2005 (Gyo-Ke) 10042, Case of seeking rescission of a decision to revoke a patent (Date ofconclusion of oral argument: October 7, 2005)
Judgment
Plaintiff: Nippon Synthetic Chemical Industry Co., Ltd.
Counsel patent attorney: ASAHINA Sota
Same as above: AKIYAMA Fumio
Defendant: NAKAJIMA Makoto, Commissioner of the Japan Patent Office
Designated representative: TOYOOKA Shizuo
Same as above: KANOMATA Toshio
Same as above: SUEMASA Kiyoshige
Same as above: MIYASHITA Masayuki
Same as above: YANAGI Kazuko
Main Text
The plaintiff's claim is dismissed.
The plaintiff shall bear the court costs.
Facts and reasonsNo. 1 Judicial decision sought by the parties
1. Plaintiff(1) A decision made by the Japan Patent Office (JPO) on Opposition No. 2003-70728 on November
26, 2004 shall be rescinded.
(2) The defendant shall bear the court costs.
2. Defendant
The same effect as the main text
No. 2 Outline of the caseWith regard to an opposition to the grant of a patent which was filed before the enforcement of
Act No. 47 of 2003 (January 1, 2004) for a patent for the invention entitled "Polarizing film
manufacturing method" that is held by the plaintiff, the JPO made a decision to revoke the patent on
the grounds of deficiency in the statement in the description attached to the written application of
the patent application (which refers to a "description" as a filing document that includes the "scopeof claims" as prescribed in the Patent Act before the revision by Act No. 24 of 2002; the same shallapply hereinafter). In response to this, the plaintiff filed this case to seek the rescission of thedecision based on Article 2, paragraph (9) of the Supplementary Provisions of Act No. 47 of 2003,1

alleging that the determination in the decision is erroneous.
The patent includes, as a constituent feature, a product specified by the range indicated bycertain mathematical formulas using two technical parameters that indicate characteristic values,
and it is related to a parameter invention. The invention is considered as bringing about an effect ofmaking it possible to manufacture polarizing films which are superior in durability and polarization
performance and also have good performance in the characteristic of stability at the time of
manufacture. However, with regard to the legality of statements in the description, that is, whether
an invention that is worth monopolistic and exclusive protection by a patent is disclosed in thedescription in such a manner that complies with the provisions of Article 36 of the Patent Act, themajor issues of this case are (1) whether the description satisfies the support requirement or the
enablement requirement, (2) whether it is advisable to supplement the content described in thedescription through ex-post facto submission of experimental data not contained in the statements inthe description, and (3) whether it is advisable to retroactively apply the Examination Guidelines forPatent and Utility Model.
No. 3 Facts undisputed by the parties
1. Development of procedures at the JPO(1) The plaintiff filed a patent application (Patent Application No. 1993-287608; hereinafterreferred to as the "Application") for an invention entitled "Polarizing film manufacturing method"on October 21, 1993. The JPO made a decision to the effect that a patent is to be granted for the
Application, and the establishment of the patent right was registered as Patent No. 3327423(hereinafter this patent shall be referred to as the "Patent") on July 12, 2002.
(2) After that, an opposition to the grant of a patent (hereinafter referred to as the "Opposition") was
filed against the Patent. The JPO examined the Opposition as Opposition No. 2003-70728 and madea decision to the effect that "The patent for the claims of Patent No. 3327423 is to be revoked"(Note: this is understood as meaning that the patent for claims 1 to 3 of Patent No. 3327423 is to be
revoked) on November 26, 2004. A copy of the decision was delivered to the plaintiff on December
18, 2004.
2. Description of claims 1 to 3 (hereinafter claim 1 shall be referred to as "Claim 1") in the scope ofclaims in the description attached to the written application of the Application (Exhibit Ko No. 3;
hereinafter referred to as the "Description")[Claim 1] A polarizing film manufacturing method which is characterized by that, in manufacturinga polarizing film by uniaxially stretching a polyvinyl alcohol raw film, a polyvinyl alcohol film
which is 30 to 100 μm thick and for which the relationship between complete dissolution
temperature in hot water (X) and equilibrium swelling degree (Y) is within the range indicated by
the following formulas is used as a raw film and the polyvinyl alcohol film is uniaxially stretched2

1.2 to 2 times in the dyeing treatment process and is further uniaxially stretched 2 to 6 times in theboron compound treatment process, respectively:
Y > -0.0667X + 6.73 …. (I)X ≧ 65 .... (II)X: Complete dissolution temperature (C) of a 2 cm-square film piece in hot water
Y: Equilibrium swelling degree (weight fraction) calculated by dividing the weight of the film after
dipping by the weight of the film after drying as indicated in the following formula when a 10
cm-square film piece is dipped in a constant temperature water bath of 20C for 15 minutes forswelling and is then dried at 105C for two hours[Claim 2] A manufacturing method described in claim 1 which is characterized by using a polyvinyl
alcohol raw film of which the complete dissolution temperature is 65 to 90C
[Claim 3] A manufacturing method described in claim 1 which is characterized by using a polyvinyl
alcohol raw film of which the average degree of polymerization is 2,600 or higher(hereinafter, the inventions described in claims 1 to 3 shall be referred to as "Invention 1" to"Invention 3," respectively, and Inventions 1 to 3 shall be collectively referred to as the"Inventions")
3. Reasons for the decision
The reasons for the decision are as described in a copy of the original "decision on opposition"
separately attached, and the gist thereof is as follows. (1) The constituent feature of Invention 1 is touse a polyvinyl alcohol film (hereinafter a polyvinyl alcohol film shall be referred to as "PVA film"
and polyvinyl alcohol shall be referred to as "PVA") for which the relationship between complete
dissolution temperature in hot water (X) and equilibrium swelling degree (Y) is within the range
indicated by the following formulas: Y > -0.0667X + 6.73 [hereinafter referred to as "Formula (I)"]and X ≧ 65 [hereinafter referred to as "Formula (II)"]. The range defined by these two formulas isextensive, but there are not sufficient working examples to provide convincing evidence

that allof those that satisfy these mathematical formulas bring about an effect that is superior inpolarization performance and durability performance. In addition, it cannot be confirmed by othermeans, in light of the statement in the Description and common general technical knowledge in therelevant field, that all of those that satisfy the aforementioned two formulas bring about the
aforementioned superior effect. Moreover, grounds and reasons for arriving at the aforementioned
two formulas are unclear. Therefore, in the end, the inventions for which a patent is sought, that is,
Invention 1 and Inventions 2 and 3 which cite Invention 1, cannot be recognized as those describedin the detailed explanation of the invention. Consequently, the statement of the scope of claims in
the Description violates the provisions of Article 36, paragraph (5), item (i) of the Patent Act (Note:
it is understood as meaning Article 36, paragraph (5), item (i) of the Patent Act before revision by3

Act No. 116 of 1994 [hereinafter referred to as the "1994 Revision Act"] [Article 36, paragraph (6),item (i) of the Patent Act after said revision]; hereinafter referred to as "Article 36, paragraph (5),item (i) of the Old Patent Act"). (2) The range which satisfies the aforementioned two formulasprescribed in claim 1 is extensive. It is thus ambiguous, even in consideration of the detailed
explanation of the invention in the Description, what manufacturing conditions (degree ofpolymerization of PVA, dry substrate, drying temperature, drying time, etc.) are required to obtain afilm that satisfies the aforementioned two formulas and is superior in polarization performance anddurability performance (Note: This is understood as meaning that it is ambiguous, even inconsideration of the detailed explanation of the invention in the Description, what manufacturingconditions are required to obtain a PVA film that satisfies the aforementioned two formulas).
Therefore, the detailed explanation of the invention in the Description is not recognized as
describing the purpose, constitution, and effect of the invention to the extent that a person ordinarily
skilled in the art can easily work the invention. Consequently, it violates Article 36, paragraph (4)of the Patent Act (Note: This is understood as meaning Article 36, paragraph (4) of the Patent Act
before revision by the 1994 Revision Act; hereinafter referred to as "Article 36, paragraph (4) of the
Old Patent Act"). (3) Consequently, the patent for Inventions 1 to 3 was granted for a patentapplication which does not satisfy the requirements prescribed in Article 36, paragraph (4) andparagraph (5), item (i) of the Old Patent Act and falls under Article 113, item (iv) of the Patent Act.
Therefore, it should be revoked (Note: This is understood as an error in application of laws andregulations; it should be stated that the patent should be revoked pursuant to Article 4, paragraph (2)of Cabinet Order No. 205 of 1995 that is based on Article 14 of the Supplementary Provisions of
the 1994 Revision Act.).
No. 4 Grounds for rescission of the decision alleged by the plaintiff
The determination in the decision to the effect that the statement in the Description violates theprovisions of Article 36, paragraph (5), item (i) and paragraph (4) of the Old Patent Act is erroneous(grounds for rescission 1 and 2), and it is obvious that the error affects the conclusion of thedecision. Therefore, the decision should be rescinded as one going against law.
1. Ground for rescission 1 (error in the determination of violation of Article 36, paragraph (5), item(i) of the Old Patent Act)
(1) In the decision, the JPO determined as follows: "The range defined by two formulas, 'Y >-0.0667X + 6.73' and 'X ≧ 65,' is extensive. There are not sufficient working examples to provide
convincing evidence that all of those that satisfy these mathematical formulas bring about an effectthat is superior in polarization performance and durability performance. In addition, it cannot be
confirmed by other means, in light of the statement in the description of the patent (Note: theDescription) and common general technical knowledge in the relevant field, that all of those that4

