid; and(a-2-2) a reaction product obtained by causing the reaction product of a diisocyanate
and a (meth)acrylate possessing one hydroxyl group in the molecular unit thereof toreact with the secondary hydroxyl group of the abovementioned partial esterification
product (a-2);(b) (b-1) a complete etherification product of epoxy group produced by the
etherification reaction of a novolak type epoxy compound and an unsaturated phenol
compound;(b-1-1) a reaction product of the secondary hydroxyl group of the abovementioned
complete etherification product (b-1) and a saturated or unsaturated polybasic acidanhydride;(b-1-2) a reaction product obtained by causing the reaction product of a diisocyanate
and a (meth)acrylate possessing one hydroxyl group in the molecular unit thereof toreact with the secondary hydroxyl group of the abovementioned complete etherification
products(b-1);(b-2) a partial etherification product of the epoxy group produced by the
etherification reaction of a novolak type epoxy compound and an unsaturated phenol

5compound;(b-2-1) a reaction product of the secondary hydroxyl group of the abovementioned
partial etherification product (b-2) and a saturated or unsaturated polybasic acidanhydride; and(b-2-2) a reaction product obtained by causing the reaction product of a diisocyanate
and a (meth)acrylate possessing one hydroxyl group in the molecular unit thereof toreact with the secondary hydroxyl group of the abovementioned partial etherification
product (b-2); and(c) allyl compounds, such as (c-1) diallyl phthalate prepolymers and (c-2) diallyl
isophthalate prepolymers;(B) a photoinitiator;(C) a photopolymerizable vinyl monomer and/or an organic solvent as a diluent; and(D) a finely powdered epoxy compound possessing at least two epoxy groups in themolecular unit thereof and exhibiting sparing solubility in the abovementioned diluent
to be used, which is at least one epoxy compound in a solid or semi-solid state selectedfrom a group consisting of diglycidyl phthalate resin, heterocyclic epoxy resin, bixylenol
type resin, biphenol type epoxy resin, and tetraglycidylxy lenoylethane resin; andoptionally,(E) a curing agent for epoxy resin,on the surface of said printed circuit board, and exposing the applied layer of said
composition selectively to an actinic ray through a photomask having a given pattern,developing the unexposed portion of the applied layer with a developing solution
thereby giving rise to a resist pattern, and thereafter thermosetting said finely
powdered epoxy compound by application of heat.
Provided that, a photosensitive thermosetting resin composition, comprising (A) “areaction product obtained by causing phthalic anhydride to react with epoxy acrylate
obtained by causing a cresol novolak type epoxy resin to react with acrylic acid,” (B)“2-methyl anthraquinone” and “dimethyl benxyl ketal” corresponding to a photoinitiator,(C) “pentaerythritol tetraacrylate” and “cellosolve acetate,” (D) a multifunctional epoxy
resin (“TEPIC” manufactured by Nissan Chemical Industries, Ltd.; Registered
Trademark) which is “an epoxy compound possessing at least two epoxy groups in themolecular unit thereof,” and (E) “2-ethyl-4-methylimidazole” shall be excluded from theabovementioned photosensitive thermosetting resin composition.” (Notes of thejudgment: According to the corrected description attached to the written request for a
trial for correction for the Patent (Exhibit Ko No. 11), the statements made in the JPO
Decision regarding the “Details of the Corrections” are found to be errors where the6portions “(E) ‘2-ethyl-4-methylimidazole’” and “from the abovementioned photosensitive
thermosetting resin composition” have been omitted.)
3. Gist of the reasons given in the JPO Decision
The JPO Decision, while finding the inventions prior to the Corrections to be identicalto the inventions stated in the description mentioned in (i) below (hereinafter referred
to as the “Prior Description”), approved the Corrections based on a determination that
the Corrections were made within the scope of matters stated in the description and forthe purpose of restricting the scope of claims or clarifying an ambiguous statement, andthat the Corrections did not substantially enlarge or alter the scope of claims. The JPO
Decision also determined that the Patent should not be invalidated for the following
reasons: (i) the Present Inventions would not have been easily conceived of by a person
ordinarily skilled in the art (hereinafter referred to as a “person skilled in the art”)
based on the invention disclosed in the publication mentioned in (ii) below (hereinafter
such invention shall be referred to as the “Invention Based on Exhibit Ko No. 3”); and(ii) according to the statements in the Description, the Present Inventions were notincomplete and the statements in the Description were not insufficient.
The reasons given in the JPO Decision are as cited in the following items (obvious
errors have been corrected). Among such reasons, “Correction 1” and “Correction 2”
have been made to replace the term “Initial Invention 1” with “Present Invention 1” andthe term “Initial Invention 2” with “Present Invention 2,” respectively. In addition, theexhibit number used in the JPO Decision is the same as that used in the principal
action.
(i)

The description originally attached to the application, Japanese Patent
Application No. SHO 62-114079, which was laid open as Japanese Patent
Publication No. SHO 63-278052 (Exhibit Ko No. 1)(ii)

Japanese Patent Publication No. SHO 61-243869 (Exhibit Ko No. 3)(1) Holdings of this court on the request for correction in question
A. Matters stated in the Prior Description“The matters stated in the Prior Description shall be stated based on its Japanese
Patent Publication No. SHO 63-278052 (Exhibit Ko No. 1).
(1) “1. A photosensitive film composition comprising (a) a reaction product obtainedby reacting an epoxy resin possessing at least two terminal (note: the kanji character for“terminal” is found to be an error) epoxy groups with an unsaturated carboxylic acidpossessing one ethylene bond at about 0.7 to 1.5 mol per one epoxy equivalent of said
epoxy resin, and then reacting the same with polybasic acid anhydride at 0.2 to 1 mol
per one epoxy equivalent of said epoxy resin, (b) an unsaturated compound possessing

7

at least two ethylene bonds and (c) a sensitizer.” (scope of claims)(2) “The present invention relates to a photosensitive film composition, and moreparticularly relates to a photosensitive epoxy resin film composition which shall be used
as a negative type photoresist in which the portion of this composition irradiated withultraviolet rays is cured and the unexposed portion (note: the Kanji character for theterm “unexposed” is found to be an error) can be removed by an aqueous alkali solution.
In the past, regarding negative type photosensitive film compositions which may be
used as a protective coat of etching resist, plating resist, or solder resist in the formationof printed wiring board, [...], strenuous efforts have been made in handling them.
The object of the present invention is to minimize the abovementioned risks andto provide a photosensitive film composition which is capable of obtaining a coating
property excelling in desirable resolution, flexibility, adhesion, chemical resistance andadhesion, and of forming a photosensitive film which can be developed by alkali water.”(line 15 in the lower left column to line 16 in the lower right column on page 1).
(3) “The feature of the photosensitive film composition of the inventions resides in
the composition of (a) a reaction product obtained by reacting an epoxy resin possessing
at least two terminal (note: the kanji character for term “terminal” is found to be anerror) epoxy groups with an unsaturated carboxylic acid possessing one ethylene bondat about 0.7 to 1.5 mol per one epoxy equivalent of said epoxy resin, and then reacting
the same with polybasic acid anhydride at 0.2 to 1 mol per one epoxy equivalent of said
epoxy resin, (b) an unsaturated compound possessing at least two ethylene bonds and(c) a sensitizer.” (line 17 in the lower right column on page 1 to line 5 in the upper left
column on page 2).
(4) The epoxy resin to be used in the present invention shall be a specificmultifunctional epoxy resin, such as the products of Yuka Shell Epoxy Kabushiki
Kaisha marketed under the registered trademark designation of “EPIKOTE”-828, [...],
those of Nihon Ciba-Geigy K.K. marketed under the registered trademark designationof “YL-931, 604,” those of Nissan Chemical Industries, Ltd., marketed under theregistered trademark designation of “TEPIC”, and those of the Celanese Corporation
marketed under the registered trademark designation of “EPI-REZ SU8.” (line 10 in thelower left column to line 3 in the upper right column on page 2).
(5) “The unsaturated carboxylic acid possessing one α, β-ethylene bond may beacrylic acid, methacrylic acid, crotonic acid, or cinnamic acid. The preferable
unsaturated carboxylic acid possessing ethylene bond to be used in the present
invention is acrylic acid.” (lines 4 to 8 in the upper right column on page 2).
(6) “The polybasic acid anhydride as described above may be maleic acid anhydride,8[…], acid phthalic anhydride, […]. The preferable polybasic acid anhydride to be used in
the inventions is diacid anhydride among the abovementioned examples (note: in theoriginal text, the Japanese term for “preferable” is found to be an error)” (line 8 in theupper right column to line 7 in the lower left column on page 2).
(7) “For the effective exploitation of the inventions, it is important that theunsaturated carboxylic acid possessing one ethylene bond be used in an amount of atleast 0.7 mol per one epoxy equivalent of an epoxy resin. […]. If an unsaturated
carboxylic acid possessing an ethylene bond is caused to react in an amount less than
the abovementioned amount, for example, in about 0.5 mol per one epoxy equivalent,
the reaction product obtained thereby would be very unstable and would gelate whencaused to react with polybasic acid anhydride. […]. Furthermore, to make the reaction
product obtained by the abovementioned method soluble by aqueous alkali solution,such reaction product shall be caused to react with polybasic acid anhydride at 0.2 to 1
mol, or preferably 0.3 to 0.7 mol per one epoxy equivalent. If the amount of polybasic
acid anhydride is less than 0.2 mol, solubilization by an aqueous alkali solution would
become difficult, but if it is more than 1.5 mol, the chemical resistance and electric
property of the film would be unfavorable.” (line 8 in the lower left column to line 9 in
the lower right column on page 2).
(8) “The unsaturated compound possessing at least two ethylene bonds to be used in
the inventions must react after being exposed to ultraviolet rays, and thus, should
contain a terminal ethylene group, and the composition shall be used in an amountsufficient enough to be exposed to light at a desired level. Such compound may include
an unsaturated polyol ester, […], pentaerythritol tetra (meth)acrylate, or […].
Examples of preferable unsaturated compounds possessing an ethylene bond arepolyethylene glycol diacrylate and trimethylol propane triacrylate. The relative amountof the abovementioned unsaturated compound is generally 0.5 to 50 % by weight, andpreferably 1 to 30 % by weight.” (line 18 in the lower right column on page 2 to line 15 in
the upper right column on page 3).
(9) “The composition obtained in the inventions further comprises a sensitizer. Thiskind of material is well known in many prior arts. Examples of such material can beothersubstitutedorunsubstituted

multinuclear

quinine,suchas

2-tert-butylanthraquinone, […], 2-methylanthraquinone, or […]>. Other examples ofthe sensitizer may be carbon tetrachloride, […], benzyl dimenthyl ketal, or […].” (line 14
in the lower right column on page 3 to line 20 in the upper left column on page 4).
(10) “With regard to the photoresist composition in the inventions, 3 to 50 % byweight or preferably 5 to 30 % by weight of the abovementioned epoxy resin, and 0.1 to

9

10 % by weight or preferably 0.1 to 5 % by weight of the epoxy curing agent may be used
so that the resist layer may withstand soldering temperature and be used as apermanent protective coating.” (lines 5 to 10 in the upper right column on page 4).
(11) “[…], 2-ethyl-4-methylimidazole, and […] may be used as the epoxy curing
agent.” (line 10 in the upper right column to line 5 in the lower left column on page 4).
(12) “Working Example 2
A compound composed of about 230 parts by weight of a cresol novolak typeepoxy resin (EOCN104) having an epoxy equivalent of about 230, 230 parts by weight ofcellosolve acetate (inert organic solvent), about 75 parts by weight of acrylic acid, about
2 parts by weight of hydroquinonemonomethyl ether, and about 2 parts by weight oftriethylamine as an esterification catalyst was heated and stirred for reaction at atemperature of about 80°C for 20 hours, and thereby obtaining an epoxy acrylate having
an acid value of about 12. Then, about 100 parts by weight of composition obtained byadding about 74 parts by weight of phthalic anhydride to the abovementioned
compound and stirring for reaction at about 80°C for two hours, were compounded with
5 parts by weight of pentaerythritol tetraacrylate, 10 parts by weight of multifunctional
epoxy resin (“TEPIC”), about 2 parts by weight of 2-methylanthraquinone, about one
part

by

weightofbenzyldimethyl

ketal,

and

0.5

parts

by

weightof2-ethyl-4-methylimidazole thereby obtaining the composition of the inventions. This
composition was then applied to one side of the copper clad laminate in a thickness of
0.01 to 0.02 mm by the method of curtain coating, heated and dried at about 60°C for 60
minutes, and then cooled at ambient temperature to a non-adhesion state. Furthermore,a negative film having a predetermined pattern was adhered onto the copper cladlaminate, and such copper clad laminate was exposed to and irradiated by an ultraviolet
layer with an intensity of 25mw/cm2 at a wavelength of 365nm for 10 seconds,
developed by a 1% soda aqueous solution, and then heated and cured by 150°C for 30
minutes to attach resistance to heat. The coating film obtained produced a 200 μm line
width pattern, and showed a resistance to soldering heat of 250°C for 60 seconds.” (line
7 in the upper right column to line 13 in the lower left column on page 5).
B. Comparison and holdings made with regard to the inventions stated in the Prior
Description“According to the matters stated in the Prior Description as mentioned above, it may
be found that the invention related to a photosensitive film composition in which (a) acomponent which is a reaction product obtained by causing the epoxy resin possessing
at least two terminal epoxy groups to react with an unsaturated carboxylic acidpossessing one ethylene unsaturated bond at a specific quantitative ratio and then10

reacting the same with a polybasic acid anhydride is mixed together with (b) acomponent which is an unsaturated compound possessing at least two ethylene bondsand (c) a component which is a sensitizer, with the objective of providing aphotosensitive coating composition capable of forming a photosensitive coating which
excelｓ in favorable resolution, flexibility, adhesion and chemical resistance and can be
developed by alkali water without using a large amount of organic solution.
On the other hand, with regard to Initial Invention 1, the Description states asfollows: “Accordingly, the object of this invention is to provide a photosensitive
thermosetting resin composition which suffers from none of the drawbacks mentioned
above, excels in both developing property and sensitivity, enables an exposed portion
thereof to withstand the developing solution, and enjoys a long pot life” (lines 37 to 40 inparagraph 9 on page 5 of the Japanese Examined Patent Publication in question) and“The salient feature of the photosensitive thermosetting resin composition of thepresent inventions resides in the fact that a “finely powdered” epoxy compound“exhibiting sparing solubility” in the diluent “to be used” is employed as a thermosetting
component. The finely powdered (fine particulate) epoxy compound, which is an
essential component, is sparingly soluble in the diluent to be used and is intended to be
used as dispersed in the finely powdered form, i.e., in the same manner as a filler. The
composition, therefore, is hardly corroded by the developing solution nor entails any
decline of sensitivity. Further, since the finely powdered epoxy compound in theunexposed portion is washed away by the developing solution during the course of thedevelopment, the composition excels in the developing property and can be developed ina shorter time. The subsequent application of heat makes the epoxy compound melt andthermoset by itself or copolymerizes it with the photosensitive prepolymer. As a result, asolder resist pattern for a printed circuit board possessing various highly desirable
properties can be produced.” (lines 29 to 43 in paragraph 12 on page 6 of the JapaneseExamined Patent Publication in question).
Based on the abovementioned statements, Initial Invention 1 and the invention
stated in the Prior Description belong to the same technical field in that they are both
related to a photosensitive thermosetting resin composition, but do not share the object
nor constituent features of the invention. Moreover, as the Prior Description contains nostatements on the requirements regarding component (D) of Initial Invention 1, i.e. to
use a finely powdered epoxy compound exhibiting sparing solubility in the diluent to be
used, it is obvious that the abovementioned two inventions do not correspond to eachother in every matter specifying the invention and the two inventions should beconsidered to be based on different technical ideas.

11

Yet, if, by any chance, the working examples or other portions in the Prior
Description state anything that corresponds to Initial Invention 1, an invention
identical to Initial Invention 1 may be found within the scope of such disclosure.
Accordingly, the matters stated in the Prior Description shall be examined from thisstandpoint.
Working Example 2 disclosed in the Prior Description states the following process:to obtain a composition by [a] obtaining epoxy acrylate by causing cresol novolak typeepoxy resin in a cellosolve acetate to react with acrylic acid, [b] obtaining a reaction
product by causing phthalic anhydride to react with the epoxy acrylate obtained in [a]above, and then mixing such reaction product with [c] pentaerythritol tetraacrylate, [d]multifunctional epoxy resin (“TEPIC”), [e] 2-methylanthraquinone and benzyl dimethyl
ketal.
According to this statement, the compound obtained in [a] above corresponds to thecomplete esterification product (a-1) or partial esterification product (a-2) of epoxy
group which can be obtained by the esterification reaction between the novolak typeepoxy compound and an unsaturated monocarboxlyic acid as mentioned in (a) of Initial
Invention 1, and the reaction product obtained in [b] above corresponds to thecomponents stated in (a-1-1) or (a-2-1) of Initial Invention 1. Consequently, this reaction
product corresponds to the photosensitive prepolymer as mentioned in component (A) of
Initial Invention 1.
Furthermore, while the 2-methylanthraquinone and benzyl dimethyl ketal asmentioned in [e] above correspond to the photoinitiator of component (B) of Initial
Invention 1, the pentaerythritol tetraacrylate as mentioned in [c] above and cellosolve
acetate as mentioned in [a] above corresponds to the photopolymerizable vinyl monomer
as used as a diluent of component (C) of Initial Invention 1 as well.
The statements in said Working Example 2 that the compound mentioned in [d]above shall further be mixed and then the composition prepared shall be exposed toultraviolet rays, developed and thermally cured, suggest that the said composition
corresponds to the photosensitive thermosetting resin composition described in Initial
Invention 1.
Accordingly, the comparison between the photosensitive thermosetting resin
composition stated in Working Example 2 disclosed in the Prior Description (hereinafterreferred to as the “Cited Invention 1”) and Initial Invention 1 leads to the finding thatthe two inventions correspond to each other in that they are both “a photosensitive
thermosetting resin composition comprising (A) a photosensitive preploymer possessing
at least two ethylenically unsaturated bonds in the molecular unit thereof which falls

