PatentDate

May 31, 2022

Court

RightCase

2021 (Gyo-Ke) 10082

Intellectual Property High
Court, Third Division

number- A case in which the court determined that there was an error in the determination
concerning an inventive step in the JPO Decision wherein an appeal against theexaminer's decision of refusal related to a patent application for an invention titled"Insulated electrical cable" was determined to be groundless, and the court rescinded
the JPO Decision.
Case type: Rescission of Appeal Decision of Refusal
Results: Granted
References: Article 29, paragraph (2) of the Patent Act
Related rights, etc.: Patent Application No. 2019-166439
Decision of the JPO: Appeal against Examiner's Decision of Refusal No. 2020-6043
Summary of the Judgment
1. In this case, as the Japan Patent Office (the "JPO") determined that an appeal against
the examiner's decision of refusal concerning the Plaintiff's patent application for aninvention titled "Insulated electrical cable" (hereinafter this decision is referred to as
the "JPO Decision") is groundless, the Plaintiff claimed rescission of the JPO Decision.
The summary of the JPO Decision is that the invention stated in Claim 1 afteramendment (hereinafter referred to as the "Invention in the Application") could havebeen easily conceived of by a person skilled in the art based on the invention stated inExhibit Ko 1, the unexamined patent application publication (Unexamined Patent
Application Publication No. 1987-122012; hereinafter referred to as the "Exhibit Ko 1Publication") (hereinafter this invention is referred to as the "Cited Invention") andwell-known arts as stated in the publications of Exhibits Ko 2 through Ko 6, and,
therefore, it lacks an inventive step.
2. In this judgment, the court determined as follows: there were no errors in the JPO
Decision related to the findings of the Cited Invention, common features and differences,and the involvement of inventive steps related to Differences 1, 2, and 5; however, there
were errors in the JPO Decision related to the findings of the involvement of inventive
steps related to Differences 3, 4, and 6, as stated below. The court then rescinded theJPO Decision.
(1) Whether Difference 3 could have been easily conceived of by a person skilled in theart1

A. Difference 3 is that "the Invention in the Application has 'tape materials wrapping
only the core wires'; on the other hand, it was not specified in the Cited Invention. "B. In the technology field of industrial insulated electrical cables as of May 1, 2013,
when the original application for the Invention in the Application was filed (hereinafterreferred to as the "Original Application Filing Date"), it was a well-known art to apply
tape materials to core wires for the purpose of holding twisted core wires and togenerate heat-resistance. As a result, to place tape materials between the core wires andthe sheath is also found to have been a well-known art.
The Cited Invention is an invention related to industrial insulated electrical cables
and its technology field is identical to that of the aforementioned well-known arts.
Therefore, a person skilled in the art who comes across Exhibit Ko 1 Publication isfound to be motivated to apply the aforementioned well-known arts to the Cited
Invention, which has the structure to cover multiple cores with a sheath, and to wrap
multiple twisted cores with tape materials, and, as a result, form a structure in whichtape materials are placed between the core wires and the sheath.
C. However, relating to the workability of exposing core wires by stripping the covering
layer, there was the problem that the powder applied to the outer peripheral surface ofthe core material of conventional cables may scatter when removing the core material
and, therefore, workability decreases. The Invention in the Application has the technicalmeaning of solving this problem by forming a structure in which tape materials, which
are wrapped around core wires, are placed between the core wires and the covering
layer so that the core wires and the covering layer can be separated easily by removing
the tape materials.
On the other hand, the Cited Invention intends to make it easy to remove the coreand it shares the problem to be solved with the Invention in the Application in thisregard. However, it attempts to solve the problem by forming a structure in which theouter periphery of the core of the power line and the core of the signal line are only
covered by a sheath. The Cited Invention differs from the Invention in the Applicationin its means to solve the problem.
As mentioned above, in the Cited Invention, the problem identical to that of theInvention in the Application has been solved by a means different from that adopted by
the Invention in the Application. Therefore, it is not necessary to form a structure inwhich both cores are wrapped with tape materials, in addition to adopting the relevantmeans to solve the problem, and, as a result, tape materials are placed between bothcores and the sheath. If the aforementioned structure is added to the Cited Invention, inorder to remove the core, the removal of tape materials is required in addition to the2

removal of the sheath. This decreases the workability and results in impairing the effectsof the Cited Invention. In addition, looking at Exhibit Ko 1 Publication, there is nostatement to suggest that there is a technical meaning to wrapping both cores with tapematerials by sacrificing the effect of the Cited Invention.
D. Based on the above, it should be said that applying the aforementioned well-known
arts to the Cited Invention is a disincentive. Therefore, without the need to examine themeaning of the structure of "tape materials wrapping only the core wires" related toDifference 3, it cannot be said that a person skilled in the art at the time of the Original
Application Filing Date could have easily conceived of the structure of the Invention in
the Application related to Difference 3 based on the Cited Invention and theaforementioned well-known arts.
(2) Whether Differences 4 and 6 could have been easily conceived of by a person skilledin the art
Both the structure of the Invention in the Application related to Difference 4 andthe structure of the Invention in the Application related to Difference 6 include "tapematerials," which constitutes a structure of the Invention in the Application related toDifference 3. Therefore, without the need to examine the remaining points, it cannot besaid that a person skilled in the art at the time of the Original Application Filing Date
could have easily conceived of the structure of the Invention in the Application related
to Differences 4 and 6.

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