satisfy the aforementioned two formulas bring about the aforementioned superior effect" (second
paragraph on page 4 of the copy of the original decision). However, despite submission of anexperimental results certificate which describes ten pieces of experimental data (Exhibit Ko No. 6;
hereinafter referred to as "Ko No. 6 Experimental Certificate") by the plaintiff at the stage of theproceedings of the Opposition, the determination was made based only on four pieces of data intotal, specifically, two pieces of data on working examples 1 and 2 and two pieces of data on
comparative examples 1 and 2, which are described in the Description, without taking Ko No. 6
Experimental Certificate into account at all, on the premise that there is no other experimental data
than these four pieces of data. The determination is erroneous as mentioned below.
That is, the formula, "Y > -0.0667X + 6.73" [Formula (I)], was arrived at by plotting 14 piecesof experimental data in total, including ten pieces of data described in Ko No. 6 Experimental
Certificate which are based on experiments that the plaintiff conducted during the period between
May and August 1993 before filing the Application, as well as four pieces of experimental data on
working examples, etc. described in the Description. Moreover, paragraph [0013] of the Description
states that PVA films of which complete dissolution temperature in hot water (X) is 65C or lower
cannot be practically used as they partially dissolve or deteriorate during the process of stretching.
Therefore, a person ordinarily skilled in the art can easily understand that a PVA film for which therelationship between complete dissolution temperature in hot water (X) and equilibrium swelling
degree (Y) is within the range limited by two formulas, Formula (I) and Formula (II), brings about
an effect that is superior in polarization performance and durability performance.
The decision states that the range limited by the aforementioned two formulas is extensive.
However, equilibrium swelling degree (Y) is a value calculated by dividing the weight of the film
after dipping by the weight of the film after drying, and it is certainly not lower than 1, as its lower
limit is 1 in the case where the weight before and after dipping is the same. In addition, "complete
dissolution temperature" in the Inventions are almost the same as the "/maximum allowable watertemperature." According to Figure 100 indicating the relationship between heat treatment
temperature and maximum allowable water temperature of PVA, which is included in Koichi
Nagano, et al., Pobaru kaitei shinpan (Poval: revised new edition) (April 1, 1981, published by
Kobunshi Kankokai; Exhibit Ko No. 8; hereinafter referred to as "Ko No. 8 Document"), "complete
dissolution temperature of 65C or higher" corresponds to "heat treatment temperature of 110 C or
higher." According to Figure 101 indicating the relationship between heat treatment temperatureand swelling degree in said document, swelling degree is approximately 1.5 or lower if "heattreatment temperature is 110C or higher." Then, as equilibrium swelling degree is equal toswelling degree plus 1 ("Kobunshi kagaku (Polymer chemistry)," Kobunshi gakkai ronbunshu(Collection of papers by the Society of Polymer Science), vol. 12, no. 128 (December 25, 1955,

5

published by the Society of Polymer Science; Exhibit Ko No. 10), the upper limit of equilibriumswelling degree is around 2.5 at the highest in the case of complete dissolution temperature in hot
water of 65C or higher in the Inventions. Therefore, the substantive upper limit never exceeds 3.0
even in consideration of measurement error and other conditions. On the other hand, the lower limitof complete dissolution temperature in hot water (X) is 65C as defined in Claim 1 and the upper
limit thereof is substantially around 90C. In this manner, the range which satisfies the two
formulas, Formula (I) and Formula (II), is never extensive without limit. Moreover, Figure 1 in
Attachment 2 is the result of plotting 14 pieces of data in total, specifically, the eight pieces ofexperimental data and two pieces of comparative experimental data described in Ko No. 6
Experimental Certificate, in addition to two working examples and two comparative examples
described in the Description. As revealed by Figure 1, the scope of working is not very narrowcompared to the range limited by the aforementioned two formulas.
Incidentally, the defendant alleges that the plaintiff's allegation to the effect that the upper limitof equilibrium swelling degree is 3.0 is groundless as the heat treatment temperature calculated
based on Figure 100 in Ko No. 8 Document (110 C) differs from the heat treatment temperature ofworking example 2 described in the Description (90 C). However, if other conditions arecompletely the same, both of these heat treatment temperatures become completely the same.
Figure 104 in Ko No. 8 Document indicates that swelling degree significantly differs even at thesame heat treatment temperature if only the degree of saponification differs by only 1%. The resinof the aforementioned working example 2 and the resin of Ko No. 8 Document differ in the degreeof saponification by 0.4% and also significantly differ in the degree of polymerization. Therefore, it
is natural that the heat treatment temperature of the aforementioned working example 2 differs froma value calculated based on Figure 100 in Ko No. 8 Document. Consequently, the defendant's
allegation is unreasonable.
As mentioned above, taking into account the ten pieces of experimental data described in Ko
No. 6 Experimental Certificate and the four pieces of experimental data stated in the Description,
the number of specific examples is sufficient to arrive at the aforementioned two formulas, and isalso sufficient to confirm that those that satisfy the aforementioned two formulas bring about asuperior effect.
(2) In the decision, the JPO determines as follows: "Addition of experiments that were conductedunder significantly different experimental conditions is not a supplement to the working examplesof the Inventions but is an addition of new working examples, and those experimental results cannot
be taken into account in the proceedings of this case (Note: the Opposition)" (paragraph 4 on page 5of the copy of the original decision). However, this determination is erroneous as mentioned below.
A. Experiments 1 to 8 described in Ko No. 6 Experimental Certificate merely controlled complete

6dissolution temperature in hot water and equilibrium swelling degree only by using well-known art.
In said experiments 1 to 8, drying was conducted at a temperature of 90C or higher, which was
higher than the drying temperature in the working examples described in the Description (30 or
40C), while the drying time was within 10 minutes, which was much shorter than the drying timein said working examples (24 hours). In the aforementioned working examples in which
experiments were conducted in the laboratory, drying time was long as there was no constraint on
drying time. However, the aforementioned experiments 1 to 8 were conducted by using actual
equipment, and drying time was significantly limited in relation to the manufacturing time.
Therefore, drying time was short, and drying temperature was set higher merely for the purpose of
shortening drying time. It is general common knowledge that when setting drying temperature
higher, drying time only needs to be shortened accordingly. Taking this into account, the conditionsof these experiments do not significantly differ.
Consequently, the pieces of experimental data described in Ko No. 6 Experimental Certificate
supplement the working examples described in the Description. Therefore, the determination in thedecision to the effect that Ko No. 6 Experimental Certificate cannot be taken into consideration is
unreasonable.
B. The defendant alleges that experiments 1 to 8 described in Ko No. 6 Experimental Certificate
differ from the working examples in the Description in the experimental conditions. However, all ofsuch allegations are erroneous as below.
(A) The defendant alleges that experiments 1 to 8 described in Ko No. 6 Experimental Certificate
and the working examples described in the Description significantly differ in the drying conditions.
However, drying only requires evaporation of water. Drying temperature is to be arbitrarily
selected, and it is not the case that a specific temperature is required for drying. With regard todrying time, it is common general technical knowledge that drying time becomes shorter if drying
temperature is higher and that drying time becomes longer if drying temperature is lower. In thismanner, drying temperature and drying time are arbitrarily selected. Therefore, the defendant's
allegation that the drying conditions significantly differ only because drying temperature is different
is unreasonable.
(B) The defendant alleges that experimental conditions differ significantly in cases where drying
temperature is higher than glass transition temperature (experiments 1 to 8 described in Ko No. 6
Experimental Certificate) and in cases where it is lower (working examples described in the
Description), as it is commonly predicted that their effects on the tissue conditions of PVA differ
significantly.
However, PVA in the drying process is the aqueous solution of PVA, which is water in which
PVA is dissolved, and in the first place, such PVA which dissolves in solvent has no glass transition

7

temperature. The defendant alleges that it is commonly predicted that cases where drying
temperature is higher than glass transition temperature and cases where it is lower significantly
differ in the effects on the tissue conditions of PVA, based on the glass transition temperature ofsolid PVA which is as stated in the Kagakudaijiten Henshu Iinkai, ed., Kagakudaijiten 2(Comprehensive chemistry dictionary 2) (at 523-524; June 1, 1993; published by Kyoritsu Shuppan
Co., Ltd.; Exhibit Otsu No. 1) and Kagakudaijiten Henshu Iinkai, ed., Kagakudaijiten 8(Comprehensive chemistry dictionary 8) (at 767; June 1, 1993; published by Kyoritsu Shuppan Co.,
Ltd.; Exhibit Otsu No. 2), but such allegation by the defendant is unreasonable.
(C) Based on the statement in Ko No. 8 Document, the defendant alleges that the working examples
described in the description of the Patent and experiments 1 to 8 described in Ko No. 6
Experimental Certificate significantly differ in the experimental conditions because drying
temperature for the former is 30 to 40C while that for the latter is 85 to 102C and the degree ofcrystallization differs depending on the drying temperature.
However, Ko No. 8 Document describes the relationship between heat treatment temperatureand degree of crystallization of a PVA film manufactured by drying, and does not describe therelationship between drying temperature and degree of crystallization in the case of manufacturing a
PVA film by evaporating water from an aqueous solution of PVA. The aforementioned defendant's
allegation confuses drying conditions with heat treatment conditions, and is thus unreasonable.
As alleged by the defendant, there are times when the degree of crystallization becomes higher
if drying temperature is higher and lower if drying temperature is lower. However, this relationshipis realized only where many other manufacturing conditions are exactly the same. As othermanufacturing conditions of experiments 1 to 8 described in Ko No. 6 Experimental Certificate andthose of the working examples described in the Description are not exactly the same, it is
impossible to organize them simply based on drying temperature.
(3) The Inventions significantly contribute to the development of the industry as methods ofmanufacturing polarizing films for liquid crystals which have superior polarization performance.
Even if there is slight deficiency in the description of the detailed explanation of the invention in the
Description, it cannot be justified to revoke the patent for such useful inventions only for the reasonof such a minor deficiency. In particular, the requirements of a description have changed with thetimes, and at least as of the time of filing the Application, it was not required to describe all
experimental data which serve as the basis as working examples in a description for patentapplications for parameter inventions, such as the Inventions.
That is, although the Examination Guidelines for Patent and Utility Model that serve as
standards for the interpretation and application of the provisions of Article 36, paragraph (5), item(i) and paragraph (4) of the Old Patent Act, which are applicable to the Application, were fully