12under (a-1-1) or (a-2-1), (B) a photoinitiator, (C) a photopolymerizable vinyl monomer
and/or an organic solvent as a diluent, and (D) an epoxy compound possessing at least
two epoxy groups in the molecular unit thereof,” but differ at least in the following
points.
Difference:With regard to the epoxy compound for component (D), while Initial Invention 1
states “a finely powdered epoxy compound exhibiting sparing solubility in theabovementioned diluent to be used, which is at least one epoxy compound in a solid orsemi-solid state selected from a group consisting of digylcidyl phthalate resin,heterocyclic epoxy resin, biphenol type epoxy resin, and tetraglycidylxy lenoylethane
resin,” a “multifunctional epoxy resin (“TEPIC”)” is used in the Cited Invention 1 withno limitations on such multifunctional epoxy resin to exhibit sparing solubility in thediluent to be used or to be fine particulates.
Thus, the abovementioned difference shall be examined.
The “multifunctional epoxy resin (“TEPIC”)” as used in the Cited Invention 1 can befound to be equivalent to the “products of Nissan Chemical Industry, Ltd., marketed
under the registered trademark designation of ‘TEPIC’” as stated in holdings (4) madewith regard to the Prior Description. Then, there is no choice but to consider such
“multifunctional epoxy resin (“TEPIC”)” to correspond to the “‘TEPIC’ manufactured by
Nissan Chemical Industries, Ltd.” stated as the “heterocyclic epoxy resin” in the
Description (see line 23 of paragraph 10 on page 10 of the Japanese Examined Patent
Publication No. 7-17737 (hereinafter simply referred to as the “Japanese Examined
Patent Publication”)).
Moreover, the “pentaerythritol tetraacrylate,” which is mixed simultaneously withthe “multifunctional epoxy resin (“TEPIC”)” in the Cited Invention 1, has actually been
mixed in as a diluent in combination with the “fine particulate ‘TEPIC’” in working
Example 5, which prescribes the specific embodiment of Initial Invention 1. Based on
this fact, it is apparent that the “multifunctional epoxy resin (“TEPIC”)” as used in theCited Invention 1 satisfies the requirement of being sparingly soluble in the diluent to
be used.
Finally, regarding the use of a fine particulate epoxy compound for component (D),the following statement is found in the Description: “The epoxy compound (D) is
prepared in a finely powdered form by the conventional procedure which comprises
simply pulverizing the abovementioned epoxy compound and/or further crushing anddispersing the epoxy compound in combination with other components of thecomposition, such as the abovementioned photosensitive prepolymer (A), in a kneader

13such as, for example, a roll mill. The epoxy compound can be used either singly or in theform of a mixture consisting of two or more types. […]. Suitably, the particle size of thefinely powdered epoxy compound is not more than 50 μm, preferably not more than 30
μm. If the particle size exceeds 50 μm, the composition while being applied by the screen
printing mentioned above displays a poor ability to permeate the screen and the
produced coating tends to form pinholes in the surface thereof and, even when theapplication is effected by some other method, the applied coating acquires a coarse
surface.” (see lines 29 to 44 in paragraph 10 on page 10 of the Japanese Examined
Patent Publication).
Based on this statement, Initial Invention 1 can be found to have not only contained
the aspect of mixing component (D) prepared in a finely powdered form by
pre-pulverization with other components of the composition, but also the aspect ofmaking component (D) that has not been pulverized satisfy the requirement of being “ina finely powdered form” by appropriate methods, such as by kneading, at the stage after
component (D) has been preliminary mixed with other components of the composition.
In fact, in the working example disclosed in the Description, component (D) before being
pre-mixed with other components is not only “in a finely powdered form” but also in a
“graniform,” and a photosensitive thermosetting resin composition having a desiredparticle size is prepared by the kneading treatments made at the stage after the
preliminary mixture mentioned above.
On the other hand, the Prior Description states that “[…] were mixed with […], andthereby obtaining the composition of this invention. This composition was then applied
to one side of the copper clad laminate in a thickness of 0.01 to 0.02 mm by the methodof curtain coating.” Although this statement lacks the specific operations to be madeafter the preliminary mixture, it may be found that a film of a photosensitive
thermosetting resin composition prior to curing has been obtained at a thickness within
the range of 0.01 to 0.02 mm, i.e. 10 to 20 μm, in the prior invention.
Then, it is appropriate to construe that the particle size of the granular component
included in the photosensitive thermosetting resin composition which forms such film
would be smaller than the particle size of component (D) as well as said thickness, andtherefore, component (D) of Cited Invention 1 must be “in a finely powdered form.”
Accordingly, Initial Invention 1 is identical to the Cited Invention 1.
Next, Initial Invention 2 shall be examined.
Initial Invention 2 is a method of forming a solder resist pattern on a printed circuitboard which is characterized by the processes of first applying on the surface of a
printed circuit board a photosensitive thermosetting resin composition mentioned in

14

Initial Invention 1, which contains a curing agent for epoxy resin as needed, exposing
the applied layer of said composition selectively to an actinic ray through a photomask
having a given pattern, developing the unexposed portion of the applied layer with adeveloping solution thereby giving rise to a resist pattern, and thereafter thermosetting
said finely powdered epoxy compound by application of heat.
As mentioned above, Working Example 2 disclosed in the Prior Description contains,in addition to the statement of a photosensitive thermosetting resin composition
identical to that of Initial Invention 1, the statements of the processes of addition of
2-ethyl-4-methylimidazole as a curing agent for epoxy resin, application of the relevant
photosensitive thermosetting resin composition to one side of the copper clad laminate,adhesion of a negative film in a given pattern, irradiation by and exposure to ultraviolet
rays, development by soda aqueous solution, heating and curing, and reproducing of
patterns. These processes can be considered to be the method of forming a solder resist
pattern on a printed circuit board as prescribed in Initial Invention 2 (hereinafter suchprocesses shall be referred to as the “Cited Invention 2”).
Accordingly, Initial Invention 2 is identical to Cited Invention 2 for the same reason
as that for Initial Invention 1.”
C. Examination of the allegation made by the plaintiff in this case regarding therequest for Corrections (which was an allegation that the Corrections have notsubstantially restricted the scope of claim as they have not excluded the same
compounds as “TEPIC” which are procurable from other source)“As mentioned above […], Initial Inventions 1 and 2 and the inventions stated in the
Prior Description are originally based on different technical ideas, and thus, the Cited
Inventions should be understood based on the statements made in Working Example 2
disclosed in the Prior Description, and “the inventions stated in the Prior Description”
should not be identified apart from the statement in said Working Example.
Although the Prior Description exemplifies “the products of Nihon Ciba-Geigy K.K.
marketed under the registered trademark designation of ‘YL-931, 604,’ those of Nissan
Chemical Industries, Ltd., marketed under the registered trademark designation of‘TEPIC,’ and the products of Celanese Corporation marketed under the registeredtrademark designation of ‘EPI-REZ SU8’” as the “specific multifunctional epoxy resin,”which is the possible type of epoxy resin for mixture, no statements are made on“ARALDITE PT810” nor are there any statements or suggestions on the use of epoxy
compound sparingly soluble in the diluent as said “specific multifunctional epoxy resin.”Moreover, it cannot be considered that the mere fact that the relevant compositions
share the same chemical formula leads to the expectation of equivalent results at all

15

times for several properties including, the purity, form of a particle, and solubility invarious solvents, regardless of the manufacture and/or distribution source.
Accordingly, as long as there is no lead on the use of “ARALDITE PT810” in the
Prior Description, it cannot be considered that a composition prepared by using“ARALDITE PT810” as a substitute for “TEPIC” is stated.
D. Purpose of the corrections, satisfaction of the requirement of the corrections to bemade within the original scope of claims, and existence of enlargement and/or alteration“As examined above […], Corrections (1) and (2) have been made to exclude only thecompositions that were disclosed in Working Example 2 stated in the description
attached to the prior application (Japanese Patent Application No. SHO 62-114079 (seeJapanese Patent Publication No. SHO 63-278052)) which was cited in the trial forinvalidation of the patent prior to remand, and that are identical to the inventions
stated in Claim 1 and Claim 22 included in the scope of claims prior to the Corrections,from the photosensitive thermosetting resin composition stated in said Claim 1 andClaim 22 (claims revised by such Corrections are generally referred to as a “disclaimer”).
Thus, such Corrections can exceptionally be treated as being made within the scope ofmatters stated in the Description, and are intended /to restrict the scope of claims.
Correction (3) clarifies that the optional and additional or selective matters statedin Claim 22 included in the scope of claims prior to the Corrections are essential mattersto specify the inventions, and thus, is intended to clarify ambiguous statements.
Correction (4) deletes the elements of alternative statement made in Claim 19
included in the scope of claims prior to the Corrections, and thus is intended to restrict
the scope of claims.
Correction (5) deletes a claim in response to the grounds for invalidation given inanother trial for invalidation of a patent which is pending (Invalidation Case No.
2005-80200), and thus is intended to restrict the scope of claims.
Correction (6) coordinates the statements for the scope of claims in accordance with
Correction (5), and thus is intended to clarify ambiguous statements.
Any of the Corrections (1) to (6) mentioned above can be found to be corrections
made within the scope of matters stated in the description and do not substantiallyenlarge or alter the scope of claims.”(2) Determinations made in regard to the Present Inventions
A. Regarding Ground 1 (which is an allegation that the Inventions are identical to theinventions stated in the Prior Description)“As pointed out above […], the inventions in whole stated in the Prior Description
and Initial Inventions 1 and 2 are based on different technical ideas, and this16

relationship can naturally be found between Present Invention 1 and Present Invention
2. Nevertheless, as there are no statements or suggestions on the constituent features ofPresent Inventions 1 and 2 in the Prior Description, no Cited Inventions to be comparedwith Present Inventions 1 and 2 can be identified regardless of such features.
As mentioned above […], the Correction has resulted in the exclusion of inventions
stated in Working Example 2 disclosed in the Prior Description (Cited Inventions 1 and
2) which were overlapping with Initial Inventions 1 and 2 by chance, from such Initial
Inventions, and thus, the provision of Article 29-2 of the Patent Act (note of thejudgment: see pages 41 and 65 below for the provision to be applied) can no longer beapplied to Present Inventions 1 and 2, which are inventions after the Corrections havebeen made.”
B. Regarding Ground 2 (which is an allegation that the Inventions could be easily
invented by a person skilled in the art based on the Invention Based on Exhibit Ko No.
3)(A) Matters stated in Exhibit Ko No. 3“The following matters are stated in Exhibit Ko No. 3 (Japanese Patent Publication
No. SHO 61-243869), which is a publication distributed within Japan prior to the filingof the application in question.
(1) “1. A photosetting liquid resist ink composition comprising (A) a resin curablewith an activated energy ray, obtained by the reaction of a saturated or unsaturated
polybasic acid anhydride with a reaction product obtained from a reaction of a novolak
type epoxy compound and an unsaturated monocarboxylic acid; (B) photopolymerization
initiator; and (C) a diluent, which is capable of being developed by dilute alkali
solution.” (scope of claims)(2) “The present invention relates to a novel and useful resist ink composition, andmore particularly relates to a liquid resist ink composition comprising a specific resin
curable with an activated energy ray having a novolak type resin skeleton (note: theKanji character for the term “skeleton” has been found to be an error), a photoinitiator,and diluent as its essential components, which excels in photosetting properties, heat
resistance, solvent resistance and acid resistance, etc., is particularly suitable for the
production of consumer-use printed circuit boards and industrial use printed circuitboard, and is capable of being developed by dilute alkaline aqueous solution.” (line 13 in
the lower right column on page 1 to line 1 in the upper left column on page 2).
(3) “The resin curable with an activated energy ray (A) as mentioned above can beobtained by causing the reaction product of a novolak type epoxy compound and an
unsaturated monocarboxlyic acid as mentioned below to react with diacid anhydride,17

such as phthalic anhydride, or with aromatic polycarboxylic anhydride, such as
trimellitic anhydride and pyromellitic anhydride.” (lines 13 to 19 in the lower left
column on page 2).
(4) “Typical examples of novolak type epoxy compounds include phenol novolak typeepoxy resin and cresol novolak type epoxy resin, and a compound which can be obtainedby causing each novolak resin to react with epichlorohydrin by a conventional procedurecan be used.” (line 17 in the lower right column on page 2 to line 2 in the upper left
column on page 3).
(5) “Typical examples of unsaturated monocarboxylic acids include acrylic acid,methacrylic acid, crotonic acid, and cinnamic acid, but acrylic acid is particularly
preferable.” (lines 3 to 6 in the upper left column on page 3).
(6) “Typical examples for the acidic anhydride as mentioned above include diacid
anhydride, such as maleic anhydride, succinic anhydride, and […], and a polycarboxylic
anhydride derivative, such as […] can be used.” (line 7 in the upper left column to line 2
in the upper right column on page 3).
(7) “As for the abovementioned photopolymerization initiator (B), typical examples
thereof include ketals, such as bezoin, […], acetophenone dimethyl ketal, and benzyl
dimethyl ketal, or benzophenones, such as benzophenone, or xanthones. Such
photopolymerization initiator (B) can be used in combination with one type or two or
more types of well-known conventional photopolymerization accelerators of benzoic acidsystems and tertiary amine systems.” (line 3 in the upper right column to line 5 in thelower left column on page 3).
(8) “As the diluent (C) mentioned above, a photopolymerizable monomer and/or an
organic

solvent

water-soluble

can

be

used.

Typicalmonomers,

such

as

photopolymerizable

2-hydroxyethyl

acrylate,monomers[…]

include(C-1);

andwater-insoluble monomers, such as diethylene glycol diacrylate, […], or mono-, di-, trior polyesters of polybasic acids with hydroxylalkyl(metha)acrylate (C-2).
Examples of organic solvents (C-3) include ketones, such as methyl ethyl ketone,
cyclohexanone, and acetic esters, such as […], cellosolve acetate, butyl cellosolve acetate,carbitol acetate and butyl carbital acetate.” (line 10 in the lower left column on page 3 toline 15 in the upper left column on page 4).
(9) “The photosetting liquid resist ink composition of the present invention obtained
as described above may further incorporate therein, as occasion demands, a well-known
conventional filler, such as barium sulfate, silicon oxide, and […], or a well-known
conventional

polymerization

inhibitor,

such

as

hydroquinone,hydroquinone

monomethyl ether, pyrogallo, tertiary butyl ether, and phenothiazine, may be added as18

appropriate. Further, the combined use of a small amount of epoxy compoundcontaining two or more epoxy groups in the molecular unit thereof (e.g. bisphenol A typeepoxy resin, bisphenol F type epoxy resin, bisphenol S type epoxy resin, phenol novolak
type epoxy resin, cresol novolak type epoxy resin, N-glycidl type epoxy resin, or alicyclic
epoxy resin) and epoxy curing agents (e.g. amine compounds, imidazole compounds,
carboxylic acids, phenols, quarternary ammonium salt, or methylol group-containing
compound) and application of heat to the layer at a later time lead to the improvementof various properties of the composition of the inventions, such as heat resistance,
solvent resistance, acid resistance, plating resistance, adhesion, electric properties, andsolidity, through the promotion of polymerization of the photosetting component andfacilitation of copolymerization” (line 2 in the lower left column to line 7 in the lower
right column on page 4).
(10) “Working Example 4
On a product of the reaction of one equivalent weight of cresol type epoxy resin
having an epoxy equivalent weight of 217 and possessing an average of seven phenol
ring residues in the molecular unit thereof on average and an epoxy group with 1.05
equivalent weight of acrylic acid, 0.95 equivalent of tetra hydro phthalic anhydride wascaused to react by the conventional method. The product of the reaction was diluted
with cellosolve acetate to an involatile content of 70%. The diluted product will bereferred to as “resin (A-3).”Component (a)Resin (A-3)

50.0 parts

Trimethylol propane triacrylate

4.0 parts

Pentaerythritol triacrylate

4.0 parts

2-methyl anthraquinone

3.0 parts

2-dimethylaminoethyl benzoate

2.0 parts

2-phenyl-4-benzyl-5-hydroxymethylimidazole

0.5 part“AC-300”

1.0 part

Phthalocyanine green

0.5 part

Calcium carbonate

10.0 parts

Total of component (a)75.0 parts

Component (b)“Epiclon EXA-1514” (Bisphenol S type epoxy resin manufactured by Dainippon Ink andChemicals, Inc.)

10.0 parts

Trimethylolpropane triglycidl ether

4.0 parts

Cellosolve acetate

6.0 parts

19

Calcium carbonate

5.0 parts

Total of component (b)25.0 parts

An ink was prepared by kneading the abovementioned component (a) andcomponent (b) separately by a test roll (roll mill).
Then component (a) and component (b) were mixed. The resulting mixture wasapplied by the screen printing method on the entire surface of a copper clad laminate
and of a printed circuit board having a stated pattern formed thereon by etching in
advance, and then dried in a hot air circulation type drier oven at 70°C for 30 minutes to
produce test pieces. The test piece obtained by applying the relevant ink on the copper
clad laminate and the test piece obtained by applying the relevant ink on the printed
circuit board having a stated pattern formed by etching in advance shall be referred toas “4-E” and “4-S,” respectively.” (line 3 in the upper left column to line 3 in the lower
left column on page 6).
(11) “Test Examples 1 to 3 (photosetting property, developing property, and dryness
by finger touch)On each of the test pieces, 1-E through 7-E, and comparative test pieces, 1-E
through 4-E, that were produced in the abovementioned Working Examples 1 through 8
and the Comparative Examples 1 through 4, respectively, a resist pattern film adhered
onto a glass was placed through the medium of a spacer 0.5 mm in thickness, so as to be
kept untouched, and was irradiated for a varying period of time with the light from aparallel exposure device with a luminous intensity of 10 mw/cm2 ([...], manufactured by
ORC Manufacturing Co., Ltd.) to test the photosetting properties. The resist patternfilm, after being cured by the exposure, was developed using an aqueous 1% sodium
carbonate solution as a developing solution to test for the developing property. The
results are collectively shown in Table 1.
.[...]The test pieces produced in Working Examples 4 through 7 and Comparative
Examples 3 and 4 were tested for dryness by finger touch. On each of these test pieces, aresist film was directly adhered, then irradiated for a varying period of time with thelight, and tested for photosetting properties and developing property. The results arealso shown in Table 1.” (line 7 in the upper right column to line 6 in the lower left
column on page 8).
(B) Comparison and determinations“As the abovementioned component (A) stated in Exhibit Ko No. 3 is to be cured bylight together with the abovementioned components (B) and (C), it is obvious that theterm “curable with an activated energy ray” as mentioned in Claim 1 included in the20scope of claims stated in Exhibit Ko No. 3 has the same meaning as “photosetting.”
At the same time, a photopolymerizable monomer and/or organic solvent is used ascomponent (C) mentioned in Claim 1 included in said scope of claims, and thecomponents exemplified as photopolymerizable monomers are those derived from(meth)acrylic acid possessing a vinyl bond in the molecular unit thereof.
Moreover, among the components to be additionally mixed as needed, “bisphenol A
type epoxy resin, bisphenol F type epoxy resin, bisphenol S type epoxy resin, phenol
novolak type epoxy resin, cresol novolak type epoxy resin, N-glycidl type epoxy resin, or
alicyclic epoxy resin” were exemplified as those falling under the epoxy compoundcontaining two or more epoxy groups in the molecular unit thereof.
Then, Exhibit Ko No. 3 may be found to contain the following statement: “A
photosensitive thermosetting resin composition comprising(A’) photosetting resin obtained by causing the reaction product of a novolak typeepoxy compound and an unsaturated monocarboxylic acid to react with a saturated or
unsaturated polybasic acid anhydride;(B’) a photopolymerization initiator;(C’) a photopolymerizable vinyl monomer and/or an organic solvent as a diluent;and(D’) an epoxy compound containing two or more epoxy groups in the molecular unit
thereof, such as bisphenol A type epoxy resin, bisphenol F type epoxy resin, bisphenol S
type epoxy resin, phenol novolak type epoxy resin, cresol novolak type epoxy resin,N-glycidl type epoxy resin, or alicyclic epoxy resin.” ([…], Invention Based on Exhibit Ko
No. 3, […]).
Based on this finding, the “reaction product of a novolak type epoxy compound andan unsaturated carboxylic acid,” which is an intermediate of the abovementioned
component (A’), corresponds to the complete esterification product (a-1) or partial
esterification product (a-2) of epoxy group which can be obtained by the esterification
reaction between the novolak type epoxy compound and an unsaturated monocarboxlyic
acid as mentioned in (a) of Present Invention 1, and the final reaction product of said
component (A’), which would be obtained by further causing the abovementioned
reaction product to react with a saturated or unsaturated polybasic acid anhydride,
would correspond to the prepolymers stated in (a-1-1) or (a-2-1) of Present Invention 1,
and eventually to component (A) of Present Invention 1, a photosensitive prepolymer.
Moreover, it is obvious that the abovementioned components (B’) and (C’) correspond tocomponents (B) and (C) of Present Invention 1, respectively.
Accordingly, if the Invention Based on Exhibit Ko No. 3 and Present Invention 1