8revised in June 1993, the Guidelines did not provide for any standard for the description
requirements of a description of a patent application for a parameter invention. Through the revisionby the 1994 Revision Act, the provisions of Article 36, paragraph (4) of the Old Patent Act before
said revision were revised, and the description requirements of a description were revised to a large
extent, such as the provisions of Article 36, paragraph (5) and paragraph (6), item (ii) of the Patent
Act after said revision being newly established. The Examination Guidelines for Patent and Utility
Model, which serve as standards for the interpretation and application of these provisions, are thoseafter the revision in October 2000, whereby standards for the description requirements of a
description of a patent application for a parameter invention were added for the first time.
Moreover, the Examination Guidelines for Patent and Utility Model after the revision in October2003 state the following standards for the description requirements of a description of a patentapplication for a parameter invention.
(A) The Examination Guidelines prescribe the case where "the content disclosed in the detailed
explanation of the invention can neither be expanded nor generalized to the scope of the claimed
invention, even in light of the common general technical knowledge as of the time of filing theapplication" as "Typical Examples of Violation of Article 36, paragraph (6), item (i)," and cite thefollowing case as Example 10: the case where "in an invention aiming to specify a product (e.g., apolymer composition, a plastic film, a synthetic fiber or a tire) by limiting function andcharacteristic, etc. numerically, a sufficient number of specific examples covering the wholenumerical range described in the claims is not shown, and furthermore by referring to otherstatement in the detailed examination of the invention or in light of the common general technicalknowledge as of the time of filing the application, the relevant specific examples can neither be
expanded nor generalized to the whole numerical range described in the claims."(B) The Guidelines prescribe the case where "(2) an invention is unclear due to the technical defectexisting in the matters defining the invention or from the technical meaning or technical relation ofmatters defining the invention being not comprehensible" as "Typical Examples of Violation of
Article 36, paragraph (6), item (ii)," and prescribe the case where "(ii) technical meaning of mattersdefining the invention can not be understood" as one of such cases. As Example 1, the Guidelines
cite "Dying powder defined by a specific numerical range of specific formula X" (Specific formula
X is shown only as a result obtained and its technical meaning cannot be understood even when
taking into consideration the description, drawings, and the common general technical knowledge
as of the time of filing the application. However, if the process that leads to the formula or thereason to determine the numerical range of the formula, etc., (including the case where thenumerical range was obtained from the result of experiment) is described in the description to theextent that its technical meaning can be understood, the technical meaning can be understood in9many cases.)
However, these standards are those for the interpretation and application of Article 36,
paragraph (6), items (i) and (ii) of the current Patent Act. Even if they are retroactively applicable,
their application should be limited to patent applications filed on and after January 1, 1995, on
which the Patent Act after revision by the 1994 Revision Act, which includes corresponding
provisions, became applicable.
It should be considered as extremely unreasonable and unacceptable to revoke the Patent only
on the grounds of deficiency in the statement in the Description by retroactively applying the
Examination Guidelines for Patent and Utility Model concerning the description requirements of a
description, which were set after the filing of the application for the Patent, despite the fact that theissue of whether the Description satisfies the description requirements did not become a question at
all in the examination of the Application.
(4) According to the provisions of Article 36, paragraph (5), item (i) of the Old Patent Act, theinvention claimed in the scope of claims must have a substantial corresponding relationship with theinvention described in the detailed explanation of the invention. In addition, the Examination
Guidelines for Patent and Utility Model provide that "It is necessary to state in the detailed
explanation of the invention at least one mode that an applicant for a patent considers to be the best
among the 'modes for working the invention' showing how to work the claimed invention." Thedetailed explanation of the invention in the Description (Exhibit Ko No. 3) states that a specific
PVA film for which the relationship between complete dissolution temperature in hot water (X) andequilibrium swelling degree (Y) is within the range indicated by two formulas, Formula (I) andFormula (II), "can be manufactured by adjusting the drying conditions at the time of producing a
polyvinyl alcohol film or the heat treatment conditions, etc. after the production of a polyvinyl
alcohol film" (paragraph [0012]). In addition, as for working examples, two working examples
which the patentee considers to be the best are described therein. Therefore, for the Inventions, theinventions claimed in the scope of claims substantively correspond to the inventions described in
the detailed explanation of the invention, and also conform to the content of the aforementioned
Examination Guidelines.
The Inventions are those made by finding the fact that, of publicly known PVA films, those forwhich the relationship between complete dissolution temperature in hot water (X) and equilibriumswelling degree (Y) is within the range of specific numeric values, are suitable as materials forpolarizing films. There is no reason for requiring that the method of specifying publicly known
PVA films be described in detail.
2. Ground for rescission 2 (error in the determination of violation of Article 36, paragraph (4) of the
Old Patent Act)10

(1) In the decision, the JPO rules as follows: "Even in consideration of the detailed explanation of
the invention in the description of the Patent (Note: the Description), ambiguity remains concerning
what manufacturing conditions (degree of polymerization of PVA, dry substrate, drying
temperature, drying time, etc.) are required to obtain a film that satisfies the aforementioned two
formulas and is superior in polarization performance and durability performance. Therefore, thedescription of the Patent is not recognized as one that describes the purpose, constitution, and effectof the invention to the extent that a person ordinarily skilled in the art can easily work theinvention" (third paragraph on page 4 of the copy of the original decision). Based thereon, the JPO
determined that the statement of the detailed explanation of the invention in the Description violates
Article 36, paragraph (4) of the Old Patent Act. However, this determination is erroneous asmentioned below.
(2) Complete dissolution temperature (X) indicates the solubility of a film measured under specificconditions, and indicates the temperature at which a crystal that is harder to dissolve compared toamorphous parts completely dissolves. A high complete dissolution temperature indicates that thesize of crystals is large as crystals of PVA dissolve at a high temperature, while a low complete
dissolution temperature indicates that the size of crystals is small as crystals of PVA dissolve at a
low temperature. On the other hand, equilibrium swelling degree (Y) indicates the degree ofswelling of a film by water which is measured under specific conditions. In general, swelling bywater occurs at the amorphous parts of PVA. A high equilibrium swelling degree indicates a low
degree of crystallization with increased amorphous parts, while a low equilibrium swelling degreeindicates a high degree of crystallization with fewer amorphous parts.
In the case of directly questioning the size of crystals or the degree of crystallization, it isnecessary to measure these values through X-ray analysis, etc. However, as it is impossible toobtain a completely amorphous body of PVA, accurate values cannot be obtained even throughX-ray analysis. Consequently, in the Inventions, complete dissolution temperature and equilibriumswelling degree were used as indexes as substitute for the size of crystals and the degree ofcrystallization, while focusing attention on the relationship between PVA films with specificcomplete dissolution temperature and equilibrium swelling degree and the characteristics ofpolarizing films obtained therefrom. Thus, they could arrive at the two formulas prescribed in Claim
1.
(3) Incidentally, in the case of manufacturing a PVA film, the degree of polymerization of PVA,
aqueous solution concentration of PVA, drying roll can be cited as the conditions for controlling thedegree of crystallization and size of crystals of the PVA film, in addition to drying conditions andheat treatment conditions after the production of the film [paragraph [0012] of the Description(Exhibit Ko No. 3)]. For example, in working examples 1 and 2 and comparative examples 1 and 2

11described in the Description, PVA films were manufactured in the same drying time (24 hours).
However, in the same drying time, as long as other conditions are the same, if drying temperature islow, PVA is rapidly cooled. Consequently, crystals do not sufficiently grow, and the degree ofcrystallization thus becomes low and the size of crystals becomes small. On the contrary, if drying
temperature is high, PVA is gradually cooled. Consequently, crystals grow, and the degree ofcrystallization thus becomes high and the size of crystals becomes large. It is only necessary to set
drying temperature higher in order to manufacture PVA films with the same degree ofcrystallization in a shorter drying time than 24 hours, in the aforementioned examples.
Various conditions intricately relate to crystallization of polymer films such as PVA films,
though the degree of their contribution differs. Therefore, manufacturing conditions are not directly
and unambiguously decided in the case of manufacturing a film with a specific degree ofcrystallization. Consequently, it is not that the degree of crystallization or the size of crystals of a
PVA film is directly and unambiguously decided if drying temperature and drying time are
specified, nor can the manufacturing conditions of a PVA film be directly or unambiguously
decided if the degree of crystallization or the size of crystals of the film is specified.
As methods of controlling the degree of crystallization and the size of crystals of a polymer filmby arbitrarily setting or changing the conditions for controlling the degree of crystallization and thesize of crystals, there are various methods, such as control of stereoregularity of polymers, rapid
cooling from the molten state (the size of crystals becomes smaller), gradual cooling from themolten state (the size of crystals becomes larger), and heat treatment. Specifically looking at themwith regard to PVA films, for example, Ko No. 8 Document states that (1) the swelling degree anddegree of crystallization can be controlled by changing the drying method to high-temperaturedrying, high-humidity drying, and air drying, etc. in the drying process after aqueous solution of
PVA is cast, that (2) further heat treatment after the drying process is generally conducted topromote crystallization, and that (3) it is possible, by raising the heat treatment temperature, toincrease the degree of crystallization, raise the maximum allowable water temperature of a PVA
film, and lower the swelling degree (Figure 103 on page 215, lines 8 and 9 on page 219, Figure 98
on page 212, and Figures 100 and 101 on page 214). In addition, Poribiniruarukoru(torifuruorosakusanbiniru wo shuppatsumonoma toshita) (Polyvinyl alcohol (starting from
trifluoroacetic acid vinyl)) (First edition, first print, June 15, 1991, published by Kobunshi
Kankokai; Exhibit Ko No. 9) also states that the degree of crystallization, distance between crystals,
and the size of crystalline region can be controlled by heat treatment temperature (Table 6-6 onpage 80).
(4) The aforementioned methods of controlling the size of crystals and the degree of crystallizationof a PVA film had already been well-known among persons ordinarily skilled in the art as of the12

time of filing the Application, and it can be said that it was very easy for a person ordinarily skilledin the art to control the size of crystals (complete dissolution temperature) and the degree ofcrystallization (equilibrium swelling degree) by arbitrarily setting and changing the drying method,
drying temperature, heat treatment temperature, etc. of the film.
Then, as long as the methods of controlling the size of crystals (complete dissolution
temperature) and the degree of crystallization (equilibrium swelling degree) are well-known among
persons ordinarily skilled in the art as mentioned above, a person ordinarily skilled in the art canvery easily manufacture a PVA film that satisfies two formulas, Formula (I) and Formula (II), basedon the common general technical knowledge as of the time of filing the Application, without
needing to describe it in the detailed explanation of the invention in the Description. Therefore, it
should be said that the detailed explanation of the invention in the Description describes the
purpose, constitution, and effect of the invention to the extent that a person ordinarily skilled in theart can easily work the Inventions.
No. 5 Counterarguments of the defendant
The determination in the decision to the effect that the statement in the Description violates theprovisions of Article 36, paragraph (5), item (i) and paragraph (4) of the Old Patent Act is noterroneous, and all the grounds for rescission alleged by the plaintiff are groundless.
1. Regarding ground for rescission 1 (error in the determination of violation of Article 36,
paragraph (5), item (i) of the Old Patent Act)
(1) Whether the statement of the scope of claims conforms to the provisions of Article 36,
paragraph (5), item (i) of the Old Patent Act is determined through consideration of the substantial
corresponding relationship between the invention claimed in the scope of claims and the one
described as an invention in the detailed explanation of the invention in a description. If theaforementioned claimed invention is determined as one that exceeds the scope described in thedetailed explanation of the invention in such a manner that a person ordinarily skilled in the art canrecognize that the problem to be solved by the invention can be solved, it should be understood thatthe statement cannot be considered as conforming to the provisions of said item.
(2) The statement of the scope of claims in the Description cannot be considered as conforming to
the provisions of Article 36, paragraph (5), item (i) of the Old Patent Act as mentioned below.
A. The detailed explanation of the invention in the Description only describes the methods ofmanufacturing four kinds of films shown in working examples and comparative examples toindicate the relationship between the values of complete dissolution temperature in hot water (X)and equilibrium swelling degree (Y) of a PVA film and the specific characteristics of a polarizing
film which is obtained by using said PVA film as a raw film.
It is recognized, from a graph (Figure 1 in Attachment 1) plotting the values of complete

13dissolution temperature in hot water (X) and equilibrium swelling degree (Y) of the PVA films usedin the aforementioned working examples and comparative examples, that, with a PVA film forwhich complete dissolution temperature (X) is around 70 to 75C, a polarizing film with desired
characteristics can be obtained when equilibrium swelling degree (Y) is 1.8 (or 1.9 or higher and
2.0 or higher), while such a polarizing film cannot be obtained when equilibrium swelling degree(Y) is lower than that. However, it is hardly possible to draw, from these four points alone, aconclusion that the range of complete dissolution temperature in hot water (X) and equilibriumswelling degree (Y) whereby desired characteristics can be obtained is the range in which complete
dissolution temperature in hot water (X) is 65C or higher and equilibrium swelling degree (Y)exceeds the value calculated by the formula, "- 0.0667X + 6.73" [Formula (I)].
In that case, it cannot be said that the detailed explanation of the invention in the Description
describes the manufacturing method pertaining to Invention 1, that is, the fact that a polarizing film
obtained has desired characteristics based on the condition that a PVA film with specific thickness
and specific complete dissolution temperature in hot water (X) and equilibrium swelling degree (Y)as prescribed in Claim 1 is used as a raw film, and that the polarizing film is manufactured under
specific stretching conditions as prescribed in Claim 1, to the extent that a person ordinarily skilledin the art can understand such fact. In addition, it is not recognized that the knowledge that apolarizing film with desired characteristics can be obtained by being manufactured by using such a
PVA film as a raw film under said stretching conditions was the common general technicalknowledge of persons ordinarily skilled in the art as of the time of filing the Application. That is, itcannot be said, even in light of the common general technical knowledge of persons ordinarily
skilled in the art as of the time of filing the Application, that the content disclosed in the detailed
explanation of the invention in the Description can be expanded or generalized to the scope of theinvention claimed in Claim 1.
B. Therefore, Invention 1 and Inventions 2 and 3 which cite Invention 1 exceed the scope describedin the detailed explanation of the invention so that a person ordinarily skilled in the art canrecognize that the problem to be solved by the invention can be solved. Accordingly, the statementof the scope of claims in the Description cannot be considered as conforming to the provisions ofArticle 36, paragraph (5), item (i) of the Old Patent Act.
Incidentally, the plaintiff alleges that, in Invention 1, when complete dissolution temperature in
hot water (X) is 65C or higher, the upper limit of equilibrium swelling degree (Y) is around 2.5 at
the highest and that the substantial upper limit never exceeds 3.0 even in consideration of
measurement error and other conditions. However, according to Ko No. 6 Experimental Certificate,
the heat treatment temperature of working example 2 described in the Description (Exhibit Ko No.
3) is 90C (Table 1 on page 7), and it does not conform to the premise of the plaintiff's allegation,

14

"if heat treatment temperature is 110C or higher." Therefore, the ground of the plaintiff's
aforementioned allegation is unclear.
The plaintiff also alleges that the range that satisfies two formulas, Formula (I) and Formula(II), does not indicate an indefinitely extensive range because equilibrium swelling degree (Y) is 1
or higher and its upper limit never exceeds 3.0, while the lower limit of complete dissolution
temperature in hot water (X) is 65C and its upper limit is substantially 90C. However, even if theranges of values of complete dissolution temperature in hot water (X) and equilibrium swelling
degree (Y) are as alleged by the plaintiff, it is obvious that the range is more extensive than therange of the two working examples described in the detailed explanation of the invention in the
Description. Therefore, the fact remains that it cannot be said, based on the only two working
examples for which the effect has been actually confirmed, that PVA films other than those used in
the working examples necessarily bring about a superior effect as long as they satisfy the two
formulas, Formula (I) and Formula (II). In addition, even if the upper limit of equilibrium swelling
degree (Y) is 3.0, it is obvious that the ranges of values of complete dissolution temperature in hot
water (X) and equilibrium swelling degree (Y) remain more extensive, compared to the areas of
distribution of the two working examples described in the Description.
(3) In determining violation of Article 36, paragraph (5), item (i) of the Old Patent Act, theexperimental data described in Ko No. 6 Experimental Certificate cannot be taken into
consideration, as mentioned below.
A. Advisability of taking the experimental data into consideration in relation to the content ofexperiments described in Ko No. 6 Experimental Certificate(A) The conditions of the experiments described in Ko No. 6 Experimental Certificate and those of
the experiments of the working examples described in the Description significantly differ from eachother, as mentioned below.
a. The drying temperature, drying time, and dry substrate of the two working examples described in
the Description are 30 to 40C, 24 hours, and PET (polyethylene terephthalate), respectively. On theother hand, in experiments 1 to 8 described in Ko No. 6 Experimental Certificate, the drying
temperature and drying time are 85 to 102C and two to ten minutes, respectively, and the dry
substrate is PET for experiments 1 to 3 and is SUS (Note: stainless steel) for experiments 4 to 8.
b. Out of the aforementioned experimental conditions, focusing attention on drying temperature,drying temperature in experiments 1 to 8 described in Ko No. 6 Experimental Certificate is 85 to
102C, at the temperature near the boiling point of water, and it is significantly far from 30 to 40C,
at temperature near room temperature, in working examples 1 and 2 described in the Description.
Also taking into consideration the change of state of water and drying time, experiments 1 to 8 andworking examples significantly differ in terms of drying conditions.

15

The glass transition temperature of PVA is approximately 65 to 85C (Exhibits Otsu No. 1 andNo. 2 cited in No. 4, 1(2)B(B) above), and it is commonly predicted that the effect on the tissue
conditions of PVA significantly differs between the case where drying temperature is higher than
the glass transition temperature (experiments 1 to 8 described in Ko No. 6 Experimental Certificate)
and the case where it is lower (working examples 1 and 2 described in the Description). Moreover,according to the statement in Ko No. 8 Document, the degree of crystallization of PVA differs
depending on heat treatment temperature even if the heat treatment temperature is between 30 and
100C. The working examples described in the Description and experiments 1 to 8 described in Ko
No. 6 Experimental Certificate differ in drying temperature; therefore, they express different
degrees of crystallization depending on the drying temperature. Consequently, the working
examples and experiments 1 to 8 significantly differ in terms of the experimental conditions.
The plaintiff's allegation that the experimental conditions in relation to drying conditions do notsignificantly differ is unreasonable for the aforementioned reason. Furthermore, the allegation isequivalent to alleging that the result is the same even if drying temperature is set as 200 or 300C ifdrying time is shorter. The plaintiff's allegation is unreasonable as it obviously disregards the glasstransition temperature and softening temperature of the material, change of state of water, etc.
c. With regard to dry substrates, SUS, which is different from the PET that is used for the working
examples described in the Description, is used for experiments 4 to 8, which are more than a half ofexperiments 1 to 8 described in Ko No. 6 Experimental Certificate. The purpose of using different
dry substrates is unclear. However, it is commonly anticipated that thermal characteristics ofsubstrates in the drying process differ due to difference in the materials of the dry substrates.
Therefore, experiments 4 to 8 using a different dry substrate differ from the working examples
described in the Description in the experimental conditions in this point as well.
(B) As mentioned above, experiments 1 to 8 described in Ko No. 6 Experimental Certificate
significantly differ from the working examples described in the Description in drying temperatureand drying time. In addition, experiments 4 to 8 described in Ko No. 6 Experimental Certificate andcomparative experiments 1 and 2 differ from the working examples described in the Description interms of dry substrate, and taking an overall look at the experiments, their experimental conditions
significantly differ from those of the working examples described in the Description. Therefore,
experimental data described in Ko No. 6 Experimental Certificate do not supplement the working
examples and comparative examples described in the Description, but they are the addition of newworking examples. Consequently, the experimental data cannot be taken into consideration in
determining violation of Article 36, paragraph (5), item (i) of the Old Patent Act.
Incidentally, the plaintiff alleges that experiments 1 to 8 described in Ko No. 6 Experimental
Certificate were conducted by using actual equipment and that they were conducted with short16