21

are compared, it may be found that the two inventions correspond to each other in thatthey are both “a photosensitive thermosetting resin composition comprising (A) aphotosensitive preploymer possessing at least two ethylenically unsaturated bonds inthe molecular unit thereof which falls under (a-1-1) or (a-2-1), (B) a photoinitiator, (C) aphotopolymerizable vinyl monomer and/or an organic solvent as a diluent; and (D) an
epoxy compound possessing at least two epoxy groups in the molecular unit thereof,”but differ at least in the following points.
Difference:With regard to the epoxy compound for component (D), while Present Invention 1
states “a finely powdered epoxy compound exhibiting sparing solubility in theabovementioned diluent to be used, which is at least one epoxy compound in a solid orsemi-solid state selected from a group consisting of digylcidyl phthalate resin,heterocyclic epoxy resin, biphenol type epoxy resin, and tetraglycidylxy lenoylethane
resin,” in Invention Based on Exhibit Ko No. 3, the relevant epoxy compound is only
selected from among the “epoxy compound containing two or more epoxy groups in themolecular unit thereof, such as bisphenol A type epoxy resin, bisphenol F type epoxy
resin, bisphenol S type epoxy resin, phenol novolak type epoxy resin, cresol novolak typeepoxy resin, N-glycidl type epoxy resin, or alicyclic epoxy resin,” and further, no
specification has been made to use an epoxy compound “in a finely powdered form
exhibiting sparing solubility in the diluent to be used” as the relevant epoxy compound.
As mentioned in […] above, while it is stated that “the salient feature… resides in
the fact that a “finely powdered” epoxy compound “exhibiting sparing solubility” in thediluent “to be used” is employed in Present Invention 1, Exhibit Ko No.3 contains nosuggestions on the employment of an epoxy compound having such specific properties,
nor can the employment of such specific epoxy compound be found to be a common
general technical knowledge.
Furthermore, Present Invention 1 achieves advantages of excelling in developing
property and sensitivity and having a resistance to developing solutions in the exposure
portions, by the mixture of component (D) having such specific properties.
Therefore, Present Invention 1 would not have been easily conceived of by a person
skilled in the art based on the Invention Based on Exhibit Ko No. 3.
Next, Present Invention 2 shall be examined.
Present Invention 2 is a method of forming a solder resist pattern on a printed
circuit board which is characterized by the processes of first applying, on the surface ofa printed circuit board, a photosensitive thermosetting resin composition mentioned in
Present Invention 1, which further contains a curing agent for epoxy resin, exposing the22

applied layer of said composition selectively to an actinic ray through a photomask
having a given pattern, developing the unexposed portion of the applied layer with adeveloping solution thereby giving rise to a resist pattern, and thereafter thermosetting
said finely powdered epoxy compound by application of heat.
Therefore, Present Invention 2 would also not have been easily conceived of by aperson skilled in the art based on the Invention Based on Exhibit Ko No.3 for the same
reason as that for Present Invention 1.
Consequently, the provision of Article 29, paragraph (2) of the Patent Act (note of
the judgment: see page 69 below regarding the provision to be applied) shall not beapplied to Present Inventions 1 and 2.
C. Regarding Ground 3 (which is an allegation that the Inventions are incomplete)“Component (A) under Present Inventions 1 and 2 are first defined as “aphotosensitive prepolymer possessing at least two ethylenically unsaturated bonds inthe molecular unit thereof, which is one type or two or more types of prepolymers
selected from one or more of the groups prescribed in (a), (b), or (c) below,” and then(a-1-1), (a-1-2), (a-2-1), and (a-2-2), and (b-1-1), (b-1-2), (b-2-1), and (b-2-2), and (c-1) and(c-2) are listed as those falling under said group (a), (b) or (c), respectively.
Under this statement, the abovementioned group (a) refers to a compound derived
from a partial or complete esterification product of epoxy group produced by theesterification reaction of a novolak type epoxy compound and an unsaturated
monocarboxylic acid, while group (b) refers to a partial or complete etherification
product of the epoxy group produced by the etherification reaction of a novolak typeepoxy compound and an unsaturated phenol compound, or a compound derived fromsuch partial or complete etherification product and group (c) refers to diallyl(iso)phthalate prepolymers. Thus, it is found that a significant chemical structuralelement is shared by the alternatives of each group (a) through (c). Furthermore, as aresult of the existence of such common chemical structure, it may be expected that thealternatives among each group (a) through (c) would behave in the same way even if
they were substituted for each other.
In relation to this finding, the statements in the Description contain thecompositions using the following components for the respective working examples, as
the specific embodiment of component (A) of Present Inventions 1 and 2: (i) (a-1-1) and(c-1) for Working Example 3; (ii) (a-2-2) for Working Example 4; (iii) (a-1-1) and (b-1-1)
for Working Example 5; and (iv) (c-1) for Working Example 6.
Then, the Description should be deemed to have disclosed a photosensitive
thermosetting resin composition actually mixing the typical substances of each group23

(a) through (c).
At the same time, component (D) of Present Inventions 1 and 2 is defined as “afinely powdered epoxy compound possessing at least two epoxy groups in the molecular
unit thereof and exhibiting sparing solubility in the abovementioned diluent to be used,which is at least one epoxy compound in a solid or semi-solid state selected from a groupconsisting of digylcidyl phthalate resin, heterocyclic epoxy resin, bixylenol type resin,biphenol type epoxy resin, and tetraglycidylxy lenoylethane resin.”
The “digylcidyl phthalate resin, heterocyclic epoxy resin, bixylenol type resin,biphenol type epoxy resin, and tetraglycidylxy lenoylethane resin” as listed above are“finely powdered epoxy compounds possessing at least two epoxy groups in themolecular unit thereof and exhibiting sparing solubility in the abovementioned diluent
to be used, which assume a solid or semi-solid state” that belong to a class of chemicals
recognized as a group and the alternatives within such group can be expected to behavein the same way.
In relation to this finding, the statements in the Description contain thecompositions using the following components for the respective working examples, as
the specific embodiment of component (D) of Present Inventions 1 and 2: (i) bixylenol
type resin for Working Example 3; (ii) heterocyclic epoxy resin for Working Examples 4
and 5; and (iii) biphenol type epoxy resin for Working Example 6. Therefore, theDescription should be deemed to have disclosed the typical compounds of “finely
powdered epoxy compounds possessing at least two epoxy groups in the molecular unit
thereof and exhibiting sparing solubility in the abovementioned diluent to be used,which assume a solid or semi-solid state.”
Accordingly, the Description can be deemed to have disclosed photosensitive
thermosetting resin compositions actually containing the typical substances for bothcomponent (A) and component (D), and other alternatives for the two components whichhave not been disclosed can be expected to behave in the same way, and therefore it
cannot be concluded that Present Inventions 1 and 2 have not gone beyond the stage ofidea for such other alternatives.
Consequently, Present Inventions 1 and 2 have fulfilled the requirements forpatentability as provided for in the main clause of Article 29, paragraph (1) of the
Patent Act (note of the judgment: see page 71 below for the provision to be applied).
D. Regarding Ground (4) (which is an allegation that the statements in the
Description are insufficient)“It has been mentioned […] above that the Description has stated examples using
the typical substances for component (A) and component (D) of Present Inventions 1 and24

2 from among the group of compounds which may be expected to behave in the sameway.
Furthermore, the detailed explanation of the inventions included in the Description
contains statements of the starting material and manufacturing method in the case of
preparation of a compound falling under the relevant alternative, instructions on theavailability of commercial goods, if any, and reference of specific examples for
manufacturing the typical substances (a-1-1), (a-2-2), and (b-1-1).
Following them in the detailed explanation of the inventions are statements ofpreferred commercial products that satisfy the condition of “exhibiting sparing
solubility in the diluent to be used and assuming a solid or semi-solid state at ambient
temperature” regarding component (D), examples of compounds eligible to be used as
the diluent of component (C), which is to be used simultaneously with component (D)above, and further, the specific combinations of component (C) and component (D) as
Working Examples 3 through 6.
The compounds exemplified as component (D) are all commercial products which
can be easily obtained. Once the compound to be used as component (D) has been
decided, the compound in which such component (D) would not dissolve can be decided
experimentally from among the compounds exemplified as component (C) in thedetailed explanation of the inventions, and this process cannot be considered ascompelling a person skilled in the art to conduct trial and error beyond areasonably-expected extent.
Indeed, (a-1) and (a-2) can no longer be included in the alternatives of component(A) of Present Inventions 1 and 2, nor is bisphenol S type epoxy resin included in thoseof component (D). Yet, the matters which are essential for the constitutions of Present
Inventions 1 and 2 can be clearly understood from the statements made in Claim 1 andClaim 21 included in the scope of claims for the Patent, and therefore, the mere fact thatan example of preparing a composition only containing the abovementioned (a-1) and/or(a-2) as the component of a photosensitive prepolymer remains to be stated as an“working example” cannot lead to the conclusion that a person skilled in the art isprevented from easily working the inventions pertaining to Present Inventions 1 and 2.
At the same time, as the composition stated in “Working Example 6” disclosed in the
Description contains a biphenol type epoxy resin, which is one of the alternatives forcomponent (D) of Present Inventions 1 and 2, said “Working Example 6” remains to fallunder the specific embodiment of Present Inventions 1 and 2.
Accordingly, the detailed description of the inventions in the Description has statedthe object, constitution and effect of the relevant inventions to a level sufficient enough25

for a person skilled in the art to easily work such inventions, and the scope of claims
stated in the Description has stated matters which are essential for the constitution of
the relevant inventions from among the matters stated in the detailed explanation of
the inventions.
Consequently, the Description satisfies the requirements provided for in Article 36,
paragraphs (3) and (4) prior to the revision by the Act for Partial Revision of the Patent
Act and Other Relevant Laws (Act No. 27 of 1987; hereinafter referred to as the “1987Act”) for which it was provided that the provisions then in force shall remain applicablepursuant to the provision of Article 3 of the Supplementary Provisions of the 1987 Act(note of this judgment: see page 72 below for the provisions applied).”E. Regarding the allegation of violation of the requirements for independent
patentability“Determinations on the allegations concerning the provision of Article 29-2 of the
Patent Act have been made […] as above. Regarding the allegations that the statementsin the description were insufficient, statements of trademarks or name of the goods inthe scope of claims should indeed be avoided to the extent possible. Yet, in making theCorrections, trademarks had been used under the necessity to avoid the relevant
invention from becoming identical to the Cited Inventions, and thus, the Corrections
cannot be considered to be the cause for the matters essential to the constitution of therelevant invention becoming obscure.
Accordingly, the Description satisfies the requirements provided for in Article 36,
paragraph (4) of the Patent Act prior to the revision by the Act for Partial Revision of
the Patent Act and Other Relevant Laws (Act No. 27 of 1987; hereinafter referred to as
the “1987 Act”) for which it was provided that the provisions then in force shall remain
applicable pursuant to the provision of Article 3 of the Supplementary Provisions of the1987 Act.”
No.3 Allegations made by the plaintiff regarding the grounds for rescission of the JPO
Decision
1. Ground for rescission No. 1 (errors in the determinations on the appropriateness of
the Corrections)(1) The JPO Decision found that the Present Inventions and the inventions stated in
Working Example 2 in the Prior Description (hereinafter referred to as the “Cited
Inventions”) are based on different technical ideas, and determined that corrections (1)and (2) included in the Corrections (hereinafter such corrections shall be referred to as“Correction 1” and “Correction 2” in accordance with the number attached, or
collectively referred to as the “Corrections”) were made to provide a “disclaimer” by26

excluding only the constitutions corresponding to the Cited Inventions from theinventions prior to the Corrections, which could be exceptionally treated as being madewithin the scope of matters stated in the Description and could be deemed to have been
made for the restriction of the scope of claims. However, the abovementioned
determination made by the JPO Decision is erroneous.
(2) The Corrections are indeed intended to exclude the Cited Inventions by providing a“disclaimer.” Yet, the statements in the Examination Guidelines for Patent and Utility
Model (hereinafter simply referred as the “Examination Guidelines”) concerning the“disclaimer” are in violation of the provisions of the Patent Act, and thus, such
Corrections should not be allowed in the first place.
Even if corrections to provide a “disclaimer” are to be exceptionally allowed, as longas they are exceptions, the allowance of such corrections should be made in a strict
manner. According to the Examination Guidelines, the relevant inventions are required
to be “remarkably different from the prior art in terms of the technical idea” and to“inherently involve an inventive step” for a correction to provide a “disclaimer” beallowed.
The JPO Decision has however not only failed to find that Cited Inventions and theinventions in question are “remarkably different in terms of the technical idea” but also
to find that the inventions in question “inherently involve an inventive step.” Thus, theCorrections have not satisfied the requirements which are necessary to have thecorrection to provide a “disclaimer” be exceptionally allowed, and do not fall under thecase to be “treated as being made within the scope of matters stated in the originaldescriptions, etc.”(3) The facts that the combination including “TEPIC” as component (D) remains in thestatement of the scope of claims after the Corrections, and that the resin to which a
registered trademark “TEPIC” is applied includes several types and does not mean asingle resin leads to the conclusion that it is impossible to technically identify thecontents of the “disclaimer” by the statement of the registered trademark “TEPIC.” Assuggested by the fact that the use of trademarks is prohibited in principle in the form
based on the Ordinance for Enforcement of the Patent Act or in the Examination
Guidelines, the inclusion of the registered trademark in the contents of the Corrections
would not technically clarify the difference between the parts which have been excluded
from the initial claims by a “disclaimer” and the parts which have not been excluded
and remain in the inventions in question, and thus the Corrections are not found tohave been made for restriction of the scope of claims.
Moreover, the Corrections only excluded the specific combinations of components

27(A) to (D) of Initial Invention 1 and components (A) to (E) of Initial Invention 2, andthus the statements in the scope of claims after the correction are substantially thesame as those prior to the correction, and the Corrections do not substantially “restrict”
the scope of claims.
(4) As described above, the Corrections have not been made “within the scope ofmatters stated in the description or drawings” nor for “the restriction of the scope ofclaims,” and thus the determinations made in the JPO Decision are erroneous.
2. Ground for rescission No. 2 (errors in the determination on the identity of the Present
Inventions and Cited Inventions)(1) The JPO Decision found that the Present Inventions and Cited Inventions weredifferent in terms of the technical idea and that there were no statements orsuggestions on the constituent features of the Present Inventions in the Prior Decisionand determined that the provision of Article 29-2 of the Patent Act may not be applied to
the Present Inventions on the basis that the components which were accidentally
identical to those of the Cited Inventions were excluded from the Present Inventions by
the Corrections. However, the abovementioned determinations made in the JPO
Decision are erroneous.
(2) As mentioned in 1(3) above, the Corrections excluded only the specific combinationsof the components from the inventions prior to the Corrections, by providing a“disclaimer,” and therefore, the Present Inventions and the Cited Inventions belong to
the same technical field, have the same use, operation and effect, etc. and are identicalin terms of the technical idea. The Present Inventions are inventions comprising the
combination of components (A) to (D) and components (A) to (E), except for those
excluded by the Corrections, and further components (A) to (C) and (E) are well-known
components, and component (D) includes multifunctional epoxy resins which share thesame chemical structure with “TEPIC” but have different trademarks (e.g. “ARALDITE
PT810”). Therefore, the Present Inventions should be considered as remaining
substantially identical to the Cited Inventions, and thus the determinations made in
the JPO Decision are erroneous.
(3) Counterarguments to the defendant’s allegations
A. The defendant alleges that the feature of the Present Inventions resides in the factthat “it is a photosensitive thermosetting resin composition using a finely powderedepoxy resin exhibiting sparing solubility in the diluent,” which gives rise to a specificeffect and that such inventions have not been disclosed in the Prior Description.
However, the conditions that the finely powdered epoxy compound is sparingly
soluble in the diluent to be used and is intended to be used as dispersed in the finely

28

powdered form are both technically clear. Such conditions should therefore be deemed tohave been stated in the Prior Description or at least regarded as matters obvious fromsuch statements.
Moreover, the fact that the “multifunctional epoxy resin (“TEPIC”)” stated in the
Prior Description is in a finely powdered form and is sparingly soluble in the diluent issufficiently obvious for a person skilled in the art to immediately confirm, as mentioned
in parts 1 to 3 in Exhibit Ko No. 4.
B. The defendant alleges that even if the “multifunctional epoxy resin (“TEPIC”),”
which is a thermosetting component stated in Working Example 2 in the Prior
Description, is found by chance to be sparingly soluble in a diluent ex post facto, thisdoes not lead to the conclusion that the thermosetting component of the inventions
stated in the Prior Description is sparingly soluble.
However, the Cited Inventions have especially selected the combination of“multifunctional

epoxy

resin

(“TEPIC”)”

as

the

epoxy

resin

and

“pentaerythritoltetraacrylate” as a diluent in which such epoxy resin does not dissolve,
from among the numerous combinations of epoxy resin and diluent, with the aim towork the inventions stated in the scope of claims in the Prior Description in the bestmode, and thus the defendant’s allegation is unreasonable.
3. Ground for rescission No. 3 (errors in the determinations on the difference between
Present Invention 1 and Invention Based on Exhibit Ko No. 3)(1) The JPO Decision determined that Present Invention 1 could not have been easily
conceived of by a person skilled in the art based on the Invention Based on Exhibit Ko
No.3 for the following reasons: Regarding Present Invention 1, it is stated that “thesalient feature… resides in the fact that the “finely powdered” epoxy compound“exhibiting sparing solubility” in the diluent “to be used” is employed as a thermosetting
component.” Nevertheless, Exhibit Ko No. 3 does not suggest the employment of an
epoxy compound having such specific characteristics, nor is the employment of suchspecific epoxy resin found to be a common general technical knowledge. However, theabovementioned determination made in the JPO Decision is erroneous.
(2) In Working Example 4 disclosed in Exhibit Ko No.3, “EPICLON EXA-1514” isstated as one of the alternatives for bisphenol S type epoxy resin. At the same time, in
Exhibit Ko No.3, N-glycidl type epoxy resin is listed in the same category as bisphenol
type epoxy resin. This N-glycidl type epoxy resin and heterocyclic epoxy resin listed as
one of the alternatives for component (D) of Present Invention 1 are names ofcomponents that indicate the same chemical structure from different viewpoints, andthere are compounds, such as triglycidl isocyanurate, that correspond to both29

components.
Therefore, Present Invention 1 is nothing but an invention that used triglycidl
isocyanurate, which can be used in the same manner as bisphenol S type epoxy resin
and is publicly known as N-glycidl type epoxy resin, as a substitute for bisphenol S typeepoxy resin used in the photosensitive thermosetting epoxy resin composition stated in
Working Example 4 in Exhibit Ko No. 3.
Moreover, according to Table 1 shown in the Japanese Examined Patent
Publication for the Patent (Exhibit Otsu No. 1), no remarkable difference is foundbetween the use of “EPICLON EXA-1514,” which is a bisphenol S type epoxy resin(Working Example 3), and the use of “ARALDITE PT810” or “TEPIC,” a heterocyclic
epoxy resin in a finely powdered form (Working Example 6 or Working Example 7,
respectively), as component (D).
Accordingly, the working examples shown in Present Invention 1, where
heterocyclic epoxy resin was used as component (D), have only used N-glycidl typeepoxy resin as a substitute for bisphenol S type epoxy resin used in Working Example 4
disclosed in Exhibit Ko No. 3, and have achieved an effect which could be naturally
expected, and thus such invention could have easily been invented by a person skilled in
the art based on the Invention Based on Exhibit Ko No. 3.
(3) Counterarguments to the defendant’s allegations
A. The defendant alleges that the object of the Invention Based on Exhibit Ko No.3,
which is to improve the resistance to heat and resistance to solvents, etc., is different
from the object of the Present Inventions, i.e. improvement of the developing property
and sensitivity, etc.
However, according to Table 1 shown in the Japanese Examined Patent
Publication for the Patent, the developing property and sensitivity showed lower results,
and the pot life was shorter when using “ARALDITE PT810” or “TEPIC,” a heterocyclic
epoxy resin in a finely powdered form (Working Example 6 or Working Example 7,
respectively) than when using “EPICLON EXA-1514” (Working Example 3), and thus
the defendant’s allegation is contrary to the fact.
B. The defendant alleges that it is not described or claimed in the Working Example 4
disclosed in Exhibit Ko No.3 that “EPICLON EXA-1514” should be “sparingly soluble”
or be “in a finely powdered form.”
The fact that “EPICLON EXA-1514” is “sparingly soluble” and is “in a finely
powdered form” has simply not been stated in Exhibit Ko No.3, but, as it is obvious fromthe results of experiment 4 disclosed in Exhibit Ko No.4, “EPICLON EXA-1514” is“sparingly soluble” and would naturally be used “in a finely powdered form” based on