drying time as drying time is significantly limited in relation to the manufacturing time. However,there is no reason that drying time cannot be made longer even if experiments are conducted byusing actual equipment. In this regard, the results of experiments in Ko No. 6 Experimental
Certificate lack credibility and cannot be considered as supplementing the working examples andcomparative examples described in the Description.
B. Advisability of taking the experimental data described in Ko No. 6 Experimental Certificate into
consideration in relation to the state of the art as of the time of filing the Application(A) Whether the statement of the scope of claims conforms to the provisions of Article 36,
paragraph (5), item (i) of the Old Patent Act should be determined taking into consideration thecommon general technical knowledge of persons skilled in the art as of the time of filing a patentapplication, in addition to the description and drawings attached to the written application of thepatent application.
Therefore, where the experimental data described in Ko No. 6 Experimental Certificate falls
under the common general technical knowledge of persons ordinarily skilled in the art as of the timeof filing the Application, it can be taken into consideration in the aforementioned determination.
However, otherwise, it cannot be taken into consideration.
(B) Invention 1 is a method of manufacturing a polarizing film that has advanced polarization
performance and durability performance, etc. by using a PVA film with specific thickness, complete
dissolution temperature in hot water (X) that is higher than a specific value, and equilibriumswelling degree (Y) which is higher than the value calculated by a function thereof, Formula (I), as
described in Claim 1, as a raw film and by stretching the PVA film under specific conditions as
described in Claim 1.
The plaintiff alleges that the formula, "Y > -0.0667X + 6.73" [Formula (I)], was arrived at byadding 10 pieces of experimental data described in Ko No. 6 Experimental Certificate to 4 pieces ofexperimental data on the working examples and comparative examples described in the Description
and by plotting the 14 pieces of experimental data in total. However, even if it is usual practice, inchemical fields, including the manufacture of polarizing films such as the Inventions, to find a
range in which a desired thing can be obtained by organizing many experimental data in thismanner, a preferred range drawn based on the experimental data cannot be considered as common
general technical knowledge as of the time of filing the Application for persons ordinarily skilled in
the art. The plaintiff says that it could draw the relationship between the aforementioned desired
characteristics and complete dissolution temperature in hot water (X) and equilibrium swelling
degree (Y) of a PVA film only based on the aforementioned multiple pieces of experimental data,and it is, rather, just making a self-admission that the aforementioned preferred range andexperimental data serving as the basis thereof cannot be considered as having been common general17

technical knowledge.
Then, as the experimental data described in Ko No. 6 Experimental Certificate cannot be
considered as having been the common general technical knowledge of persons ordinarily skilled in
the art as of the time of filing the Application, it cannot be taken into consideration in determining
violation of Article 36, paragraph (5), item (i) of the Old Patent Act.
C. Consequently, the determination in the decision to the effect that the experimental data describedin Ko No. 6 Experimental Certificate cannot be taken into consideration in determining violation of
Article 36, paragraph (5), item (i) of the Old Patent Act is not erroneous.
The plaintiff alleges that it drew the two formulas, "Y > -0.0667X + 6.73" [Formula (I)] and "X≧ 65" [Formula (II)], as prescribed in Claim 1 by adding 8 pieces of experimental data and 2 piecesof comparative experimental data described in Ko No. 6 Experimental Certificate to the twoworking examples and two comparative examples described in the Description and by plotting the
14 pieces of experimental data in total (see Figure 1 in Attachment 2). However, as mentioned
above, the experimental data described in Ko No. 6 Experimental Certificate cannot be taken into
consideration in determining violation of Article 36, paragraph (5), item (i) of the Old Patent Act.
Therefore, the plaintiff's aforementioned allegation is erroneous in its premise.
(4) With regard to whether the Description satisfies the description requirements, the plaintiff
alleges that it is not permitted to revoke the Patent only on the grounds of deficiency in thestatement in the Description by retroactively applying the Examination Guidelines for Patent andUtility Model concerning the description requirements of a description, which were set after thefiling of the application for the Patent.
However, the decision determined whether the Description satisfies the description
requirements absolutely pursuant to laws and regulations, and it did not retroactively apply the
Examination Guidelines for Patent and Utility Model, which were set after the filing of theapplication for the Paten. Therefore, the plaintiff's allegation is unreasonable.
2. Regarding ground for rescission 2 (error in the determination of violation of Article 36,
paragraph (4) of the Old Patent Act)
(1) Invention 1 is to control drying temperature, etc. so as to concurrently satisfy the two formulas
concerning equilibrium swelling degree (Y) and complete dissolution temperature in hot water (X),
"Y > -0.0667X + 6.73" [Formula (I)] and "X ≧ 65" [Formula (II)]. Even if a method of separately
controlling equilibrium swelling degree (Y; degree of crystallization) or complete dissolution
temperature in hot water (X; size of crystals) has been well-known as alleged by the plaintiff, itcannot be said that the conditions for manufacturing a film that concurrently satisfies theaforementioned two formulas has been well-known among persons skilled in the art. Consequently,
the plaintiff's allegation, "the method of manufacturing a film is obvious from the common general18

technical knowledge of persons ordinarily skilled in the art as of the time of filing the Application
without needing to describe it in the detailed explanation of the invention," is groundless.
In addition, the plaintiff's allegation that the conditions for manufacturing a PVA film with a
specific size of crystals and degree of crystallization cannot be directly and unambiguously
specified is the self-acknowledgement of the fact that a PVA film to be used as a raw film in theInventions can be manufactured only through trial and error. Therefore, it is obvious that a person
ordinarily skilled in the art cannot easily work the Inventions.
(2) As is clear from Figure 1 in Attachment 1, the two working examples described in the
Description are found in a small region within an area that concurrently satisfies the two formulas
shown in said figure. On the other hand, the range that concurrently satisfies the two formulas,
Formula (I) and Formula (II), in the Description is extensive far beyond the range covered by the
aforementioned two working examples. Therefore, a person ordinarily skilled in the art cannot
easily assume the manufacturing conditions under which a PVA film for which the relationshipbetween equilibrium swelling degree (Y) and complete dissolution temperature in hot water (X) is
within such a range can be manufactured.
Though the Description describes the two working examples and two comparative examples,the plaintiff's allegation that the conditions for manufacturing a PVA film with a specific size of
crystals and degree of crystallization cannot be directly and unambiguously specified contradicts theaforementioned statement on the working examples and comparative examples and also denies themeaning of working examples, which should specifically indicate the best mode for working theinvention. Therefore, the plaintiff's allegation is unreasonable.
(3) A person ordinarily skilled in the art cannot understand, merely from the statement of thedetailed explanation of the invention in the Description, that a polarizing film with desired
characteristics can be obtained by adopting the constitution of Invention 1, as mentioned in 1(2)above. In addition, the plaintiff also recognizes that the relationship between the constitution andeffect does not fall under the common general technical knowledge of persons ordinarily skilled in
the art as of the time of filing the Application.
In that case, according to the constitution of Invention 1, it cannot be said that the corresponding
relationship with a desired effect, i.e., obtaining a polarizing film for which the fading temperature
in water is 60C or higher and which "neither is cut nor displays cracks even if it is stretched 6.4
times during the boric acid treatment," is described in the detailed explanation of the invention in
the Description.
In order for the plaintiff to allege, while taking into consideration the experimental data
described in Ko No. 6 Experimental Certificate, that it disclosed in the Description that a polarizing
film with desired characteristics can be obtained by using a PVA film for which the value of19

complete dissolution temperature in hot water (X) exceeds 65C [Formula (II)] and the value ofequilibrium swelling degree (Y) exceeds the value calculated by the formula, "-0.0667X + 6.73"[Formula (I)], respectively, and has obtained a patent for Invention 1 based on this knowledge, theexperimental data supporting such knowledge should have originally been described in the detailed
explanation of the invention in the Description.
(4) As mentioned above, the decision is not erroneous in determining that the detailed explanationof the invention in the Description is not recognized as describing the purpose, constitution, andeffect of the invention to the extent that a person ordinarily skilled in the art can easily work theinvention.
No. 6 Judgment of this court
1. Regarding ground for rescission 1 (error in the determination of violation of Article 36,
paragraph (5), item (i) of the Old Patent Act)
(1) Article 36, paragraph (5) of the Old Patent Act provides that "The statement of the scope ofclaims as provided in paragraph (3), item (iv) shall comply with each of the following items," anditem (i) thereof provides that "the invention for which a patent is sought is stated in the detailed
explanation of the invention" (said item has become Article 36, paragraph (6), item (i) of the Patent
Act as it is by the 1994 Revision Act, leading to the present day; hereinafter also referred to as the"Support Requirement of a Description").
The purpose of the patent system is to encourage inventions and contribute to the developmentof industry by granting patents to the inventions on the premise of disclosure of the inventions andthereby guaranteeing the monopolistic and exclusive working of the inventions as a business for acertain period of time. A description, which a person who intends to obtain a patent for an invention
should attach to the written application, originally has the role of clarifying the scope (technicalscope of the patented invention) to which a patent right extends after establishment of the patentright, as well as disclosing the technical content of the invention to the public. Therefore, it should
be said that in order to obtain a patent by describing an invention in the scope of claims, it isnecessary to describe the invention in the detailed explanation of the invention in the description sothat a person ordinarily skilled in the art can recognize that the problem to be solved by theinvention can be solved. The Support Requirement of a Description prescribed in Article 36,
paragraph (5), item (i) of the Old Patent Act limits the statement of the scope of claims as shown in
the aforementioned provision because if an invention not described in the detailed explanation of
the invention is described in the scope of claims, a monopolistic and exclusive right will arise for an
undisclosed invention, and it will deprive the general public of the benefits of free use and willcause the likelihood of inhibiting the development of industry, which goes against the
aforementioned purpose of the patent system.