30

common general technical knowledge (Exhibits Ko No. 17 through 26).
Taking into account the facts that bisphenol S type epoxy resin was deleted fromthe alternatives for component (D) and the working example using “EPICLON
EXA-1514” was deleted from the description in response to the objections raised against
the Japanese Examined Patent Publication for the Patent by citing Exhibit Ko No. 3,“EPICLON EXA-1514” as used in the Invention Based on Exhibit Ko No. 3 should beconsidered as satisfying the conditions of being “sparingly soluble” and “in a finely
powdered form.”
C. The defendant alleges that, in selecting an “epoxy compound possessing at least
two epoxy groups in the molecular unit thereof,” it would not be easy for a person skilledin the art to select a compound which is “sparingly soluble” and “in a finely powderedform” for such epoxy compound.
Nevertheless, “TEPIC” can be immediately recognized to be in a finely powdered
form from its appearance, and it is obvious that “ARALDITE PT810” would be in a
finely powdered form after being kneaded. Further, “EPICLON EXA-1514” is inevitably
in a “sparingly soluble” state in the Invention Based on Exhibit Ko No. 3 as mentioned
above, and therefore, there is no difficulty in adding the conditions of “sparingly soluble”
and “in a finely powdered form” to the constitutions of the Invention Based on Exhibit
Ko No. 3.
4. Ground for rescission No. 4 (errors in the determinations on “incomplete inventions”)(1) The JPO Decision determined that Present Invention 1 satisfied the requirements
provided for in the main clause of Article 29, paragraph (1) of the Patent Act by findingthat compositions using the relevant components were stated in the working examples(i.e. (a-1-1) and (c-1) in Working Example 3, (a-2-2) in Working Example 4, (a-1-1) and(b-1-1) in Working Example 5 and (c-1) in Working Example 6) as the specificembodiment of Present Invention 1 and thus photosensitive thermosetting resin
compositions actually containing the typical alternatives for the component weredisclosed. However, the abovementioned determination made in the JPO Decision iserroneous.
(2) In cases where one type of substance is used singly as component (A) of Present
Invention 1, there would be 12 alternatives, and if one type of substance is used singly
as component (D), there would be 5 alternatives. Thus, Present Invention 1 collectively
contains 60 inventions.
Moreover, if two types of substances were used in combination as component (A),there would be 90 alternatives, which would result in 450 alternatives when multipliedby 5 alternatives for component (D) in the case where it is used singly.

31Even if only one or two types of substances were used as component (A) in Present
Invention 1, there would be 720 alternatives for the inventions which would be obtainedby multiplying 5 alternatives for component (D) by 144 alternatives obtained by thesum of 12 alternatives for component (A) in case where only one type of substance isused and 132 alternatives (12 × 11) in the case where component (A) consists of a
combination of two types of substances.
Among the working examples shown in the Description, Working Examples 1, 2 and6 would not be included in the working examples for Present Invention 1, and then, only
three working examples had been completed at the time of filing the application inquestion, i.e. Working Examples 3 to 5, which would by no means lead to thepresumption that an invention was completed at the time of filing the application inquestion for all of the 60 alternatives (or 450 or 720 alternatives) as mentioned above.
Therefore, Present Invention 1 includes portions which are yet to be completed, andthus is an incomplete invention as a whole.
(3) The defendant alleges that the findings made in the JPO Decision that “it may be
expected that the alternatives among each group (a) through (c) would behave in thesame way even if they were substituted for each other” is correct.
However, except for group (c) among groups (a) through (c), the characteristic groupthat defines the properties of the resins in each group, i.e. the group attached to thenovolak resin through an epoxy group, has a wide variety. Moreover, (c-1) and (c-2),
which are prepolymers derived from phthal acid or isophthal acid and different fromthose derived from an epoxy group of a novolak resin, have no structural similarity withgroup (a) and group (b).
Furthermore, it is a common knowledge among the persons skilled in the art that,in regard to the resin component in a photosensitive resin composition, the properties of
the resist pattern to be obtained after photo-curing would be different in the case wherea given resin is used singly or in combination with other resins. Thus, the defendant’s
allegation is unreasonable.
5. Ground for rescission No. 5 (errors in the determinations on “insufficientstatements”)(1) The JPO Decision determined the following facts: (i) a specific example for
manufacturing component (A) is prescribed in the detailed explanation of the inventions
disclosed in the Description; (ii) specific combinations of component (C) and component(D) are given as Working Examples 3 through 6 in the detailed explanation of theinventions disclosed in the Description; and (iii) it cannot be found that a person skilledin the art would be compelled to conduct trial and error beyond a reasonably-expected

32extent because the compound in which component (D) would not dissolve shall be
empirically decided from among the components exemplified as component (C) in thedetailed explanation of the inventions. However, the abovementioned determination
made in the JPO Decision is erroneous.
(2) In the Description, only three working examples have been shown as the specificembodiment of Present Invention 1. Even if Working Example 6, where only (a-1) and/or(a-2) is contained as component (A), is used as a reference, the same conditions cannot
be necessarily used to obtain the desired photosensitive thermosetting resin
composition if Component (A) comprising different constituents is used in combination
with component (C) and component (D). Therefore, these examples alone areinsufficient to find that Present Invention 1 in its entirety could have been easily
worked by a person skilled in the art.
Accordingly, the detailed explanation of the inventions included in the Description
cannot be deemed to have stated the object, constitutions and effect of the relevant
inventions sufficiently enough for a person ordinarily skilled in the art of the invention
to easily work said inventions. Moreover, the scope of claims which stated mattersrelated to the specific embodiment of the inventions that was not clearly stated in thedetailed description of the inventions cannot be considered to have satisfied thedescription requirements provided for in the Patent Act.
6. Ground for rescission No. 6 (errors in the determinations concerning Present
Invention 2)
The JPO Decision found Present Invention 2 to be an invention of a method offormation, which only differs from Present Invention 1 in that component (E) is further
included in the combination for a resin composition, and held that there were no
grounds for invalidation of Present Invention 2 for the same reason as that for Present
Invention 1.
However, there are grounds for invalidation of Present Invention 2 for the same
reasons as those stated in grounds for rescission No. 3 through 5, and the determination
made in the JPO Decision is erroneous.
No. 4 Allegations made by the defendant regarding the grounds for rescission of the JPO
Decision
1. Regarding ground for rescission No. 1 (errors in the determinations on theappropriateness of the Corrections)(1) The plaintiff alleges that the Present Inventions and the inventions stated in the
Prior Description do not differ in terms of the technical idea and that the Corrections do
not fall under the case where a “disclaimer” would exceptionally be allowed. However,33

as found in the JPO Decision, the Prior Description has not disclosed the technical ideaof the Present Inventions and there is a remarkable difference in the technical idea
between the abovementioned inventions, and thus, the plaintiff ’s allegation is
unreasonable.
(2) The plaintiff alleges that the Corrections have not been made for the restriction of
the scope of claims on the grounds that the statement of the inventions using “TEPIC”
as component (D) still remains in the scope of claims after the Corrections and thus thedifference between the parts excluded from the scope of claims by a “disclaimer” and theparts left belonging to the inventions in question is not technically clear.
However, the facts that a composition identical to that of Present Invention 1 was
accidentally disclosed in the Working Example 2 disclosed in the Prior Description andthat such composition was excluded from the scope of claims of the Patent by theCorrections lead to the conclusion that Present Invention 1 has not been disclosed in the
Prior Description.
Therefore, the plaintiff ’s allegation is unreasonable.
(3) The plaintiff alleges that the term “TEPIC” stated in the “disclaimer” is a registeredtrademark and is technically ambiguous. The plaintiff also alleges that the use ofregistered trademarks in the description is prohibited in principle.
However, as “TEPIC” had been stated as one of the components constituting thecomposition in Working Example 2 disclosed in the Prior Description, the Corrections
excluded the compositions stated in said Working Example 2 without excess ordeficiency by conscientiously citing the statements in said working example, and as aresult, the trademark name was stated in the “disclaimer.” Yet, as it was found in the
JPO Decision, use of trademarks would be allowed in cases where such use is inevitable,
and thus the plaintiff ’s allegation is unreasonable.
Moreover, inclusion of the names of goods or trademarks in a disclaimer is allowedin the practices of the JPO.
(4) Consequently, the allegations made by the plaintiff are all unreasonable, andground for rescission No. 1 is groundless.
2. Regarding ground for rescission No. 2 (errors in the determination on the identity of
the Present Inventions and Cited Inventions)(1) The plaintiff alleges that a technical idea identical to that of the Present Inventions
has been disclosed in the Prior Description. Nevertheless, none of the following
statements can be found in the Prior Description: (i) a statement of “a finely powderedepoxy compound (resin) exhibiting sparing solubility in the diluent to be used;” and (ii) a
statement suggesting that the use of such epoxy compound (resin) leads to the feature of34

operation and effect, such as “the composition, therefore, is hardly corroded by thedeveloping solution nor entails any decline of sensitivity. Further, during the course of
the development, the epoxy compound is enabled to be melted and thermoset by itself or
to be copolymerized with the photosensitive prepolymer. As a result, a solder resist
pattern for a printed circuit board possessing various highly desirable properties can beproduced.” Therefore, the Prior Description cannot be considered as disclosing atechnical idea identical to that of the Present Inventions, and thus the plaintiff ’s
allegation is unreasonable.
(2) The plaintiff alleges that the constitutions of the Present Inventions are stated in
the Prior Description and that the Cited Inventions and the Present Inventions are
identical in terms of their use and operation and effect.
However, while the feature of the Present Inventions resides in the fact that it is a“photosensitive thermosetting resin composition using a finely powdered epoxy resin
exhibiting sparing solubility in the diluent,” which generates a specific effect, no suchinvention has been disclosed in the Prior Description.
Moreover, as “TEPIC” is not required to be in “a finely powdered form, exhibiting
sparing solubility in the diluent to be used, and assuming a solid or semi-solid state” inthe Prior Description, even if the “TEPIC” as used in the Working Example 2 disclosed
in the Prior Description happened to “exhibit sparing solubility in the diluent,” thiswould not promptly lead to the conclusion that an epoxy resin which “exhibits sparing
solubility in the diluent” has been selected as the epoxy resin to be contained in thephoto resist composition in the Cited Inventions.
(3) Therefore, the plaintiff ’s allegations are unreasonable and ground for rescission No.
2 is groundless.
3. Regarding ground for rescission No. 3 (errors in the determinations on the difference
between Present Invention 1 and Invention Based on Exhibit Ko No. 3)
The plaintiff, by citing Exhibit Ko No. 3, alleges that a person skilled in the art caneasily select heterocyclic epoxy resin, such as “TEPIC” or “ARDALITE PT810,” thatshare the same shape and solvent behavior with “EPICLON EXA-1514” from among
publicly known epoxy resins.
Yet, while the object of the Invention Based on Exhibit Ko No. 3 is to improve theheat resistance and solvent resistance, etc., the object of Present Invention 1 is toimprove the developing property and sensitivity, etc. Moreover, based on the fact that
“EPICLON EXA-1514” is not prescribed as exhibiting sparing solubility or being in a
finely powdered form in the Working Example 4 disclosed in Exhibit Ko No. 3, even if aperson skilled in the art could easily select other “epoxy resin possessing at least two

35

epoxy groups in the molecular unit thereof” stated in Exhibit Ko No. 3 as a substitutefor “EPICLON EXA-1514,” a bisphenol S type epoxy resin, it would not be easy for such
person skilled in the art to employ a compound that is “sparingly soluble” in the diluent
to be used and is “in a finely powdered form,” as such compound.
4. Regarding ground for rescission No. 4 (errors in the determinations on “incomplete
inventions”)
The plaintiff alleges that Present Invention 1 is incomplete on the grounds that
although there are 12 alternatives for component (A) and 5 alternatives for component(D) and thus at least 60 working examples are required, only three working examples(i.e. Working Examples 3 through 5) have been disclosed in the Description.
However, the JPO Decision has correctly found that “it may be expected that thealternatives among each group (a) through (c) would behave in the same way even if
they were substituted for each other,” and moreover, “a photosensitive prepolymer
possessing at least two ethylenically unsaturated bonds in the molecular unit thereof”
that constitutes component (A) of Present Invention 1 has been widely used (exploited)as an essential component of a photosensitive thermosetting resin composition.
Accordingly, the separate indication of such photosensitive prepolymer cannot serve as
the ground to find that the exploitation of Present Invention 1 was impossible.
Therefore, the plaintiff ’s allegation is unreasonable, and ground for rescission No. 4
is groundless.
5. Regarding ground for rescission No. 5 (errors in the determinations on “insufficientstatements”)
The plaintiff alleges that the mere descriptions of three working examples as the
specific embodiment of Present Invention 1 in the Description cannot lead to theconclusion that a person skilled in the art can easily work Present Invention 1 in its
entirety.
It is obvious, however, from the statements on the operation and effect of theinventions in the detailed explanation of the inventions included in the Description,that the use of a finely powdered epoxy resin exhibiting sparing solubility in the diluent
as component (D) would achieve a specific effect in Present Invention 1.
Accordingly, the detailed explanation of the inventions included in the Description
should be considered as being stated to an extent sufficient enough for a person skilledin the art to easily work Present Invention 1, and thus the plaintiff ’s allegation s
unreasonable and ground for rescission No. 5 is groundless.
6. Regarding ground for rescission No. 6 (errors in the determinations concerning
Present Invention 2)

36

For the same reasons stated in regard to grounds for rescission No. 3 through 5,
there are no errors in the determinations made in the JPO Decision regarding Present
Invention 2, and thus the plaintiff ’s allegation is unreasonable and ground for
rescission No. 6 is groundless.
No. 5 Judgment of this court
1. Regarding ground for rescission No. 1 (errors in the determinations on theappropriateness of the Corrections)(1) The plaintiff alleges that the Corrections are made to provide a “disclaimer,” andthus cannot be considered to be corrections made “within the scope of matters stated in
the description or drawings attached to the application” as provided for in the proviso to
Article 134, paragraph (2) of the Patent Act prior to the revision by Act No. 116 of 1994
for which it was provided that the provisions then in force shall remain applicable in
Article 6, paragraph (1) of the revised Supplementary Provisions of said Act (hereinafter
the phrase starting from “prior to” shall simply be referred to as “prior to the revision in1994”).
Moreover, the plaintiff has additionally made the following allegations: (i) while thestatements of the scope of claims after the Corrections include the statement of aregistered trademark “TEPIC,” the details of the Corrections cannot be technically
identified by the statement of the registered trademark, and thus the Corrections
cannot be considered to have been made for the restriction of the scope of claims; and (ii)the Corrections only exclude some combinations included in the inventions prior to theCorrections, and therefore, the inventions prior to the Corrections and the Present
Inventions are substantially identical, and the Corrections cannot be considered to havebeen made to “restrict” the scope of claims.
Accordingly, this court will examine these allegations one by one.
(2) Regarding the meaning of the phrase “within the scope of matters stated in thedescription or drawings attached to the application”
A. Background, purpose and interpretation of the abovementioned provision
Article 17, paragraph (2) of the Patent Act prior to the revision in 1994 provides that“any amendments to the description or drawings under the provision of the main clauseof the preceding paragraph shall be made within the scope of matters stated in thedescription or drawings originally attached to the application.” This provision wasprovided for by the revision made to the Patent Act by Act No. 26 of 1993, by reference
to the wordings used in the Article 11 of the Act on International Applications under the
Patent Cooperation Treaty prior to the revision by Act No. 160 of 1999, which provided
for that “An applicant, who has filed a request for international preliminary37

examination, may amend the description, scope of claims or drawings within the scopeof matters stated in the description, scope of claims or drawing at the time of filing theinternational application related to such request, only within the time limit designatedin the Ordinance of the Ministry of International Trade and Industry.” Moreover, Article
11 of the abovementioned Act was based on the provision of Article 34(2)(b) of the Patent
Cooperation Treaty, which provided for that “The applicant shall have a right to amend
the claims, the description, and the drawings, in the prescribed manner and within theprescribed time limit, before the international preliminary examination report isestablished. The amendment shall not go beyond the disclosure in the international
application as filed.” This provision is considered to have been prescribed with the
purpose of balancing the interests between the applicant and third parties by allowing
the applicant to amend the application but not beyond the disclosure in the application
as filed.
Accordingly, Article 17, paragraph (2) of the Patent Act prior to the revision in 1994
can be recognized to have been provided with the same purpose as the provision
mentioned above (the same could be said for Article 17-2, paragraph (2) of said Act
wherein Article 17, paragraph (2) of said Act shall be applied mutatis mutandis, and for
Article 17-3, paragraph (2) of said Act, which provides for that amendments “shall bemade within the scope of matters stated in the description or drawings attached to theapplication.”)
Article 134, paragraph (2) of the Patent Act prior to the revision in 1994, which
provided for corrections, sought harmonization of the systems of other major countries
for the protection of inventions by giving the patentees an opportunity to correct thedescription or drawings to the extent that would not cause unexpected damages to athird party, while avoiding delay in proceedings by allowing the proceedings for thecorrection to be made concurrently with the proceedings for the trial for invalidation ofpatent. Further, it was provided in the proviso to said paragraph that a correction
should also be made “within the scope of matters stated in the description or drawings
attached to the application,” as with the case of amendments, with the limitation that
corrections would only be allowed in cases where they are made for the “restriction of
the scope of claims,” “correction of errors,” or “clarification of an ambiguous statement,”
which are deemed to be the minimum extent necessary to achieve the purpose of thecorrection, that is, to avoid the relevant patent from being invalidated after the patenthas been granted (said proviso is identical to the proviso to Article 126, paragraph (1) of
the Patent Act prior to the revision in 1994 which provides for corrections in the case ofa request for trial for a correction).