20

Whether the statement of the scope of claims satisfies the Support Requirement of a Description
should be determined by considering, through comparison of the statement of the scope of claims
and the statement of the detailed explanation of the invention, whether the invention described in
the scope of claims is the invention described in the detailed explanation of the invention that iswithin the scope for which a person ordinarily skilled in the art can recognize, based on thestatement of the detailed explanation of the invention, that the invention can solve the problem to besolved by the invention, and also by considering whether the invention described in the scope ofclaims is an invention within the scope which a person ordinarily skilled in the art can recognize, inlight of the common general technical knowledge as of the time of filing the application, that theinvention can solve the problem to be solved by the invention, even without the statement andindication thereof. For the existence of the Support Requirement of a Description, it is reasonable tounderstand that the patent applicant (the plaintiff in the lawsuit to seek the rescission of the trial
decision dismissing a request for a trial against an examiner's decision of refusal) or the patentee(the plaintiff in the lawsuit to seek the rescission of a decision revoking the patent or the lawsuit toseek the rescission of a trial decision upholding a request for a trial for patent invalidation based on
Article 2, paragraph (9) of the Supplementary Provisions of Act No. 47 of 2003; the defendant in
the lawsuit to seek the rescission of a trial decision dismissing a request for a trial for patent
invalidation) assumes the burden of proof.
Based on the aforementioned perspectives, this case is to be considered.
(2) Regarding the statement of the scope of claims in the Description
Claim 1 pertaining to Invention 1 describes a manufacturing method in which, in manufacturinga polarizing film by uniaxially stretching a polyvinyl alcohol raw film, a polyvinyl alcohol film
(PVA film) which is 30 to 100 μm thick and for which the relationship between complete
dissolution temperature in hot water (X) and equilibrium swelling degree (Y) is within the range
indicated by two formulas, Formula (I) and Formula (II), is used. In addition, both claims 2 and 3
pertaining to Inventions 2 and 3 in the scope of claims cite Claim 1.
(3) Regarding the statement of the detailed explanation of the invention in the Description
A. The Description (Exhibit Ko No. 3) describes the following matters.
(A) "[Field of industrial application] The invention (Note: the Inventions) relates to a method of
manufacturing a polarizing film which is superior in durability performance and polarization
performance and also has good performance in stability at the time of manufacturing." (paragraph[0001])(B) "[Prior art] … In the case of a polyvinyl alcohol polarizing film, an iodine-dyed product is goodin polarization performance but is inferior in moisture resistance and heat resistance, and it has adrawback, that is, deterioration in the degree of polarization under a high-humidity or

21high-temperature atmosphere, i.e. inferior durability. On the other hand, a colorant-dyed product isinferior in polarization performance but has an advantage of being superior in durability. In thismanner, polyvinyl alcohol polarizing films have good and bad points; therefore, it is actuallyinevitable to use them accordingly depending on the performance required for the final use.
Consequently, if a polyvinyl alcohol polarizing film which is superior in both polarization
performance and durability is developed, it will be very useful for expansion of its use, etc. Thus,
the applicant suggested using a PVA film which is 30 to 100 μm thick and for which the complete
dissolution temperature in hot water is 65 to 90C as a raw film in manufacturing a polarizing film
by uniaxially stretching a polyvinyl alcohol raw film in at least either the dying process or the boron
compound treatment process (Unexamined Patent Application Publication No. 1992-173125). By
this method, a polarizing film for which the durability under high-temperature and high-humidity
conditions was improved and forwhich the degree of polarization does not change even if it is left

as it is for a long period of time was obtained." (paragraphs [0002] to [0005])(C) "[Problem to be solved by the invention] However, although a polarizing film which is superior
in durability under high-temperature and high-humidity conditions was assuredly obtained in
Unexamined Patent Application Publication No. 1992-173125 as a result of further studies made by
the inventor, etc., it was revealed that polarization performance and durability performance, etc.
cannot be stabilized only with the provisions on the thickness and complete dissolution temperature
in hot water of a polyvinyl alcohol raw film, that is, the degree of polarization of products may vary
due to a slight fluctuation in the manufacturing conditions and meticulous process management isrequired. For the manufacturing method published in said publication, experiment was conductedby manufacturing a polarizing film which was uniaxially stretched up to 7.2 times in the end.
However, it is not easy to control the stretch ratio with high accuracy in the production process. If afilm is stretched more than 7.2 times in the process, problems arise, for example, the film breaks ordisplays cracks. In this regard, sufficient attention must be paid to the production management. In
other words, a raw film that can bear excessive stretching, which is hard to avoid especially in theprocess of stretching a film, has come to be required. Therefore, the development of a method of
manufacturing a polarizing film which has high polarization performance and durability
performance and will not breakeven at the time of excessive stretching as mentioned above: that is,a superior polarizing film which can bear a high stretch ratio." (paragraphs [0006] and [0007])(D) "[Means for solving the problem] As a result of carrying on dedicated studies to solve theproblem, the inventor, etc. found that, in manufacturing a polarizing film by uniaxially stretching a
polyvinyl alcohol raw film, the aforementioned purpose can be achieved based on the conditions
that a polyvinyl alcohol film which is 30 to 100 μm thick and for which the relationship between
complete dissolution temperature in hot water (X) and equilibrium swelling degree (Y) is within the22

range indicated by the following formulas is used as raw film, and that the polyvinyl alcohol raw
film is uniaxially stretched 1.2 to 2 times in the dyeing treatment process and is further uniaxially
stretched 2 to 6 times in the boron compound treatment process, respectively; particularly if the
polyvinyl alcohol film is one for which the average degree of polymerization is 2,600 or higher.
Thereby, the inventor, etc. completed the Inventions.
Y > -0.0667X + 6.73 …. (I)X ≧ 65 .... (II)X: Complete dissolution temperature (C) of a 2 cm-square film piece in hot water
Y: Equilibrium swelling degree (weight fraction) calculated by dividing the weight of the film after
dipping by the weight of the film after drying as indicated in the following formula when a 10
cm-square film piece is dipped in a constant temperature water bath of 20C for 15 minutes forswelling and is then dried at 105C for two hours." (paragraph [0008])(E) "A film forwhich complete dissolution temperature is 65C or lower cannot be used inpractice as it partially dissolves or deteriorates at the time of stretching, while a film of which
complete dissolution temperature is 90C or higher cannot be sufficiently stretched and trouble
tends to occur at the time of stretching. Even if the complete dissolution temperature of a film iswithin the aforementioned range, if its equilibrium swelling degree indicated by Formula (I) is
outside the range indicated by the upper formula, problems occur, such as deterioration in thepolarization performance and durability performance of the polarizing film and deterioration in thestability of manufacturing, etc. Therefore, it becomes difficult to obtain an intended polarizing
film." (paragraph [0013])(F) "[Working examples] A PVA film which is 80 μm thick and of which the complete dissolution
temperature in hot water (X) and equilibrium swelling degree (Y) were the following values wasdipped in a water solution composed of 0.2g/1 of iodine and 60g/1 of potassium iodide at 30C for
240 seconds and was concurrently uniaxially stretched 1.2 times, and was then dipped in a water
solution composed of 60g/1 of boric acid and 30g/1 of potassium iodide and was concurrently
treated with boric acid for five minutes while being uniaxially stretched 6 times. After that, the PVA
film was dried for 24 hours at room temperature. Thereby, a polarizing film was obtained.
Measuring the fading temperature in water of the obtained polarizing film to evaluate moistureresistance and heat resistance, the values were as follows. For working examples 1 and 2, neither
breaks nor cracks were found in the film even when the film was uniaxially stretched 6.4 times
during the boric acid treatment after dyeing, while, for comparative examples 1 and 2, the film
broke when the stretch ratio during the boric acid treatment after dyeing exceeded 6 times.

23

Working example 1

Complete

Working example 2

Comparative

Comparative

example 1

example 2

71.6

72.0

74.5

75.3

2.4

2.2

1.6

1.6

Y > 1.95

Y > 1.93

Y > 1.76

Y > 1.71

63

62

52

54

dissolution
temperature

(X)

(C)
Equilibriumswelling degree (Y)
Range

of

(Y)

<calculated value>
Fading temperature
in water (C)"
(Abstract of the statement in paragraphs [0020] to [0026])(G) "[Effect of the invention] The invention shows a superior effect in the polarization performanceand durability performance of a polarizing film and an excellent effect in stability at the time of
manufacturing a polarizing film by using a polyvinyl alcohol film with specific complete
dissolution temperature in hot water and equilibrium swelling degree as a raw film and byuniaxially stretching it at least in the boron compound treatment process." (paragraph [0027])
B. According to the statement in the Description as found above, the detailed explanation of theinvention in the Description is recognized as describing the following. (1) Conventional PVA
polarizing films have good and bad points, and the development of a PVA polarizing film which issuperior in both polarization performance and durability had been desired (A(B) and (C) above). (2)A polarizing film forwhich durability under high-temperature and high-humidity conditions has

been improved and for which the degree of polarization does not change even if it is left as it is fora long period of time can be obtained by the method described in Unexamined Patent Application
Publication No. 1992-173125 (A(B) above); however, polarization performance and durability
performance, etc. cannot be stabilized by this method, that is, the degree of polarization varies due
to slight fluctuations in the manufacturing conditions, and problems had arisen at a high stretch
ratio, such as breaks and cracks in the film (A(C) above). (3) The inventor, etc. found that apolarizing film with high polarization performance and durability which can bear a high stretch
ratio can be manufactured by adopting the constitution described in Claim 1 in the scope of claimsin the Description, taking into account the existence of such a problem in prior art (A(C) and (D)above).

24

Specifically, the detailed explanation of the invention is recognized as describing the following.
Highly-durable polarizing films of which the fading temperature in water was 63C and 62C,
respectively, and which neither broke nor cracked even at the stretch ratio of 6.4 were obtained
from a PVA film forwhich the complete dissolution temperature in hot water (X) and equilibriumswelling degree (Y) were 71.6C and 2.4 [within the range indicated by Formula (I)] (working
example 1) and a PVA film of which the complete dissolution temperature in hot water (X) andequilibrium swelling degree (Y) were 72.0C and 2.2 [within the range indicated by Formula (I)](working example 2). On the other hand, insufficiently-durable polarizing films of which the fading
temperature in water was 52C and 54C, respectively, and which broke if the stretch ratio
exceeded 6.0 were obtained from a PVA film forwhich the complete dissolution temperature in

hot water (X) and equilibrium swelling degree (Y) were 74.5C and 1.6 [outside the range indicatedby Formula (I)] (comparative example 1) and a PVA film for which the complete dissolution
temperature in hot water (X) and equilibrium swelling degree (Y) were 75.3C and 1.6 [outside therange indicated by Formula (I)] (comparative example 2) (A(F) above).
According to the statement in A(D) and (E) above, it is recognized that it is considered as an
essential means for solving the problem of prior art that complete dissolution temperature in hot
water (X) and equilibrium swelling degree (Y) are in a relationship that satisfies the two formulas,
Formula (I) and Formula (II). However, there is no statement that proves that a person ordinarily
skilled in the art can recognize that the problem can be solved if complete dissolution temperature
in hot water (X) and equilibrium swelling degree (Y) are in a relationship that exists in the rangethat satisfies the two formulas, Formula (I) and Formula (II), other than the aforementioned working
examples.
(4) Comparison between the invention described in the detailed explanation of the invention and theinvention described in the scope of claims
A. As instructed in (1) above, in order to obtain a patent by describing an invention in the scope ofclaims, it is necessary to describe the invention in the detailed explanation of the invention in thedescription so that a person ordinarily skilled in the art can recognize that the problem to be solvedby the invention can be solved. As is clear from (2) above, the Inventions include, as a constituent
feature, a product specified by a range indicated by certain formulas using two technical parameterswhich indicate characteristic values, and relate to a parameter invention. It is reasonable tounderstand that, in order that the statement of the scope of claims satisfies the Support Requirementof a Description for such inventions, the detailed explanation of the invention needs to describe thetechnical meaning of the relationship between the range indicated by the formulas and the obtained
effect (performance) to the extent that a person ordinarily skilled in the art can understand it as of
the time of filing the application without requiring the disclosure of any specific examples, or to25

describe said meaning by disclosing specific examples to the extent that a person ordinarily skilledin the art can recognize, in consideration of the common general technical knowledge as of the timeof filing the application, that the desired effect (performance) can be obtained within the range
indicated by the formulas.
B. Then, looking at whether the statement in the Description satisfies the Support Requirement of a
Description mentioned in A above in relation to the statement of Claim 1 in the scope of claims, asconsidered in (3) above, the detailed explanation of the invention in the Description describes
adoption of the constitution described in Claim 1 as a means for manufacturing a polarizing film
which solves the problem of conventional PVA polarizing films, is superior in durability andpolarization performance, and also has good performance in stability at the time of manufacturing.
However, as specific examples intended to indicate the effectiveness of adopting said constitution,
the detailed explanation of the invention merely describes two working examples, which indicate
the fact that a polarizing film that was highly durable and could bear a high stretch ratio was
obtained from a PVA film with specific values of complete dissolution temperature in hot water (X)and equilibrium swelling degree (Y), and two comparative examples, which indicate the fact that apolarizing film that /was insufficiently durable and could not bear a high stretch ratio was obtained
from a PVA film with other specific values of complete dissolution temperature in hot water (X)and equilibrium swelling degree (Y).
On the other hand, in the Inventions, a polarizing film with the aforementioned desired
performance can be obtained if complete dissolution temperature in hot water (X) and equilibriumswelling degree (Y) that a PVA film used as a raw film should satisfy are in a relationship thatexists in the range defined by the two formulas, "Y > -0.0667X + 6.73 [Formula (I)]" and "X ≧ 65
[Formula (II)]." There is no evidence sufficient to recognize that a person ordinarily skilled in theart could recognize as of the time of filing the Application, without requiring the disclosure of any
specific examples, that the aforementioned range is defined based on the formula which is the basisof Formula (I), "Y = -0.0667X + 6.73" (hereinafter referred to as the "Basic Formula of Formula(I)"), and the formula which is the basis of Formula (II), "X = 65C" (hereinafter referred to as the"Basic Formula of Formula (II)").
In addition, in Figure 1 in Attachment 1 (there is no dispute over the content indicated in the
figure between the parties), the Basic Formula of Formula (I) is indicated by an oblique full line andthe Basic Formula of Formula (II) is indicated by a vertical dashed line on an X-Y plane on which
X-axis indicates complete dissolution temperature in hot water (X) of a PVA film of 60 to 100C
and Y-axis indicates equilibrium swelling degree (Y) of 1.0 to 3.0, and the values of complete
dissolution temperature in hot water (X) and equilibrium swelling degree (Y) of PVA films used forthe aforementioned working examples and comparative examples are plotted. As seen in the figure,26

it is obvious that it is possible to draw a direct line or curbed line based on another formula between
the aforementioned two working examples and two comparative examples, other than the
aforementioned oblique full line that indicates the Basic Formula of Formula (I), on said X-Y plane.
Originally, it is also clear that it has not been proven that whether the desired effect (performance)
can be obtained can be distinguished by any direct line or curbed line on said X-Y plane as aborderline. Therefore, it can hardly be said that the aforementioned four specific examples alone
precisely support the contention that the aforementioned oblique full line is a borderline which
defines the range in which the desired effect (performance) can be obtained.
In that case, it should be considered impossible for a person ordinarily skilled in the art who
sees the Description to recognize, even in consideration of the common general technicalknowledge as of the time of fling the Application, that the aforementioned four specific examples
prove that a polarizing film which solves the problem of conventional PVA polarizing films and has
the aforementioned desired performance can be manufactured only if complete dissolution
temperature in hot water (X) and equilibrium swelling degree (Y) of a PVA film are in a
relationship that exists in the range defined by the aforementioned oblique full line indicating the
Basic Formula of Formula (I) and the aforementioned dashed line indicating the Basic Formula ofFormula (II). Therefore, such statement in the detailed explanation of the invention in the
Description alone cannot be considered as describing the invention by disclosing specific examples
to the extent that a person ordinarily skilled in the art can recognize, in consideration of thecommon general technical knowledge as of the time of filing the Application, that the desired effect(performance) can be obtained within the range indicated by the formulas. Consequently, it cannot
be said that the statement of Claim 1 in the scope of claims in the Description satisfies the Support
Requirement of a Description.
C. The plaintiff also alleges that the range that satisfies the two formulas, Formula (I) and Formula(II), does not indicate an indefinitely extensive range because equilibrium swelling degree (Y) is 1
or higher and its upper limit never exceeds 3.0, while the lower limit of complete dissolution
temperature in hot water (X) is 65C and its upper limit is substantially 90C.
However, even if the ranges of the values of complete dissolution temperature in hot water (X)and equilibrium swelling degree (Y) are as alleged by the plaintiff, it cannot be said that the Basic
Formula of Formula (I) has been precisely supported by the aforementioned four specific examples,as mentioned in B above. Therefore, it still cannot be said, based on the two working examples forwhich the effect has actually been confirmed, that PVA films other than those used in the working
examples necessarily bring about the aforementioned desired effect only if they satisfy the two
formulas, Formula (I) and Formula (II). Consequently, the plaintiff's aforementioned allegation
cannot be accepted.

27

(5) The plaintiff alleges as follows. In consideration of ten pieces of experimental data described in
Ko No. 6 Experimental Certificate, which the plaintiff submitted at the stage of the proceedings of
the Opposition, and the four pieces of experimental data described in the Description, the number of
specific examples is sufficient to arrive at the two formulas, Formula (I) and Formula (II), and isalso sufficient to confirm that PVA films that satisfy the aforementioned two formulas bring about asuperior effect. However, in the decision, the JPO ruled, without taking Ko No. 6 Experimental
Certificate into consideration and based only on the four examples in total, specifically, the twoworking examples, working examples 1 and 2, and the two comparative examples, comparative
examples 1 and 2, which are described in the Description, that there are not sufficient working
examples to provide convincing evidence that all of those that satisfy the aforementioned two
formulas bring about an effect that is superior in polarization performance and durability
performance and that it cannot be confirmed, in light of the statement in the Description andcommon general technical knowledge in the relevant field, that those that satisfy the
aforementioned two formulas bring about the aforementioned superior effect. However, thisdetermination is erroneous.
A. However, as mentioned in (4)A, for parameter inventions, such as the Inventions, of whichconstituent feature includes a product specified by the range indicated by certain formulas using two
technical parameters that indicate characteristic values, it is understood that, in order that thestatement of the scope of claims satisfies the Support Requirement of a Description, it is necessary
to describe, in the detailed explanation of the invention, the invention by disclosing specificexamples to the extent that a person ordinarily skilled in the art can recognize, in consideration of
the common general technical knowledge as of the time of filing an application, that a desired effect(performance) can be obtained within the range indicated by certain formulas using parameters(technical parameters). This understanding is based on the original role of a description, that is,clarifying the scope to which the effect of a patent right extends after establishment of the patentright (technical scope of a patented invention) as well as disclosing the technical content of theinvention for which a patent is sought to the public. This naturally includes the purpose of clarifyingthat the range indicated by the formulas is not a mere speculation but is supported by experimental
results. If so, it should not be permitted to satisfy the Support Requirement of a Description by
expanding or generalizing the content described in the detailed explanation of the invention to thescope of the invention described in the scope of claims by supplementing the content outside thestatement by submitting experimental data after filing a patent application, although the detailed
explanation of the invention does not disclose specific examples to the extent that a person
ordinarily skilled in the art can recognize that the problem to be solved by the invention can besolved and it cannot be said, even in consideration of the common general technical knowledge of28