38

Based on the abovementioned findings, the Patent Act prior to the revision in 1994
can be recognized to have provided for that an amendment shall be made “within thescope of matters sated in the description or drawings attached to the application” tosecure sufficient disclosure of the invention as of the filing, guarantee immediate grantof rights, ensure fairness between an application that sufficiently discloses theinvention as of the filing and an application that does not and to prevent a third party,
who has acted based on the scope of invention disclosed as of the filing from incurring
unexpected damages. Furthermore, said Patent Act can be recognized to haveconsistently provided the same requirements for corrections, which may be made after
the grant of patent, to ensure sufficient disclosure of the inventions as of the filing andto substantially secure the first-to-file system (based on the fact that Article 126,
paragraph (2) of the Patent Act prior to the revision in 1994 has provided for that thecorrections to be made in relation to a request for a trial for correction “shall not
substantially enlarge or alter the scope of claims,” and that said provision is appliedmutatis mutandis in Article 64, paragraph (4) and Article 134, paragraph (5) of said Act,it may be construed that, not only the corrections to be made in relation to a request fora trial for correction but also the amendments to be made after the service of a certified
copy of a decision to the effect that the application should be publicly notified, and thecorrections to be made in relation to a request for corrections had been ensured to bemade so as not to cause any unexpected disadvantages to a third party).
Based on such purpose of the Patent Act, the wordings “within the scope of mattersstated in the description or drawings” as provided for in Article 17, paragraph (2) of the
Patent Act prior to the revision in 1994 should be interpreted in the following manner.
The “matters stated in the description or drawings” are disclosed to third parties by
the applicant as a prerequisite for gaining a monopoly based on a patent right for an
invention, the highly advanced creation of technical ideas, and such “matters” must be
technical matters concerning the invention disclosed in the description or drawings.
And the “matters stated in the description or drawings” mean technical matters that aperson skilled in the art can understand, taking into account all statements in thedescription or drawings. Where an amendment does not add any new technical mattersto the technical matters that can be understood in this manner, the amendment can bedeemed to be made within the “scope of the matters stated in the description or
drawings.”
Moreover, the similar wordings as provide for in the proviso to Article 134, paragraph(2) of said Act should be interpreted in the same manner, and thus where a correction
does not add any new technical matters to the technical matters that a person skilled in39the art can understand, taking into account all statements in the description or
drawings, the correction can be deemed to be made within the “scope of the mattersstated in the description or drawings.”
Yet, the matters stated in the description or drawings are usually related to thetechnical idea disclosed in the description or drawings. Thus, for example, where acorrection to add limitations on the scope of claims is to be made for the restriction thescope of claims, if the matters of correction to be added are explicitly stated in thedescription or drawings, or if they are obvious from such statements, unless there are
special circumstances, such correction shall be found to have not added any newtechnical matters and can be deemed to be made within the “scope of matters stated in
the description or drawings.” In practice, this method of determination appears to beappropriate for many cases.
Article 29-2 of the Patent Act prior to the revision by Act No. 116 of 1194 for which it
was provided that the provisions then in force shall remain applicable pursuant to
Article 8, paragraph (1) of the Supplementary Provisions of said Act (hereinafter thephrase starting from “prior to” shall simply referred to “prior to the revision in 1994”)
provides that where an invention for which a patent application has been filed is
identical to the invention stated in the description or drawings originally attached toanother patent application which has been filed before the first mentioned patentapplication but published after such first mentioned application (hereinafter thesecond-mentioned invention shall be referred to as a “Prior Invention”), the firstmentioned invention cannot be patented. Accordingly, there are cases where ademandee of a trial for invalidation of a patent files a request for correction to exclude
the portions of the invention pertaining to the relevant patent application which are
identical to a Prior Invention by using a negative expression, such as “excluding” (whichis generally referred to as a “disclaimer”) in the statements of the scope of claims, withthe purpose to avoid the relevant patent from being invalidated based on Article 123,
paragraph (1), item (i) of the Patent Act prior to the revision by Act No. 26 of 1993 forwhich it was provided that the provisions then in force shall remain applicable pursuant
to Article 2, paragraph (4) of the Supplementary Provisions of said Act, on the grounds
that the demandee’s invention falls under the abovementioned provision, Article 29-2 ofthe Patent Act prior to the revision in 1994.
In this case, since the patentee, at the time of filing of the patent application, is notaware of the existence of the Prior Invention, the description or drawings attached to
his/her application usually do not contain any specific statements on such Prior
Invention. The provision of the proviso to Article 134, paragraph (2) of the Patent Act

40

prior to the revision in 1994 shall also apply to a correction to be made to correct thematters that are not specifically stated in the description or drawings. As long as suchcorrection can be found not to be adding any new technical matters to the technicalmatters disclosed in the statements in the description or drawings, it should be deemed
to be made within the “scope of the matters stated in the description or drawings.”
Based on the abovementioned findings, the Corrections shall be examined below.
B. Regarding the Corrections(A) The Description (Exhibits Otsu No. 1 and No. 2) contains the following
statements (provided, that the identification of the places where the relevant
statements are made is based on the places of the statements in the Patent Publication
pertaining to the Patent).
“[…], when a composition uses a finely powdered epoxy compound (resin) sparingly
soluble in a diluent to be used in the composition as in the case of the composition of thepresent inventions, the photosensitive prepolymer assumes a state of enveloping theparticles of the epoxy compound. When a composition using a photosensitive
prepolymer soluble in an aqueous alkali solution is developed with an aqueous alkali
solution, since the epoxy compound does not impair the solubility of the photosensitive
prepolymer and further it is sparingly soluble in the diluent to be used, the composition
exhibits low reactivity with the curing agent for epoxy resin and does not easily induce
the phenomenon of heat fogging and enjoys a satisfactory developing property. When acomposition using a photosensitive prepolymer soluble in the organic solvent to be used
for development, said organic solvent as a diluent, and a finely powdered epoxy
compound sparingly soluble in the organic solvent is developed with an organic solvent,since the epoxy compound is sparingly soluble in the organic solvent mentioned above,the exposed portion is not easily corroded by the developing solution and induces no
decline of sensitivity. Moreover, the developing property of the unexposed portion issatisfactory because the epoxy compound is in the form of a fine particle and, therefore,
is incapable of lowering the solubility of the photosensitive prepolymer and unlikely to
induce the phenomenon of heat fogging. Furthermore, in said either case, the shelf lifeof the composition becomes longer, since the photosensitive prepolymer assumes a stateof enveloping the particles of the epoxy compound and the reactivity of the epoxy
compound with the curing agent is low as mention above.” (lines 7 to 28 in paragraph 12
on page 6).
“[…], the salient feature of the photosensitive thermosetting resin composition of
the present inventions resides in the fact that a “finely powdered” epoxy compound“sparingly soluble” in the diluent “to be used” is employed as a thermosetting

41

component. The finely powdered (fine particulate) epoxy compound, which is an
essential component, is sparingly soluble in the diluent to be used and is intended to be
used as dispersed in the finely powdered form, i.e., in the same manner as a filler. The
composition, therefore, is hardly corroded by the developing solution nor entails any
decline of sensitivity. Further, since the finely powdered epoxy compound in theunexposed portion is washed away by the developing solution during the course of thedevelopment, the composition so excels in developing property as to be developed in ashorter time. The subsequent application of heat makes the epoxy compound be melted
and thermoset in itself or copolymerizes it with the photosensitive prepolymer. As aresult, a solder resist pattern for a printed circuit board possessing various highly
desirable properties can be produced. As it is plain from the description of the function
given above, the term “sparingly soluble” as used in the present description refers to theconcept of exhibiting not only the insolubility in the diluent to be used but also themeager solubility capable of manifesting the function described above” (lines 29 to 45 inparagraph 12 on page 6).
According to the statements above and the statements in Claim 1 and Claim 22
included in the scope of claims prior to the Corrections, the salient feature of Initial
Inventions 1 and 2 resides in the fact that a finely powdered epoxy resin sparingly
soluble in the diluent to be used is employed as the thermosetting component forcomponent (D), among components (A) to (D) and components (A) to (E). At the sametime, such inventions are found to be inventions achieving the following effects: (i) as aresult of using such epoxy resin, the photosensitive prepolymer assumes a state ofenveloping the particles of the epoxy resin and the solubility of the photosensitive
thermosetting shall not be impaired; (ii) since the epoxy exhibits low reactivity with thecuring agent, the developing property would not be impaired, and further (iii) the
exposed portion is not easily corroded by the developing solution and the shelf life of thecomposition becomes longer. And the Description can be deemed to have disclosed atechnical idea characterized by the abovementioned technical matters.
Moreover, according to the statements in said Description, among components (A)to (D) and components (A) to (E) of Initial Inventions 1 and 2, component (A) is one typeor two or more types of photosensitive prepolymer selected from among one or moregroups of reaction products of various substances, as stated in Claim 1 included in thescope of claims, and a wide variation is found in the substances exemplified or the
products exemplified for each substance. Furthermore, with regard to a photoinitiator
as component (B), a photopolymerizable vinyl monomer and/or an organic solvent as thediluent as component (C), a finely powdered epoxy compound possessing at least two

42

epoxy groups in the molecular unit thereof as component (D), and a curing agent for
epoxy resin as component (E), various substances and products have been listed as
typical examples or preferred examples, and a single substance or combination of two or
more types or a compound can be used for each of them.
(B) Meanwhile, the following statements are found in Working Example 2 disclosed
in the Prior Description (Exhibit Ko No. 1).
“Working Example 2: A compound composed of about 230 parts by weight of a cresol
novalak type epoxy resin (EOCN104) having an epoxy equivalent of about 230, 230
parts by weight of cellosolve acetate (inert organic solvent), about 75 parts by weight ofacrylic acid, about 2 parts by weight of hydroquinonemonomethyl ether, and about 2
parts by weight of triethylamine as an esterification catalyst was heated and stirred forreaction at a temperature of about 80°C for 20 hours, and thereby obtaining an epoxy
acrylate having an acid value of about 12. Then, about 100 parts by weight ofcomposition obtained by adding about 74 parts by weight of phthalic anhydride to theabovementioned compound and stirring for reaction at about 80°C for two hours, werecompounded with 5 parts by weight of pentaerythritol tetraacrylate, 10 parts by weightofmultifunctional

epoxy

resin

(“TEPIC”),

about

2

parts

by

weightof

2-methylanthraquinone, about one part by weight of benzyl dimethyl ketal, and 0.5
parts by weight of 2-ethyl-4-methylimidazole, and thereby obtaining the composition of
the present invention. This composition was then applied to one side of the copper cladlaminate in a thickness of 0.01 to 0.02 mm by the method of curtain coating, heated anddried at about 60°C for 60 minutes, and then cooled at ambient temperature to a
non-adhesion state. Furthermore, a negative film having a predetermined pattern was
adhered onto the copper clad laminate, and such copper clad laminate was exposed toand irradiated by an ultraviolet layer with an intensity of 25mw/cm2 at a wavelength of
365nm for 10 seconds, developed by a 1 % soda aqueous solution, and then heated andcured by 150°C for 30 minutes to attach resistance to heat. The coating film obtained
produced a 200 μm line width pattern, and showed a resistance to soldering heat of
250°C for 60 seconds.” (line 7 in the upper right column to line 13 in the lower left
column on page 5).
There is no dispute between the parties over the fact that the elements stated above
correspond to the components of the Initial Inventions, as mentioned in (i) to (v) below,
and further over the fact that the photosensitive thermosetting resin composition of
Initial Invention 1, which is specified by the statements of the scope of claims made in
the Description, and the method of forming a solder resist pattern of Initial Invention 2
are identical to the relevant cited inventions (i.e. the inventions of the composition and43method to form a coating film as stated in Working Example 2 disclosed in the Prior
Description).
(i) An “epoxy acrylate having an acid value of about 12” obtained by causing “about
230 parts by weight of a cresol novolak type epoxy resin (EOCN104) having an epoxy
equivalent of about 230” to react with “about 75 parts by weight of acrylic acid”
corresponds to (a-1), “the complete esterification product of epoxy group produced by theesterification reaction of a novolak type epoxy compound and an unsaturated
monocarboxylic acid,” or (a-2) “partial esterification product,” which are among theconstituents of component (A) of the Initial Inventions; and the reaction product of“about 100 parts by weight obtained by adding about 74 parts by weight of phthalicanhydride to the ‘epoxy acrylate having an acid value of about 12’ and stirring forreaction at about 80°C for two hours” corresponds to the “reaction product obtained by apolybasic acid anhydride” mentioned as (a-1-1) or (a-2-1).
(ii) “About 2 parts by weight of 2-methylanthraquinone, (and) about one part byweight of benzyl dimethyl ketal” corresponds to the “photoinitiator” as component (B) of
the Initial Inventions, and “5 parts by weight of pentaerythritol tetraacrylate” and “230parts by weight of cellosolve acetate (inert organic solvent)” correspond to the“photopolymerizable vinyl monomer” and “organic solvent” as a diluent to be used ascomponent (C) of the Initial Inventions, respectively.
(iii) “10 parts by weight of multifunctional epoxy resin (“TEPIC”)” corresponds tothe “finely powdered epoxy compound possessing at least two epoxy groups in themolecular unit thereof and exhibiting sparing solubility in the abovementioned diluent
to be used” which is defined as component (D) of the Initial Inventions.
(iv) “0.5 parts by weight of 2-ethyl-4-methylimidazole” corresponds to the “curing
agent for epoxy resin” defined as component (E) of Initial Invention 2, and the“composition of the inventions” obtained by the mixture of the abovementioned
substances corresponds to the “photosensitive thermosetting resin composition” of theInitial Inventions.
(v) The part, “This composition was then applied to one side of the copper cladlaminate in a thickness of 0.01 to 0.02 mm by the method of curtain coating, heated anddried at about 60°C for 60 minutes, and then cooled at ambient temperature to a
non-adhesion state. Furthermore, a negative film having a predetermined pattern was
adhered onto the copper clad laminate, and such copper clad laminate was exposed toand irradiated by an ultraviolet layer with an intensity of 25mw/cm2 at a wavelength of
365nm for 10 seconds, developed by a 1 % soda aqueous solution, and then heated andcured by 150°C for 30 minutes to attach resistance to heat,” corresponds to the part44

“applying on the surface of a printed circuit board a photosensitive thermosetting resin
composition mentioned in Initial Invention 1, which contains a curing agent for epoxy
resin as needed, exposing the applied layer of said composition selectively to an actinic
ray through a photomask having a given pattern, developing the unexposed portion of
the applied layer with a developing solution thereby giving rise to a resist pattern, andthereafter thermosetting said finely powdered epoxy compound by application of heat.”included in Initial Invention 2.
(C) The details of the Corrections are as mentioned in the following items (i) and (ii).
(i) Correction 1
Claim 1 included in the scope of claims shall be corrected by adding the phrase,“Provided that, a photosensitive thermosetting resin composition, comprising (A)‘reaction products obtained by causing phthalic anhydride to react with epoxy acrylate
obtained by causing cresol novolak type epoxy resin to react with acrylic acid,’ (B)‘2-methyl anthraquinone’ and ‘dimethyl benzyl ketal’ equivalent to a photoinitiator, (C)‘pentaerythritoltetraacrylate’ and ‘cellosolve acetate,’ and (D) a multifunctional epoxy
resin (“TEPIC” manufactured by Nissan Chemical Industries, Ltd.; Registered
Trademark) which is “an epoxy compound possessing at least two epoxy groups in themolecular unit thereof, “shall be excluded” after the term “tetraglycidylxy lenoylethane
resin.”(ii) Correction 2
Claim 22 included in the scope of claims shall be corrected by adding the phrase“Provided that, a photosensitive thermosetting resin composition, comprising (A)‘reaction products obtained by causing phthalic anhydride to react with epoxy acrylate
obtained by causing cresol novolak type epoxy resin to react with acrylic acid,’ (B)‘2-methyl anthraquinone’ and ‘dimethyl benxyl ketal’ equivalent to a photoinitiator, (C)‘pentaerythritol tetraacrylate’ and ‘cellosolve acetate,’ (D) a multifunctional epoxy resin(“TEPIC” manufactured by Nissan Chemical Industries, Ltd.; Registered Trademark)which is ‘an epoxy compound possessing at least two epoxy groups in the molecular unit
thereof,’ and (E) ‘2-ethyl-4-methylimidazole’ shall be excluded from the abovementioned
photosensitive thermosetting resin composition” after the phrase “said finely powderedepoxy compound by application of heat.”
Claim 22 included in the scope of claims has however newly become Claim 21
included in the scope of claims in connection with the deletion of Claim 18 included in
the scope of claims, as mentioned in No. 2, 2. above.
(D) As mentioned in (B) above, there is no dispute between the parties over the factthat the photosensitive thermosetting resin composition of Initial Invention 1 and the45method of forming a solder resist pattern of Initial Invention 2 are identical to therelevant cited inventions (i.e. the inventions of the composition and method to form a
coating film as stated in Working Example 2 disclosed in the Prior Description). Thus,
various substances or products are found capable of being used as the components ofInitial Inventions 1 and 2, as referred to in (A) above.
Then, according to the statements of the scope of claims in the Description and thestatements of the Working Example 2 disclosed in the Prior Description as mentioned in(B) above, it may be found that the Corrections were intended to exclude the relevant
parts of the Initial Inventions that are identical to the Cited Inventions, by explaining
the contents of the Cited Inventions which are to be excluded, or listing the components
contained in Initial Inventions 1 and 2—components (A) to (D) and (A) to (E), andidentifying and excluding part of the substances or products that may correspond to therelevant components with negative expressions (in the form of a “disclaimer”), while
citing the statements on the specific substances or products used in Working Example 2
disclosed in the Prior Description.
C. Application to this case
As mentioned in A. above, where a correction does not add any new technicalmatters to the technical matters that a person skilled in the art can understand, taking
into account all statements in the description or drawings, the correction can be deemed
to be made within the “scope of the matters stated in the description or drawings.”
According to B. above, the salient feature of the inventions after the Corrections also
resides in the fact that a finely powdered epoxy resin sparingly soluble in the diluent to
be used is employed as the thermosetting component, in the composition comprising
every possible combination of components (A) to (D) and components (A) to (E), except
for the specific combinations being identical to the content of the cited inventions.
Further, such inventions are found to achieve the following effects: (i) as a result ofusing such epoxy resins, the photosensitive prepolymer assumes a state of enveloping
the particles of the epoxy resin and thus the solubility of the photosensitive
thermosetting shall not be impaired; (ii) since the epoxy resin exhibits low reactivity
with the curing agent, the developing property will not impaired, and further (iii) the
exposed portion is not easily corroded by the developing solution and the shelf life of thecomposition becomes longer. Accordingly, the exclusion of specific combinations
corresponding to the cited inventions has not caused any change to the technicalmatters concerning the inventions prior to the Corrections as stated in the Description,and thus it is obvious that the Corrections have not added any new technical matters to
the technical matters disclosed in the Description. Moreover, the Corrections have46

clearly not added any new technical matters to the technical matters that a person
skilled in the art can understand, taking into account all statements in the description
or drawings.
Accordingly, the Corrections are found to have been made “within the scope ofmatters stated in the description or drawings attached to the application” as provided
for in the proviso to Article 134, paragraph (2) of the Patent Act prior to the revision in
1994.
D. Regarding the Examination Guideline
The plaintiff alleges that the statements in the Examination Guideline concerning a“disclaimer” do not conform to the Patent Act. The plaintiff further alleges that if the
Examination Guideline had provided for any exceptions to the Patent Act, regarding“disclaimer,” exceptions should be allowed in a strict manner, but the JPO Decision has
failed to make findings on the requirement for a “disclaimer” to be exceptionallyallowed.
These points shall also be examined in the following parts.
In subsection “3. Basic concept” of “Part III Amendment of Description or Drawings,”“Section 1 New Matters” in the Examination Guideline (reference material 2 attachedas written opinion pursuant to Article 180-2 of the Patent Act), the following statements
are found.
“(1) Any amendment that includes contents beyond the scope of “matters stated in
the originally attached description, etc.” (the amendment including new matters) is not
permitted.
(2) The “matters stated in the originally attached description, etc.” also include, in
addition to the “matters explicitly stated in the originally attached description, etc.,” the“matters obvious from the statements in the originally attached description, etc.” thatare not explicitly stated.
(3) In order to find that the amended matters are “matters obvious from thestatements in the originally attached description, etc.,” it is required that a person
skilled in the art who have accessed them evidently understands the meaning thereof inlight of the common general technical knowledge at the time of filing and understands
them as if they were stated therein, even if they are not stated in the description ([…]).
(4) As for well-known or commonly used art, just because the technology itself is awell-known art or commonly used art does not allow amendments to add new technicalmatters, and amendments are only allowed where they are to be made for mattersobvious from the statements in the originally attached description, etc., which means
where a person skilled in the art who have accessed it understands the matters as if

47

they were stated therein.
(5) In some cases, a matter is considered obvious from several statements in theoriginally attached description, etc. (for example, statement of the problem to be solvedby the invention, statement of examples of the invention, statement of the description,and drawings) from a standpoint of a person skilled in the art. […].”
Although the abovementioned statements are provided for amendments, they
pertain the interpretation of the wording “within the scope of the matters stated” in thedescription (originally) attached to the application, and thus should conform to Article
17, paragraph (2) of the Patent Act prior to the revision in 1994 (although theabovementioned statements in the Examination Guideline are those regarding Article
17-2, paragraph (3) of the current Patent Act, said provision is a revision of Article 17,
paragraph (2) of the Patent Act prior to the revision in 1994, and no change has been
made in the interpretation of the wording “within the scope of matters stated”), as wellas to the interpretation of the same wording provided for in the proviso to Article 134,
paragraph (2) of the Patent Act prior to the revision in 1994.
The statement that “any amendment that includes contents beyond the scope of‘matters stated in the originally attached description, etc.’ “ is not permitted in item (i)of the “Basic concept” as mentioned above can be recognized as a requirement for anamendment not to introduce new technical matters, and should also apply to cases
where statements on specific technical matters are to be added in the statements in thedescriptions, etc. as well as to cases where statements on specific technical matters areto be excluded from the statements in the description, etc.
At the same time, items (ii) through (v), which have stated the points to be taken
into consideration in identifying the technical matters, can be recognized as showing
that, regardless of the existence or absence of explicit statements, the matters that aperson skilled in the art can understand, taking into account all information stated in
the description, etc., can be deemed to be “matters stated.”
Then, the individual statements in the “Basic concept,” can be understood in
consistency with the interpretation of the wording “within the scope of matters stated in
the description or drawings” as held in A. above.
Furthermore, the Examination Guideline has mentioned two examples for an“amendment limiting part of the matters used to specify the invention” as “Examples of
permitted amendment” (amendment changing “a recording or reproducing apparatus”
in claims to “a disc recording or reproducing apparatus” and “amendment for changing
words “work piece” in claims to words “rectangular work piece”) in the part “4.2Specifics” of “4. Amendment of scope of claims” following the abovementioned48

statements, and allows amendment to remove certain technical matters (i.e. “a recoding
or reproducing apparatus other than those in disc form,” and “work piece other thanrectangular work piece”). With regard to the amendments to add statements concerning
specific technical matters as in the abovementioned examples, where the amended
matters themselves are stated in the description, etc., unless there are special
circumstances, such amendment can be deemed not to be introducing any new technicalmatters.
Meanwhile, the following statements can be found in subsection “(4) Disclaimer”
contained in “Part III Amendment of description or drawings,” “Section 1 New matters,”“4. Amendment of scope of claims,” “4.2 Specifics.”“‘Disclaimer’ refers to claims explicitly stating exclusion of only part of the matters
included in the claimed inventions from matters stated in said claims.
‘Disclaimer,’ which excludes matters stated in the originally attached description,etc. through amendment while leaving the expression of the statement of matters statedin claims before amendment, is permitted if the “disclaimer” after exclusion is included
within a scope of matters stated in the originally attached description, etc.
The amendment to provide a “disclaimer” in the following (i) and (ii) does not
introduce new technical matters, and the amendment is permitted.
(i) if the claimed invention overlaps with the prior art and is thus likely to lose
novelty, etc. (Article 29, paragraph (1), item (iii), Article 29-2 or Article 39), making anamendment to exclude only the overlap, while leaving the expression of the statement ofmatters stated in claims before amendment.
(ii) […](Explanation)
The “disclaimer” as mentioned in (i) above refers to a claim explicitly stating theexclusion of only the matters stated in the distributed publication, etc. or thedescription, etc. of an earlier application as a prior art relating to Article 29, paragraph(1), item (iii), Article 29-2, or Article 39 (including matters that are deemed as being
stated therein),(Note 1) An invention becomes patentable by making an amendment in the form of
a “disclaimer,” if the invention is remarkably different from the prior art as to thetechnical idea, and inherently involves an inventive step, but accidentally overlaps withthe prior art. It is considered that if the invention is not remarkably different from theprior art as to the technical idea, amending claims to provide the “disclaimer” rarely
eliminates a reason for refusal for lack of inventive step.
(Note 2) If the part of “exclusion” in the “disclaimer” occupies a major portion of the49

claimed invention or extends to many portions thereof, please note that an invention
may not be clearly identified from one claim.
[…]
The reasons for making such treatments are as follows.
(Explanation)(i) If amendments are not allowed for inventions which lack inventive step due toaccidentally overlapping with prior art, appropriate protection of inventions would not
be achieved. Moreover, in these cases, even if the matters stated as prior art were
excluded from the matters stated in the original claims, third parties would not be
adversely affected unexpectedly.
[…](Specific examples)
Example of (i): If the scope of claims provides “An iron plate washing agent mainly
consisting of an inorganic salt containing Na as a cation,” while the prior art provides
an invention of “an iron plate washing agent mainly consisting of an inorganic salt
containing CO3 ion as an anion” and discloses an example of employing Na ion as a
cation, amendment to change the scope of claims to “….an inorganic salt containing NA
ion as cation (excluding cases where anion is CO3 ion)” for the purpose of excluding
matters stated in the prior art from the scope of claims is permitted.
[…].”
With regard to the abovementioned statements in the Examination Guideline,
which explain the cases where an amendment to provide a “disclaimer” can be treated“exceptionally” as being made within the scope of matters stated in the description, etc.,
the purpose of using the term “exceptionally” can be recognized to clarify that thepermitted amendment is “an exception” in relation to the concept prescribed in theabovementioned “Basic concept.”
However, in light of the holdings made in A. above, the abovementioned concept
based on a presumption that an amendment to provide a “disclaimer” is basicallyprohibited, is inappropriate. Specifically, even in the case of an amendment in which thematters to be amended are stated with negative expressions as in the case of anamendment to provide a “disclaimer,” if the matters to be amended are stated in thedescription, etc., such amendment can be deemed not to be introducing any newtechnical matters as in the case of an amendment in which the matters to be amended
are stated with positive expressions, unless there are special circumstances. And an
amendment in which the matters to be amended are not stated in the description or
drawings should not always be deemed to be introducing a new technical matter.

50

Accordingly, whether or not an amendment to provide a “disclaimer” can be deemed
as being made “within the scope of matters” stated in the description, etc. would finallybe decided based on the fact of whether or not said amendment introduce new technicalmatters to the technical matters stated in the original description, according to theholdings stated in A. above. Thus, there is no room to assume any “exceptional”
treatments, and the statements concerning “amendment to provide ‘disclaimer’’’ in the
Examination Guideline do not conform to the interpretation of the Patent Act to theextent mentioned above, and consequently, the plaintiff ’s allegation of the same gist isappropriate.
Nevertheless, the Examination Guideline is a criterion prepared with an aim tocontribute to securing fairness and rationality of the judgment to be made by the JPO
on whether or not a patent application conforms to the requirements for patentability
provided for in the Patent Act, and it is obvious that the statements in the Examination
Guideline have not been provided with the purpose of prescribing exceptions to the
Patent Act itself. Therefore, the portion of the plaintiff ’s allegation, which is based on
the understanding that the abovementioned statements in the Examination Guideline
have been made for the purpose of explicitly providing exceptions to the Patent Act, isinappropriate in the first place. Moreover, the statement “if the invention is remarkably
different from the prior art as to the technical idea, and inherently involves an inventive
step, but accidentally overlaps with the prior art” in “(Note 1)” in the “(Explanation)”above, refers to the case where “an invention becomes patentable by making anamendment in the form of a ‘disclaimer,’” but is not a requirement for an amendment toprovide a “disclaimer” to be allowed. Thus, the portion of the plaintiff ’s allegation,
which is based on the understanding that the abovementioned statements in the
Examination Guideline are requirements for an amendment to provide a “disclaimer” tobe exceptionally approved, is also inappropriate.
(3) Regarding the use of trademarks in the statements in the scope of claims and the“restriction of the scope of claims”
A. The proviso to Article 134, paragraph (2) of the Patent Act prior to the revision in1994 provides that a correction shall be allowed only for the purpose of “restriction of
the scope of claims,” “the correction of errors,” and “the clarification of an ambiguous
statement.” Therefore, in order to have the relevant correction deemed to be made forthe purpose of “restriction of the scope of claims,” both the statements of the scope ofclaims made before and after the correction must be technically clear as a prerequisite
for comparing the scope of claims before and after the correction.
As a registered trademark, “TEPIC”, is used in the statements of the scope of51

claims after the Corrections, it would be questioned whether or not the contents of theInventions to be specified by the statements in the scope of claims after the Corrections
have been technically clarified by the use of such trademark.
B. The Corrections, which include the statements of “(D) a multifunctional epoxy
resin (“TEPIC” manufactured by Nissan Chemical Industries, Ltd.; Registered
Trademark) which is ‘an epoxy compound possessing at least two epoxy groups in themolecular unit thereof,’” have been made to exclude the portion of claims identical to thePrior Invention so as to avoid the patent from being invalidated for being identical to
the Prior Invention as held in (2)B. above. Thus the term “TEPIC” as used in the
Corrections can be deemed to be referring to the term “TEPIC” stated in the Working
Example 2 disclosed in the Prior Description.
Then, the term “TEPIC” used in the Corrections would include every productwhich may be identified by the registered trademark “TEPIC” as of the filing of thepatent application based on the Prior Description, and thus the product identified by
the registered trademark “TEPIC” cannot be deemed to be technically unclear to theabovementioned extent.
In general, the products identified by a registered trademark cannot always be
regarded as being technically clear. We cannot clearly identify which product, among
those generally called “TEPIC,” is designated by the term “TEPIC” mentioned in the
Corrections. In order to enable third parties who have accessed the statements in thecorrected description to understand the content of the inventions stated in the claims, itis basically desirable to clearly indicate in the description that “TEPIC” mentioned in
the Corrections refers to the “TEPIC” stated in Working Example 2 disclosed in the
Prior Description. In order to provide such a clear indication, it is necessary to correct
the detailed explanation of the invention included in the Description, thereby clearly
indicating that the statements in the claims have been corrected for the purpose of
excluding the invention stated in Working Example 2 disclosed in the Prior Description.
Such correction can be deemed to be made for the purpose of clarifying an ambiguous
statement in the detailed explanation of the invention upon correcting the statement in
the claims. In light of our holding shown in (2)A. above, the Corrections can be deemed
not to be introducing any new technical matters, nor can it be regarded as substantiallyenlarging or altering the scope of claims. However, due to the fact that the JPO,
according to the Examination Guideline mentioned above, conventionally treated suchcorrection as not being made “within the scope of the matters stated in the description
or drawings,” the defendant did not choose to request such correction but rather chose
to identify the relevant part of the invention to be excluded by only using the term

52

“TEPIC” when correcting the claims. Furthermore, as the term “TEPIC” used in the
Corrections can be deemed to be referring to the “TEPIC” stated in Working Example 2
disclosed in the Prior Description, the fact that the abovementioned basically desirable
approach was not taken cannot serve as the grounds for deeming the Corrections to be
unlawful.
C. Article 24 of the Ordinance for Enforcement of the Patent Act prior to the revision
by Ordinance of the Ministry of International Trade and Industry No. 41 of 1990
provides that “the description to be attached to a patent application shall be preparedwith Form No. 16.” As for Form No. 16, it is provided that “a registered trademark may
be used only in cases where the product in question cannot be indicated or identified
without using the registered trademark; in such cases, it shall be stated in the form thatthe term in question is a registered trademark.” Under the trademark registration
system, the correspondence between a registered trademark and the properties andcomposition of the product identified by the registered trademark is not secured, and aregistered trademark cannot always be regarded as being capable of identifying a
product definitely or clearly. Therefore, in general, the use of a registered trademark inthe statements in a patent description is considered to be allowable only in extremely
exceptional cases.
As held in (2)B. above, the Corrections are intended to exclude the relevant partsof the Initial Inventions that are identical to the Cited Inventions, by explaining thecontents of the Cited Inventions which are to be excluded, or listing the components
contained in Initial Inventions 1 and 2—components (A) to (D) and components (A) to(E), each of which can be chosen from a variety of substances or products, andidentifying the relevant components with negative expressions (in the form of a“disclaimer”), while citing the statements on the specific substances or products used in
Working Example 2 disclosed in the Prior Description. This seems to be the only way to
exclude the relevant parts identical to the Cited Inventions without excesses ordeficiencies. Therefore, it cannot be deemed to be in violation of Article 24 of said
Ordinance, when making the Corrections, to indicate the parts to be excluded by using
the registered trademark “TEPIC,” the factor by which the Cited Inventions can be
identified.
D. Based on the abovementioned holdings, the use of a registered trademark in the
Corrections cannot be deemed to have made the contents of the inventions unclear.
The plaintiff alleges that the Corrections have only excluded some combinationsin Initial Inventions, and thus, the Initial Inventions and the Present Inventions aresubstantially identical, and the Corrections cannot be considered to have been made for53the “restriction” of the scope of claims. This allegation can be recognized to have been
made to argue that the Initial Inventions and Prior Inventions are substantially
identical on the basis that the parts excluded by the Corrections are limited sufficiently
enough to be ignored (even if the parts to be excluded by the correction were limited, thecorrection shall still be deemed to have been made for the purpose of restricting thescope of claims). Accordingly, the appropriateness of this allegation which is identical tothe allegation made in the ground for rescission No. 2 shall be determined in 2. below.
(4) As mentioned in (2) and (3) above, the Corrections are found to be made “within thescope of claims stated in the description or drawings attached to the application” asprovided for in the proviso to Article 134, paragraph (2) of the Patent Act prior to therevision in 1994, and for the purpose of “restriction of the scope of claims,” and therefore,
the JPO Decision which allowed the Corrections is not erroneous and the ground for
rescission No. 1 is groundless.
Accordingly, the claimed inventions in question are found to be the inventions as
identified as the Present Inventions.
2. Regarding the ground for rescission No. 2 (errors in the determination on the identityof the Present Inventions and Cited Inventions)(1) The plaintiff alleges that the Corrections only excluded a specific combination of thecomponents from the Initial Inventions by providing a “disclaimer,” and thus the
Present Inventions and Cited Inventions are common in terms of the technical field, use,
and operation and effect, etc. and are based on the same technical idea. The plaintiff
further alleges that in addition to the facts that the Present Inventions are inventions
comprised components (A) to (D) and components (A) to (E), except for the combinations
excluded by the Corrections, and that components (A) to (C) and component (E) are all
well known, multifunctional epoxy resins which share the same chemical structure with“TEPIC” but which have different trade names would be included in component (D) (e.g.
“ARALDITE PT810”), and thus the Present Inventions should still be deemed to be
substantially identical to the Cited Inventions.
Therefore, first, the technical idea of the inventions mentioned above shall be
examined.
(2) Regarding the technical idea of the inventions stated in the Prior Description andthat of the Present Inventions
A. According to the Japanese Unexamined Patent Publication No. 63-278052 for the
Prior Description (Exhibit Ko No. 1), the following statements are found in the Prior
Description.
(A) “a photosensitive film composition comprising (a) a reaction product obtained by54

reacting an epoxy resin possessing at least two terminal epoxy groups with anunsaturated carboxylic acid possessing one ethylene bond at about 0.7 to 1.5 mol per
one epoxy equivalent of said epoxy resin, and then reacting the same with polybasic acidanhydride at 0.2 to 1 mol per one epoxy equivalent of said epoxy resin, (b) an
unsaturated compound possessing at least two ethylene bonds and (c) a sensitizer.”(scope of claims)(B) “The present invention relates to a photosensitive film composition, and moreparticularly relates to a photosensitive epoxy resin film composition which shall be used
as a negative type photoresist in which the portion of this composition irradiated withultraviolet rays is cured and the unexposed portion can be removed by an aqueous alkali
solution. In the past, regarding negative type photosensitive film compositions, which
may be used as a protective coat of etching resist, plating resist, or solder resist in theformation of printed wiring board, they were comprised of unsaturated compounds
possessing an ethylene bond with such epoxy acrylate and a sensitizer, and theunexposed portions were removed by organic solvents. However, the removal(development) of unexposed portions by organic solvents which required a large amountof organic solvents was accompanied by various problems including the risks ofenvironmental pollution and fires, etc. In particular, recently, as one of the issues ofenvironmental pollution, adverse effects to the human body, had gained prominent
attention, strenuous efforts have been made in handling them. The object of the present
invention is to minimize the abovementioned risks and to provide a photosensitive film
composition which is capable of obtaining a coating property excelling in desirable
resolution, flexibility, adhesion, chemical resistance and adhesion, and forming aphotosensitive film which can be developed by alkali water.” (line 15 in the left column
to line 16 in the right column on page 1).
(C) “The reaction between the abovementioned epoxy resins, unsaturated carboxylicacid, and polybasic acid shall be made in two stages. With regard to the reaction
between the epoxy resin and unsaturated carboxylic acid, first the epoxy resin will bedissolved in advance in the mixture of an inactive organic solvent, unsaturated
carboxylic acid and unsaturated compound having an ethylene bond, and apolymerization inhibitor and a catalyst shall be added thereto, which will then bereacted at a temperature in the range of 60 to 120°C until an acid value of less than 20
is obtained and then further reacted for 1 to 4 hours after the addition of a given
amount of polybasic acid. The unsaturated compound having at least two ethylene
bonds must be reacted after being exposed to ultraviolet rays, and thus, it must containa terminal ethylene group, and the composition shall be used in an amount sufficient to55

be exposed to light at a desired level.” (line 10 in the lower right column on page 2 to line
3 in the upper left column on page 3).
(D) “The inactive organic solvent to be used in the inventions shall be used at thetime of causing the epoxy resin to react with an unsaturated carboxylic acid. Specifically,
there are two ways of causing the reaction between a solid epoxy resin and an
unsaturated carboxylic acid at ambient temperature: (i) to cause the solid epoxy resin toreact with an unsaturated carboxylic acid after dissolving said solid epoxy resin by theunsaturated compound having an ethylene bond mentioned before; or (ii) to cause thesolid epoxy resin to react with an unsaturated carboxylic acid after dissolving said solid
epoxy resin by an organic solvent. The former method is used when the use of volatileorganic solvent in the composition is not desired, and the latter, when the use of large
amount of unsaturated compounds possessing at least two ethylene bonds is not desired.
These methods must be employed to realize uniform reaction between the epoxy resin,
unsaturated carboxylic compound, and polybasic acid anhydride at low viscosity. […].”(line 16 in the upper right column to line 10 in the lower left column on page 3).
(E) With regard to the photoresist composition in the inventions, 3 to 50 % by weightor preferably 5 to 30 % by weight of the abovementioned epoxy resin and 0.1 to 10 % byweight or preferably 0.1 to 5 % by weight of the epoxy curing agent may be used to havethe resist layer withstand soldering temperature and used as a permanent protective
coating.” (lines 5 to 10 in the upper right column on page 4).
B. According to the statements in the Prior Description as found in A. above, thefollowing findings may be made for the inventions stated in said Description.
The inventions stated in the Prior Description relate to a photosensitive epoxy
resin film composition which shall be used as a negative type photoresist. With thenecessity to avoid to the extent possible the problem of using a large amount of organic
solvents for removal (development) of the unexposed portion, which may cause
environmental pollution and fires, etc., the inventions aim to provide a photosensitive
film composition which is capable of forming a photosensitive film which can be
developed by alkali water, while ensuring the properties required of this kind of film
composition: that is to achieve a coating property excelling in desirable resolution,
flexibility, adhesion, chemical resistance and adhesion (as mentioned in A.(B)above).
In the inventions stated in the Prior Description, the epoxy resin, which is areaction product contained in the photosensitive coating composition, is used by beingcaused to react with an unsaturated carboxylic acid and polybasic acid in order, andthere are two ways to react the epoxy resin with the unsaturated carboxylic acid: (i) tocause the solid epoxy resin to react with an unsaturated carboxylic acid after dissolving