persons ordinarily skilled in the art as of the time of filing the Application, that the content
disclosed in the detailed explanation of the invention can neither be expanded nor generalized to thescope of the invention described in the scope of claims. This is because such act goes against the
purpose of the patent system.
B. Looking at this case, Ko No. 6 Experimental Certificate is an experimental result certificate
dated August 3, 2004, which was prepared by A (chief of the functional materials laboratory of thecentral research institute), who is the plaintiff's employee. The certificate describes the following.
(1) A conducted experiments 1 to 8 and comparative experiments 1 and 2 during the period fromMay 18 to August 25, 1993, which is before the date of filing the Application, for the purpose ofclarifying that a polarizing film which is superior in polarization performance and durability
performance, etc. can be obtained when using a PVA film that satisfies the two formulas, Formula(I) and Formula (II), and making clear the basis based on which the two formulas, Formula (I) andFormula (II), were developed. (2) In experiments 1 to 8, PVA films for which the relationshipbetween complete dissolution temperature in hot water (X) and equilibrium swelling degree (Y)/was within the range of the two formulas, Formula (I) and Formula (II), were obtained byarbitrarily setting the average degree of polymerization of PVA, average degree of saponification of
PVA, drying temperature, drying time, etc., and the fading temperature in water of polarizing films
manufactured from the above PVA films was measured. In addition, the possibility of the film
breaking where it is uniaxially stretched 6.4 times during the boric acid treatment process wasverified. (3) In comparative experiments 1 and 2, PVA films for which the relationship between
complete dissolution temperature in hot water (X) and equilibrium swelling degree (Y) was outside
the range of the two formulas, Formula (I) and Formula (II), were obtained by arbitrarily setting the
aforementioned conditions such as the degree of polymerization of PVA, and the fading
temperature in water of polarizing films manufactured from those PVA films was measured. In
addition, the possibility of the film breaking where it is uniaxially stretched 6.4 times and 5.1 times,
respectively, during the boric acid treatment process was verified. (4) Figure 1 in Attachment 2(Note: the content indicated by the figure is substantially the same as that of Figure 2 in Attachment
1) organizes the results of these experiments, and it revealed that a polarizing film forwhich thefading temperature in water is high and which is superior in polarization performance and durability
performance can be obtained if a PVA film for which the relationship between complete dissolution
temperature in hot water (X) and equilibrium swelling degree (Y) satisfies the two formulas,
Formula (I) and Formula (II).
C. In that case, even accepting the statement in Ko No. 6 Experimental Certificate as they are,experimental data described in Ko No. 6 Experimental Certificate simply disclose, after the filing of
the Application, the results of measuring the performance of polarizing films obtained from PVA

29

films with specific values of complete dissolution temperature in hot water (X) and equilibriumswelling degree (Y), and the relationship between the values of complete dissolution temperature in
hot water (X) and equilibrium swelling degree (Y) of PVA films and the performance of polarizing
films obtained which is determined based on the measured data, both of which are not specificallydisclosed in the detailed explanation of the invention in the Description. It should not be permitted
to take the data into consideration as a supplement of the aforementioned content described in thedetailed explanation of the invention outside the statement therein, in light of the instruction in A
above. Therefore, the plaintiff's aforementioned allegation cannot be accepted.
(6) As considered above, a person ordinarily skilled in the art cannot recognize, based on thematters described in the detailed explanation of the invention in the Description and the common
general technical knowledge as of the time of filing the Application, that the relationship between
complete dissolution temperature in hot water (X) and equilibrium swelling degree (Y) of a PVA
film that is necessary as a means for manufacturing a polarizing film, which solves the problem of
conventional PVA polarizing films, is superior in durability and polarization performance, and also
has good performance in stability at the time of manufacturing, can define the range indicated by
the two formulas, Formula (I) and Formula (II). Therefore, the aforementioned detailed explanationof the invention cannot be considered as describing the invention of a polarizing film manufacturingmethod in which a PVA film for which the relationship between X and Y is within the range
indicated by the two formulas, Formula (I) and Formula (II).
On the other hand, as mentioned in (2) above, Claim 1 describes the invention of a polarizing
film manufacturing method in which a PVA film for which the relationship between complete
dissolution temperature in hot water (X) and equilibrium swelling degree (Y) is within the range
indicated by the two formulas, Formula (I) and Formula (II). Therefore, it is inevitable to say thatthe statement of the scope of claims of Invention 1 claimed in Claim 1 and of Inventions 2 and 3
claimed in claims 2 and 3 which cite Claim 1 exceeds the scope of the invention described in thedetailed explanation of the invention in the Description.
Consequently, the statement of the scope of claims in the Description does not satisfy the
Support Requirement of a Description, and it should thus be considered to be one that violates theprovisions of Article 36, paragraph (5), item (i) of the Old Patent Act. Therefore, the determinationin the decision to that effect is not erroneous.
(7) In response to this, the plaintiff alleges as follows. As the time of filing the Application, it was
not required to describe all experimental data that serve as the basis as working examples in a
description for patent applications for parameter inventions, such as the Inventions; it should beconsidered extremely unreasonable and unacceptable to revoke the Patent only on the grounds of
deficiency in the statement in the Description by retroactively applying the Examination Guidelines30

for Patent and Utility Model concerning the description requirements of a description which wereset after the filing of the application for the Patent despite the fact that whether the Description
satisfies the description requirements did not become a question at all in the examination of the
Application.
A. However, whether the statement of the scope of claims in the Description satisfies the Support
Requirement of a Description prescribed in Article 36, paragraph (5), item (i) of the Old Patent Act
should be determined in line with the purpose of said provisions of the Patent Act. According to the
purpose of the provisions, interpretation as in (4)A above should be adopted with regard to the
Support Requirement of a Description for parameter inventions, such as the Inventions.
B. The Examination Guidelines for Patent and Utility Model indicate basic ideas for examiners who
engage in the examination of requirements for patentability, and are also widely used by applicantsas an indicator for application management, etc. However, they are absolutely determination
standards which were prepared for the purpose of contributing to securing the fairness andreasonableness of determinations made by the JPO concerning whether a patent application satisfies
the requirements for patentability provided for in the Patent Act. They were not set as "review
standards" mentioned in Article 5 of the Administrative Procedure Act (excluded from theapplication of the provisions of said Article pursuant to Article 195-3 of the Patent Act), and are notlegal rules. Therefore, whether the content of interpretation of the aforementioned provisions of the
Patent Act has been specifically prescribed as standards in the Examination Guidelines for Patentand Utility Model applicable to the application for the Patent does not affect the interpretation
mentioned in (4)A above. In addition, the Examination Guidelines for Patent and Utility Modelrevised in October 2003 (Exhibit Ko No. 11) cite the case where "the content disclosed in thedetailed explanation of the invention can neither be expanded nor generalized to the scope of theclaimed invention even in light of the common general technical knowledge as of the time of filingan application" as one of the types of violation of the Support Requirement of a Description. In
addition, the Guidelines cite the case where "in an invention which is going to specify a product …
by limiting function and characteristic, etc. numerically, a sufficient number of specific examples
covering the whole numerical range described in the claims is not shown, and furthermore byreferring to other statement in the detailed examination of the invention or in light of the common
general technical knowledge as of the time of filing an application, the relevant specific examples
can neither be expanded nor generalized to the whole numerical range described in the claims" as
an example thereof. It is obvious in light of the holding mentioned in (5)A above that this specificstandard conforms to the purpose of the provisions of Article 36, paragraph (5), item (i) of the Old
Patent Act. Because of this, even if the result is the same as that in the case of retroactively applying
the standard to a description for a patent for which an application was filed before patent31

applications to which the specific standard applies, the problem of violation of law shall not arise.
C. In this regard, the plaintiff alleges that the Examination Guidelines for Patent and Utility Modelrevised in October 2003 are the standards for the interpretation and application of Article 36,
paragraph (6), items (i) and (ii) of the current Patent Act and that even if the Guidelines are
retroactively applied, the subject of application should be limited to patent applications filed on andafter January 1, 1995, when the Patent Act after revision by the 1994 Revision Act which includes
the corresponding provisions became applicable. The plaintiff also alleges that, in the Inventions,the invention claimed in the scope of claims substantially corresponds to the invention described in
the detailed explanation of the invention and that the detailed explanation of the invention conforms
to the content of the Examination Guidelines for Patent and Utility Model, "It is necessary to statein the detailed explanation of the invention at least one mode that an applicant for a patent considers
to be the best among the 'modes for working the invention' showing how to work the claimed
invention." However, in light of the instructions above, the plaintiff's allegations cannot be
accepted.
2. According as above, the plaintiff's allegation of an error in the determination in the decision to
the effect that the statement of the scope of claims in the Description does not satisfy the Support
Requirement of a Description and thus violates Article 36, paragraph (5), item (i) of the Old Patent
Act (ground for rescission 1) is groundless. Therefore, the grounds for rescission alleged by theplaintiff are groundless without needing to determine whether the determination in the decision to
the effect that the statement of the detailed explanation of the invention in the Description violatesparagraph (4) of said Article is erroneous. Moreover, there is no other defect for which the decision
should be rescinded. As noted in No. 3, 3(3), the decision violates law as it made an error inapplication of laws and regulations. However, it is obvious that the violation does not affect theconclusion of the decision.
Therefore, the plaintiff's claim is groundless and thus shall be dismissed, and the judgment shallbe rendered in the form of the main text.

Intellectual Property High Court, Special Division
Presiding judge: SHINOHARA Katsumi
Judge: TSUKAHARA Tomokatsu
Judge: SATO Hisao
Judge: AOYAGI Kaoru
Judge: OKAMOTO Gaku

32

Attachment 1

33

Attachment 2

34