56

said solid epoxy resin by the unsaturated compound possessing an ethylene bondmentioned before; or (ii) to cause the solid epoxy resin to react with an unsaturated
carboxylic acid after dissolving said solid epoxy resin by an organic solvent.
Furthermore, an epoxy resin may be used to have the resist layer withstand soldering
temperature and used as a permanent protective coating (as mentioned in A.(A), (C), (D),and (E) above).
C. Statements in the description for the Patent after the Corrections
According to the Patent Publication (Exhibit Otsu No. 1), statement of theamendment of proceedings (Exhibit Otsu No. 2), and the description pertaining to thecorrection attached to the written request for a trial for correction (Exhibit Ko No. 11)
for the Patent, the following statements are found in the description for the Patent after
the Corrections (hereinafter referred to as the “Corrected Description”). Note that, theidentification of the places where the statements have been made is based on the places
where the relevant statements have been made in the patent publication for the Patent(hereinafter, all of the findings made with regard to the statements in the Corrected
Description are based on Exhibits Otsu No. 1 and No. 2 and Exhibit Ko No. 11, and theidentification of the places where the statements have been made is made by the same
method).
(A) “[Description of the prior art and the problems to be solved by the invention] A
solder resist is a substance which is used during the soldering of a given part to a
printed circuit board for the purpose of preventing molten solder from adhering toirrelevant portions and protecting circuits. It is, therefore, required to possess suchproperties as high adhesion, insulation resistance, resistance to soldering temperature,
resistance to solvents, resistance to alkalis, resistance to acids, and resistance toplating.” (lines 2 to 8 in paragraph 8 on page 4).
(B) “The solder resist in the early stage, […], displayed deficiency in resistance tosoldering temperature, resistance to chemicals, and resistance to plating. For use in the
production of industrial-use printed circuit boards, epoxy-based thermosetting typesolder resists have been disclosed […], as improved versions of the early solder resist
mentioned above. At present, they are prevailing over those of other types. For use in
the production of consumer-use printed circuit boards, since productivity is thedominant consideration, such rapid-setting ultraviolet setting type solder resists […]are prevailing now. The ultraviolet setting type solder resists, however, cannot be usedin the production of industrial-use printed circuit boards because they pose a problem
concerning the setting property in the bottom of a thick film and display deficiency inresistance to soldering temperature. These solder resists rely on the screen printing

57

method for the formation of a solder resist pattern. In the formation of solder resist
pattern which is expected to follow the recent trend of the industry toward the increased
density of integration in the printed circuit board and the adoption of the practice of
mounting component parts on the surface of a printed circuit board associated with thetrend concerning electronic equipment and devices toward reduction in weight andvolume, the ultraviolet curing type solder resists are disadvantageous in staining apattern by bleeding and in embedding between circuits and, therefore are no longer
capable of fulfilling the function expected of a solder resist film. For the solution of these
problems, dry film-type photo-solder resists and liquid photo-solder resists have beendeveloped. […]. When such dry film-type photo-solder resists are used in high-density
printed circuit boards, however, they are deficient in resistance to soldering
temperature and in adhesion.” (lines 9 to 37 in paragraph 8 on page 4).
(C) “A liquid photo-solder resist […] is deficient in adhesion to a printed circuit board,
resistance to soldering temperature, and insulation resistance. As a version which pays
due consideration to the thermosetting property in question, a solder resist ink-quality
resin composition comprising the reaction product of a phenol-novolak type epoxy resin
and an unsaturated monobasic acid, the partial reaction product of a cresol-novolak
type epoxy resin and an unsaturated monobasic acid, an organic solvent, aphotopolymerization initiator, and an amine type curing agent is disclosed […]. This
composition is intended to additionally utilize the phenomenon of thermal setting by
allowing an epoxy group to remain in the molecular unit. Since this retention of theepoxy group results in a partial decrease of the photosensitive group, the composition
suffers from a decline in the ability to cure itself upon exposure to ultraviolet light. And
because the composition does not permit ample retention of the epoxy group, it isincapable of exhibiting the fully satisfactory properties expected of a solder resist.” (line
38 in paragraph 8 on page 4 to line 7 in paragraph 9 on page 5).
(D) “As versions which involve additional use of an epoxy resin, a photosensitive
composition comprising an unsaturated compound containing two terminal ethylenegroups, a polymerization initiator, a compound containing at least two epoxy groups,
and a compound containing at least two carboxyl groups is disclosed […], and an ink
composition comprising a resin curable with an activated energy ray obtained bycausing the reaction product of a novolak type epoxy compound and an unsaturated
monocarboxylic acid to react with the reaction product of a diisocyanate and apolyfunctional (meth) acrylate containing one hydroxyl group in the molecular unit
thereof, a photoinitiator, and an organic solvent, in addition to an epoxy resin, isdisclosed […]. While […], the former composition is inferior in resistance to soldering

58

temperature and resistance to solvents […]. These compositions are both of such qualitythat when their epoxy resin contents are increased, their photosetting property or socalled sensitivity is degraded and their resistance in the exposed portion thereof to theaction of a developing solution tends to decline even to a point where they can no longer
endure protracted development and tend to induce incomplete development of an
unexposed portion.” (lines 8 to 26 in paragraph 9 on page 5).
(E) “A resist ink composition comprising a photosetting resin obtained by causing
saturated or unsaturated polybasic acid anhydride to react with the reaction product of
a novolak type epoxy compound and an unsaturated monocarboxylic acid, aphotoinitiator, and a diluent, in addition to an epoxy resin, is disclosed […]. This
composition requires the use of an aqueous alkali solution as its developing solution.
Therefore, if the content of epoxy resin possessing no solubility in the aqueous alkali
solution is increased, the composition similarly suffers from the degradation of its
sensitivity and decline of the solubility of the unexposed portion in the developing
solution to a point where the unexposed portion remains undeveloped and thedevelopment is required to be performed for an unduly long time and the exposed
portion is corroded by the developing solution.” (lines 27 to 36 in paragraph 9 on page 5).
(F) “An object of the inventions is to provide a photosensitive thermosetting resin
composition which suffers from none of the various drawbacks mentioned above, excels
in both developing property and sensitivity, enables an exposed portion thereof towithstand the developing solution, and enjoys a long pot life. Another object of theinventions is to provide a photosensitive thermosetting resin composition, which iscapable of producing a cured coating excelling in adhesion, insulation resistance,
resistance to electrolytic corrosion, resistance to soldering temperature, resistance tosolvents, resistance to alkalis, resistance to acids, and resistance to plating, which arerequired of solder resists, besides the highly desirable properties mentioned above, andwhich fits the production of consumer-use printed circuit boards and industrial-use
printed circuit boards, and a method for the formation of a solder resist pattern by theuse of said resin composition.” (lines 37 to 47 in paragraph 9 on page 5).
(G) “[Working of the invention] In the case of solder resist quality photosensitive
thermosetting resin compositions using an epoxy resin as a thermosetting component in
combination with a photosensitive prepolymer, it has been customary to employ an
epoxy resin soluble in an organic solvent. When a photosensitive thermosetting resin
composition is prepared by using an epoxy resin of this kind, it is presumed that theepoxy resin is dissolved therein in a state intertwined with the photosensitive
prepolymer (with the chain-length portions of the resins held in intertwined state). As a59

result, when the unexposed portion is developed by any exposure, for example, when acomposition using a photosensitive prepolymer soluble in an aqueous alkali solution isdeveloped with an aqueous alkali solution, since the epoxy resin is generally insoluble
in an aqueous alkali solution and it is held in a state intertwined with thephotosensitive prepolymer, the photosensitive prepolymer in the unexposed portion
suffers from loss of solubility. Further, since the epoxy resin is dissolved in the solvent,the epoxy resin reacts unduly rapidly with the curing agent and thereby induces the socalled heat fogging, a phenomenon where an incomplete development occurs during thecourses of development. Therefore, the composition acquires an inferior developing
property. When a composition using a photosensitive prepolymer soluble in the organic
solvent to be used for development is developed with an organic solvent, the composition
tends to induce the same heat fogging and suffer from a decline of developing property
due to the solubility of the epoxy resin in the solvent. Further in the exposed portion,
the coating tends to be corroded and suffers from impairment of sensitivity because thephotosensitive prepolymer permits no enhancement of cross-linking density owing to
the presence of the epoxy resin and its solution in the developing solution (organic
solvent). In both said cases, the shelf life of the photosensitive thermosetting resin
composition becomes shorter, since the reaction of the epoxy resin with the curing agent
is rapid as mentioned above. When the composition using a water-soluble epoxy resin isdeveloped with an aqueous alkali solution, since the epoxy resin is soluble in thedeveloping solution, the exposed portion tends to be corroded by the developing solution(aqueous alkali solution) and suffers from impairment of sensitivity.” (line 26 inparagraph 11 to line 6 in paragraph 12 on page 6).
(H) “[…], when the composition uses a finely powdered epoxy compound (resin)sparingly soluble in the diluent used in the composition as in the case of the compositionof the present inventions, the photosensitive prepolymer assumes a state of enveloping
the particles of the epoxy compound. When the composition using a photosensitive
prepolymer soluble in an aqueous alkali solution is developed with an aqueous alkali
solution, since the epoxy compound does not impair the solubility of the photosensitive
prepolymer and further since the epoxy compound is sparingly soluble in the diluent to
be used, the composition exhibits low reactivity with the curing agent for epoxy resinand does not easily induce the phenomenon of heat fogging and enjoys a satisfactory
developing property. When a composition using a photosensitive prepolymer soluble in
the organic solvent to be used for development, the organic solvent as a diluent, and afinely powdered epoxy compound sparingly soluble in the organic solvent, is developedwith the organic solvent mentioned above, the exposed portion is not easily corroded by60

the developing solution (organic solvent) and induces no decline of sensitivity. The
developing property of the unexposed portion is satisfactory because the epoxy
compound is in the form of a fine particle and, therefore, is incapable of lowering thesolubility of the photosensitive prepolymer and unlikely to induce the phenomenon ofheat fogging. Furthermore, in both said cases, the shelf life of the composition becomes
longer, since the reactivity of the epoxy compound with the curing agent is low because
the photosensitive prepolymer assumes a state of enveloping the particles of the epoxy
compound as mentioned above.” (lines 7 to 28 in paragraph 12 on page 6).
(I) “[…], the salient feature of the photosensitive thermosetting resin composition of
the present inventions resides in the fact that a “finely powdered” epoxy compound“sparingly soluble” in the diluent “to be used” is employed as a thermosetting
component. The finely powdered (fine particulate) epoxy compound which is an
essential component is sparingly soluble in the diluent to be used and is intended to be
used as dispersed in the finely powdered form, i.e. in the same manner as a filler. The
composition, therefore, is hardly corroded by the developing solution nor entails any
decline of sensitivity. Further, since the finely powdered epoxy compound in theunexposed portion is washed away by the developing solution during the course of thedevelopment, the composition so excels in developing property as to be developed in ashorter time. The subsequent application of heat makes the epoxy compound melt andthermoset by itself or copolymerizes it with the photosensitive prepolymer. As a result, asolder resist pattern for a printed circuit board possessing various highly desirable
properties can be produced. As it is plain from the description of the function given
above, the term “sparingly soluble” as used in the present description refers to theconcept of exhibiting not only the insolubility in the diluent to be used but also themeager solubility capable of manifesting the function described above.” (lines 29 to 45 inparagraph 12 on page 6).
D. According to the statements in the Corrected Description found in C. above, thefollowing facts may be found for the Present Inventions.
A solder resist is a substance which is used during the soldering of a given part to a
printed circuit board for the purpose of preventing molten solder from adhering toirrelevant portions and protecting circuits. It is, therefore, required to possess suchproperties as high adhesion, insulation resistance, resistance to soldering temperature,
resistance to solvents, resistance to alkalis, resistance to acids, and resistance to plating.
(as found in C.(A) above)
Conventional solder resists not only displayed deficiency in adhesion, resistance tochemicals, resistance to plating, setting property in the bottom of a thick film,

61

resistance to soldering temperature, but also had problems in embedding between
circuits and bleeding. In particular, a liquid photo-solder resist that corresponds to theincreased density of integration in the printed circuit board is deficient in thethermosetting property (i.e. adhesion, resistance to soldering temperature, andinsulation resistance) (as found in C.(B) and (C) above)
As a version which pays due consideration to the thermosetting property, there wasa solder resist ink-quality resin composition that intended to use an epoxy resin andadditionally utilize the phenomenon of thermal setting by allowing an epoxy group toremain in the molecular unit. However, since this retention of the epoxy group results ina partial decrease of the photosensitive group, the composition suffered from a decline
in the ability to cure itself upon exposure to the ultraviolet light, and further, theresistance in the exposed portion to the action of a developing solution tends to decline
even to a point where they no longer endure protracted development and tends to
induce incomplete development of an unexposed portion (as found in C.(C) and (D)above).
There was also a resist ink composition using an epoxy resin and requiring the useof an aqueous alkali solution as its developing solution. Yet, if the content of epoxy resin
possessing no solubility in the aqueous alkali solution was increased, problems occurred
such as that the composition similarly suffered from the degradation of its sensitivity,
the unexposed portion remained undeveloped or the development was required to be
performed for an unduly long time and the exposed portion was corroded by thedeveloping solution (as found in C.(E) above).
The object of the Present Inventions is to provide a photosensitive thermosetting
resin composition which suffers from none of the various drawbacks mentioned above,
excels in both developing property and sensitivity, enables an exposed portion thereof towithstand the developing solution, enjoys a long pot life, and is further equipped withthe general properties required of solder resists (as found in C. (F) above).
In the case of solder resist quality photosensitive thermosetting resin compositions
using an epoxy resin as a thermosetting component in combination with aphotosensitive prepolymer, an epoxy resin soluble in an organic solvent had generally
been used. In this case, it is presumed that the epoxy resin is dissolved therein in astate intertwined with the photosensitive prepolymer. When the composition isdeveloped with an aqueous alkali solution, for example, since the epoxy resin is
generally insoluble in an aqueous alkali solution, the photosensitive prepolymer
intertwined with the epoxy resin suffers from loss of solubility. Further, since the epoxy
resin is dissolved in the organic solvent used at the stage of generation of the resin

62

composition, the epoxy resin reacts unduly rapidly and thereby induces an incomplete
development. When an organic solvent is used as the developing solution, the epoxy
resin is dissolved in the organic solvent used at the stage of generation, and reacts
rapidly with the curing agent and thus the composition suffers from a decline ofdeveloping property, and further, the coating tends to be corroded and suffers from
impairment of sensitivity because the epoxy resin is dissolved into the developing
solution (organic solvent) in the exposed portion (as found in C. (G) above).
However, the salient feature of the Present Inventions resides in the fact that afinely powdered epoxy compound (the same as “epoxy resin”) sparingly soluble in thediluent to be used is employed as a thermosetting component. When the composition
uses a finely powdered epoxy compound sparingly soluble in the diluent used in thecomposition as in the case of the composition of the present inventions, thephotosensitive prepolymer assumes a state of enveloping the particles of the epoxy
compound, and thus the solubility of the photosensitive prepolymer is not impaired.
Further, since the epoxy compound is sparingly soluble in the diluent to be used, thecomposition exhibits low reactivity between the epoxy resin and the curing agent anddoes not lower the developing property. As a result, the exposed portion is not easily
corroded by the developing solution and the shelf life of the composition becomes longer(as found in C.(H) and (I) above).
E. According to the findings made in B. and D. above, the inventions stated in the
Prior Description and the Present Inventions are common in that they are all resin
compositions to be used as solder resists and share the same technical filed to be used.
On the other hand, while the inventions stated in the Prior Description aim toprovide a photosensitive coating composition which is capable of being developed byalkali water based on the problems found in the organic solvent used as the developing
solution in the past, the Present Inventions are aimed at providing a photosensitive
thermosetting resin composition which excels both in developing property andsensitivity, enables an exposed portion thereof to withstand the developing solution,
enjoys a long pot life, and which also avoids the problems found in the conventionalsolder resists in either cases where an organic solution or aqueous alkali solution isused as the developing solution. Further, the feature of the Present Inventions resides
in the fact that a finely powdered epoxy resin sparingly soluble in the diluent is used as
the thermosetting component to achieve such object. However, the feature of the
Present Inventions, which is to use a “finely powdered epoxy resin sparingly soluble inthe diluent,” has not been disclosed in the Prior Description at all. Rather, in thestatements which serve as the basis for the constitutional feature of the inventions

63

stated in the Prior Description, the process to cause the epoxy resin in said inventions,after the “dissolution” thereof, to react with an unsaturated carboxylic acid is described
as a prerequisite. Nevertheless, according to the statements in the Corrected
Description as found in C.(I) above, the term “sparingly soluble” in the Present
Inventions is found to be used as a concept including the “meager solubility” to a certain
extent, and therefore, the “dissolution” of the epoxy resin itself does not conflict with thestatements in the Corrected Description. Yet, at least no statement is found in the Prior
Description that designate the element of being “sparingly soluble” as a necessary
constitution of the inventions.
Then, there is no choice but to consider that the inventions stated in the Prior
Description and Present Inventions differ in terms of the problems to be solved, and theconstitution and working of the inventions, as the means to solve such problems, andthus these inventions are based on different technical ideas.
(3) As stated in (2) above, the inventions stated in the Prior Description and the
Present Inventions are based on different technical ideas. Further, the statements in
the Prior Description other than the part disclosing Working Example 2 cannot be
deemed to have disclosed any inventions substantially identical to the Present
Inventions, and therefore the Present Inventions and the inventions stated in the Prior
Description are not substantially identical.
Accordingly, the patent for the Present Inventions cannot be considered to havebeen granted in violation of the provision of Article 29-2 of the Patent Act prior to therevision in 1994, and thus the determination made in the JPO Decision is not erroneous,and the ground for rescission No.2 is groundless.
3. Regarding the ground for rescission No. 3 (errors in the determinations on the
difference between Present Invention 1 and Invention Based on Exhibit Ko No. 3)(1) In this regard, the plaintiff alleges as follows: In Working Example 4 disclosed in
Exhibit Ko No.3, “EPICLON EXA-1514” is stated as one of the possible options forbisphenol S type epoxy resin, and in Exhibit Ko No.3, N-glycidl type epoxy resin andbisphenol S type epoxy resin are listed in the same category. This N-glycidl type epoxy
resin and heterocyclic epoxy resin mentioned as one of the alternatives for component(D) of Present Invention 1 are names of components that indicate the same chemical
constitution from different viewpoints, and there are compounds such as triglycidl
isocyanurate that correspond to both components. Therefore, Present Invention 1 isnothing but an invention that used triglycidl isocyanurate, which can be used in thesame manner as bisphenol S type epoxy resin and is publicly known as N-glycidl typeepoxy resin, in place of the bisphenol S type epoxy resin used in the photosensitive64

thermosetting epoxy resin composition in Working Example 4 disclosed in Exhibit Ko
No. 3. Consequently, inventions of such kind could have easily been invented by aperson skilled in the art based on the Invention Based on Exhibit Ko No. 3. This court
will examine this allegation in the following parts.
(2) In addition to the matters found in the JPO Decision (summary of matters (1)through (11), over which there are no disputes between the parties), the following
statements are found in Exhibit Ko No. 3.
A. “When conventional techniques, such as the screen printing method […] are used,in many cases, a phenomenon of bleeding, blurring or dripping at the time of printing
occurred, and thus, serious difficulties have been faced in coping with the recent
high-density printed circuit boards. To solve these problems, dry-film type photo
resists and liquid photo resists have been developed. Yet, dry-film type photo resists
tend to generate bubbles at the time of thermocompression and are inferior inresistance to heat and adhesion. […]. Meanwhile, liquid resists which are now on themarket use organic solvents as their developing solution, and thus involve the problemof air pollution, […], and further involve concerns related to resistance to solvents andresistance to acids.” (lines 2 to 19 in the upper left column on page 2).
B. “Problems to be solved by the inventions. […], the object of the present inventions
is to provide a liquid resist ink composition which suffers from none of theabovementioned drawbacks, excels in photosetting property, adhesion, solidity,
resistance to solvents and resistance to acids, and is capable of being developed bydilute aqueous alkali solution. Especially, the object of the present inventions is toprovide a liquid resist ink composition which is capable of being developed by diluent
aqueous alkali solutions, and which is in particular suitable for production of
consumer-use printed circuit boards and industrial-use printed circuit boards, byachieving a cured coating possessing various properties such as electric property,
resistance to heat and resistance to plating, in addition to the abovementioned highly
desirable properties.” (lines 1 to 13 in the upper right column on page 2).
At the same time, it is found that in Exhibit Ko No. 3, “bisphenol S type epoxy
resin” and “N-glycidl type epoxy resin” are listed in the same category as the possible
alternatives for an “epoxy compound containing at least two epoxy groups in themolecular unit thereof,” which is a component to be additionally mixed in as
appropriate in the Invention Based on Exhibit Ko No. 3 (summary of matter (9) in the
JPO Decision), and that a photosensitive thermosetting resin composition containing“EPICLON EXA-1514,” which is a “bisphenol S type epoxy resin,” is stated as Working
Example 4 (summary of matter (10) in the JPO Decision), and the plaintiff has made65

the allegations mentioned in (1) above based on the such statements.
(3) Exhibit Ko No. 3, in the first place, has no statements on the use of an epoxy resin
which is in a “finely powdered form and sparingly soluble in the diluent to be used.”
According to the statements in (2) above, the object of the Invention Based on Exhibit
Ko No. 3 is to provide a liquid resist ink composition, which excels in generalproperties required of resist ink compositions, especially in resistance to heat andresistance to solvents, etc., and which is capable of being developed by dilute aqueous
alkali solutions (The defendant, who is the applicant of the Patent, is also theapplicant of the patent for the invention stated in Exhibit Ko No. 3. In the Corrected
Description, the resist ink composition as stated in Exhibit Ko No. 3 has been stated as
one of the prior arts, with the following problems: As said resist ink composition
requires the use of an aqueous alkali solution as its developing solution, if the content
of epoxy resin possessing no solubility in the aqueous alkali solution is increased, thecomposition similarly suffers from the degradation of its sensitivity and decline of its
solubility of the unexposed portion in the developing solution to a point where theunexposed portion remains undeveloped, the development is required to be performed
for an unduly long time and the exposed portion is corroded by the developing solution(lines 26 to 36 in paragraph 9 on page 5).
Meanwhile, as found in 2(2)D. and E. above, the object of Present Invention 1 is toprovide a photosensitive thermosetting resin composition which excels both indeveloping property and sensitivity, enables an exposed portion thereof to withstandthe developing solution, and enjoys a long pot life. Moreover, as mentioned in 2(2)D.
(and in 2(2)C.(G)), Present Invention 1 acknowledges the following problems as its
technical problems: On the basis that when a photosensitive thermosetting resin
compositions uses an epoxy resin as a thermosetting component in combination with aphotosensitive prepolymer, it has been customary to employ an epoxy resin soluble inan organic solvent, and it is presumed that the epoxy resin is dissolved therein in astate intertwined with the photosensitive prepolymer, if the composition is developedby an aqueous alkali solution, since the epoxy resin is generally insoluble in an
aqueous alkali solution, the photosensitive prepolymer intertwined with the epoxy
resin suffers from loss of solubility. Further, since the epoxy resin is dissolved in theorganic solvent used at the stage of generating the resin composition, the epoxy resin
reacts unduly rapidly with the curing agent and thereby induces an incomplete
development. Meanwhile, based on the same conditions, when an organic solvent isused as the developing solution, the epoxy resin is dissolved in the solvent and reacts
rapidly with the curing agent, which results in lowering developing property. Further66

in the exposed portion, the coating tends to be corroded and suffers from impairment ofsensitivity because the epoxy resin dissolves into the developing solution (When thecomposition using a water-soluble epoxy resin is developed with an aqueous alkali
solution, since the epoxy resin is soluble in the developing solution, the exposed portion
tends to be corroded by the developing solution and suffers from impairment ofsensitivity). Further, as mentioned in 2(2)D. (and 2(2)C,(H) and (I)), Present Invention
1 achieves the following effects in both cases where either an organic solvent or
aqueous alkali solution is used as the developing solution by adopting the means forsolving the problems, i.e. to employ a finely powdered epoxy compound (the same as“epoxy resin”) sparingly soluble in the diluent to be used as the thermosetting
component: As a result of employing a finely powdered epoxy compound sparingly
soluble in the diluent to be used, the photosensitive prepolymer assumes a state ofenveloping the particles of the epoxy resin, and thus the solubility of the photosensitive
prepolymer would not be impaired. Moreover, the developing property also would not
be impaired as the reactivity of the epoxy resin with the curing agent is low, andfurther the exposed portion is not easily corroded by the developing solution and theshelf life of the composition becomes longer. Then, Present Invention 1 is completely
different from the Invention Based on Exhibit Ko No. 3 from the viewpoint of the
problems recognized, and thus should be considered to have adopted a different means
for solving the problems in connection thereto.
Accordingly, the Invention Based on Exhibit Ko No. 3 differs from Present
Invention 1 in terms of the object of the invention, and what is more, we should
determine that Exhibit Ko No. 3 does not provide any suggestion on the technicalproblem to be solved by Present Invention 1 and the means for solving it. As alleged by
the plaintiff, “N-glycidl type epoxy resin” (Invention Based on Exhibit Ko No. 3) and“heterocyclic epoxy resin” (Present Invention 1) are names of ingredients that indicate
the same chemical constitution from different viewpoints, and there is a publicly
known compound that corresponds to both components, tryglycidl isocyanurate.
However, this fact cannot be the grounds for concluding that a person skilled in the art
who has accessed the statements in Exhibit Ko No. 3 would have recognized theessence of the technical problem to be solved by Present Invention 1 and easily
conceived of, as the means for solving the technical problem, the composition
corresponding to the difference between Present Invention 1 and the Invention Basedon Exhibit Ko No. 3 (the composition using a compound that is “in a finely powdered
form and sparingly soluble in the diluent to be used” as an epoxy compound ofcomponent (D)).

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Based on the abovementioned findings, it should be deemed that a person skilled in
the art could not have easily conceived of Present Invention 1 based on the Invention
Based on Exhibit Ko No. 3. Moreover, the Patent has not been granted in violation of
Article 29, paragraph (2) of the Patent Act prior to the revision by Act No. 41 of 1999 forwhich it was provided that the provisions then in force shall remain applicable pursuant
to Article 2, paragraph (12) of the Supplementary Provisions of said Act (hereinafter thephrase starting from “prior to” shall simply be referred to as “prior to the revision in1999”), and therefore, there are no errors in the determinations made in the JPO
Decision, and the ground for rescission No. 3 is groundless.
4. Regarding the ground for rescission No. 4 (errors in the determinations on“incomplete inventions”)(1) The following allegations made by the plaintiff shall be examined below: As there
are 60 alternatives (or 450 alternatives or 720 alternatives) for the combination ofcomponent (A) and component (D) of Present Invention 1, it is impossible to presume
that the inventions were completed for all of such alternatives by just the three Working
Examples disclosed in the Corrected Description, and thus, Present Invention 1
includes parts which are yet to be completed and is a incomplete invention in its
entirety.
(2) As alleged by the plaintiff, the Corrected Description can be found to have provided
12 alternatives in total comprising 4 alternatives for group (a), 6 alternatives for group(b) and 2 alternatives for group (c) of component (A) of Present Invention 1. Moreover,
the Corrected Description is found to have listed the abovementioned alternatives
following the statement of “The photosensitive prepolymer (A) possessing at least two
ethylenically unsaturated bonds in the molecular unit thereof as mentioned above may
be, for example, (a) a reaction product (a-1-1) obtained by causing a saturated or
unsaturated polybasic acid anhydride to react with the secondary hydroxyl group of acomplete esterification product produced by the esterification reaction of a complete
esterification product (a-1) of a novolak type epoxy compound and an unsaturated
monocarboxylic acid” (line 49 in paragraph 12 on page 6 to line 5 in paragraph 13 on
page 7), and listed a number of names of products or publicly known substances as a
specific example of each alternative(line 46 in paragraph 13 on page 7 to line 39 inparagraph 15 on page 8).
According to the abovementioned statements in the Corrected Description, the“photosensitive prepolymer possessing at least two ethylenically unsaturated bonds inthe molecular unit thereof,” which was in the public domain, has been separately
prescribed for each starting substance, intermediate product and reaction product, in68

component (A) of Present Invention 1. As these substances can be considered to be agroup of chemicals from their characteristics, each substance belonging to component(A) may be assumed to perform the same functions as a photosensitive prepolymer.
At the same time, the Corrected Description is found to contain the following
statement: “Then, as the finely powdered epoxy compound (D) possessing at least two
epoxy groups in the molecular unit thereof, any of the epoxy compounds publicly known
and commonly used can be employed. This epoxy compound, however, is required to becapable of being dispersed in a finely powdered form in the photosensitive prepolymer(A) possessing at least two ethylenically unsaturated bonds in the molecular unit
thereof and is further required to assume a solid or semisolid state at ambient
temperature. It is also required, at the time of kneading, to avoid dissolving in thephotosensitive prepolymer (A) mentioned above and the diluent (C) to be used and/or
manifest solubility of the degree productive of no adverse effects upon photosensitivity
and developing property. As desirable examples of the epoxy compound satisfying allthese requirements, […]; diglycidl phthalates […]; hetrocyclic epoxy resins represented
by the product of Nissan Chemical Industries, Ltd. marketed under the registeredtrademark designation of “TEPIC” and that of Ciba-Geigy K.K., marketed under theregistered trademark designation of “ARALDITE PT810”; bixylenol type epoxy resins[…]; biphenol type epoxy resins […]; and tetraglycidl xylenoyl ethane resins […].” (lines
8 to 28 in paragraph 19 on page 10). According to this statement and the content ofPresent Invention 1, component (D) of Present Invention 1 is found to have fivealternatives, either of which is “a finely powdered epoxy compound possessing at least
two epoxy groups in the molecular unit thereof,” is sparingly soluble in the diluent to be
used, and assumes a solid or semi-solid state at ambient temperature.
Then, the five substances mentioned as the alternatives for component (D) can bedeemed to be a group of chemicals possessing the abovementioned characteristics, andthus it may be assumed they achieve the same effect, which is the object of Present
Invention 1, even if they were substituted for each other.
(3) Furthermore, it is found that the Corrected Description contains (i) Working
Examples 3 to 6, where typical substances for components (A) and (D) have been mixed,
as corresponding to Present Invention 1 (line 48 in paragraph 25 on page 13 to line 44 inparagraph 27 on page 14); and (ii) specific test results and effects of the properties, suchas photosensitivity and developing property, for each working example (line 42 inparagraph 28 on page 14 to line 48 in paragraph 32 on page 16, and table 1).
The plaintiff alleges that Working Example 6 disclosed in the Corrected Description
cannot be considered to be a working example of Present Invention 1. Yet, as a69

composition containing “5.0 parts of finely powdered biphenol type epoxy resin (productof Yuka Shell Epoxy Kabushiki Kaisha marketed under the registered trademark
designation of ‘EPIKOTE YL-6056’)” is stated in Working Example 6, and such epoxy
resin corresponds to component (D) of Present Invention 1, Working Example 6 isclearly a working example of Present Invention 1.
(4) Based on the abovementioned findings, Present Invention 1 achieves theadvantageous effect stated in the Corrected Description by combining the components
specified in its description and referring to the statements included in the description
such as the working examples. Accordingly, Present Invention 1 cannot be deemed to be
an incomplete invention, and thus the Patent has not been granted in violation of themain clause of Article 29, paragraph (1) of the Patent Act prior to the revision in 1999,
and thus the allegation(s) made by the plaintiff is unacceptable.
In addition, the plaintiff, in relation to this point, alleges that the characteristic
group which characterizes the physical properties of the resins included in each groupfor component (A) widely varies and that the physical properties of the resist patterndiffer in the case where a resin is used singly or in combination with other resin(s).
However, as found in 2(2)D. and E. above, the salient feature of Present Invention 1
resides in the fact that “a finely powdered epoxy compound exhibiting sparing solubility
in the diluent to be used is employed as a thermosetting component” in thephotosensitive resin composition comprising a photosensitive prepolymer of component(A), and thus the advantageous effects in the developing property and other properties
found at the tests for each working examples as mentioned in (3) above can be deemed
to be owing to component (D). Accordingly, such allegation made by the plaintiff does
not affect the abovementioned holding.
Therefore, the ground for rescission No. 4 is groundless.
5. Regarding the ground for rescission No. 5 (errors in the determinations on“insufficient statements”)(1) The plaintiff is recognized to have made the following allegations: The detailed
explanation of the inventions included in the Corrected Description has not satisfied therequirements provided for in Article 36, paragraph (3) of the Patent Act prior to therevision by Act No. 30 of 1990 for which it was provided that the provisions then in force
shall remain applicable pursuant to Article 9 of the Supplementary Provisions of said
Act (Article 2, paragraph (1) of the Supplementary Provisions of the Order for
Enforcement of the Act on Special Provisions for Procedures related to Industrial
Property Right) (hereinafter the phrase starting from “prior to” shall simply be referred
to as the “prior to the revision in 1990”). And further, the scope of claims which stated70matters related to the specific embodiment of the inventions that was not clearly statedin the detailed explanation of the inventions has not satisfied the requirements
provided for in Article 36, paragraph (4) of the Patent Act prior to the revision by Act No.
27 of 1987 for which it was provided that the provisions then in force shall remain
applicable pursuant to Article 3, paragraph (1) of the Supplementary Provisions of said
Act (hereinafter the phrase starting from “prior to” shall simply be referred to as the“prior to the revision in 1987”).
(2) However, as this court has held in 4. above, the Corrected Description has disclosed
working examples where the advantageous effect of Present Invention 1 can be
confirmed and each alternative for components (A) to (D) may be assumed to achieve
the same advantageous effect as a photosensitive thermosetting resin composition.
Moreover, the Corrected Description has not only stated in a specific manner the
combination of components (A) to (D) in the working examples, but also listed specificnames of products and substances for components (A) to (D). Thus, to obtain aphotosensitive thermosetting resin composition of Present Invention 1 by a combinationdifferent from those disclosed in the working examples should not require a person
skilled in the art to carry out excessive trial and error.
Accordingly, no insufficient statements in violation of Article 36, paragraph (3) ofthe Patent Act prior to the revision in 1990 can be found in the Corrected Description,and thus, the allegation of the plaintiff arguing insufficient statements in violation of
Article 36, paragraph (4) of the Patent Act prior to the revision in 1987 lacks
prerequisite, and is unreasonable.
Therefore, the ground for rescission No. 5 is groundless.
6. Regarding the ground for rescission No. 6 (errors in the determinations on Present
Invention 2)
As found in 3. to 5. above, the grounds for rescission No. 3 to No. 5 regarding Present
Invention 1 are groundless. Present Invention 2, which pertains to the process of
forming a solder resist pattern, differs from Present Invention 1 only in that component(E) would be further contained in the resin composition and corresponds to Present
Invention 1 in that it contains components (A) to (D). Moreover, according to thestatements in the Corrected Description (line 19 in paragraph 21 to line 11 in paragraph
22 on page 11), publicly known and commonly used curing agents can be used as the“curing agent for epoxy resins” of component (E).
Therefore, the allegation of the plaintiff arguing the determination made in the JPO
Decision regarding Present Invention 2 to be erroneous for the same reasons asprovided for in the grounds for rescission No. 3 to No. 5 is unreasonable.

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Accordingly, the ground for rescission No. 6 is groundless.
No. 6 Conclusion
Based on the abovementioned holdings, all of the grounds for rescission of the JPO
Decision as alleged by the plaintiff are groundless, and therefore the plaintiff ’s claims
should be dismissed and the judgment shall be rendered in the form of the main text.
Intellectual Property High Court, Special Division
Presiding judge: TSUKAHARA Tomokatsu
Judge: NAKANO Tetsuhiro
Judge: IIMURA Toshiaki
Judge: TANAKA Nobuyoshi
Judge: MORISHITA Hiroki

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