It is often difficult to understand well-known art described in cited documents. When the Japanese Patent Office (JPO) issues an Office Action (OA) containing a rejection due to lack of inventive step, the applicant is likely to come across descriptions indicated by the Examiner that are not mentioned in the cited documents and will consequently submit Amendments to the JPO in order to add content from the specification to the claims in an attempt to overcome the rejection. It is permissible for the Amendments to add content that is described within the scope of the specification. However, the JPO may not accept the Amendments when the content thereof responds to the lack of inventive step but is regarded as being well-known art mentioned in the already-cited, or even in not yet cited, documents.
In accordance with Japanese Patent Law, Article 29, Paragraph 1, Number 3 and Paragraph 2, any invention described in a publication or any invention which could be easily made based on an “invention described in a publication” is not deemed to be a patentable invention. In addition, the JPO defines “well-known art” as “generally known technology in a specific field; for example, when there is a large number of publications citing the technology or when the technology is so broadly known in the industrial segment that it does not need to be exemplified” (Section 1.2.4 (3) (pages 3 to 4) of “Chapter 2 Novelty and Inventive Step” in the Examination Guidelines for Patents and Utility Models, http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/Guidelines/2_2.pdf).
This article introduces practical points to be considered about well-known art when an applicant prepares Amendments to be submitted to the JPO in response to a rejection concerning novelty and/or inventive step in an OA. Examples are illustrated for the case of an appeal against a JPO Decision of Rejection and the case of a lawsuit against a JPO Appeal Decision.
Example 1: A method for Setting a Display Screen in a Mobile Terminal
In the Claims…
“A method for setting a basic display screen in a mobile terminal, comprising:
a first step of selecting a display image for a status indicator;
a second step of selecting a display image from a plurality of images previously stored as background elements of the basic display screen; … wherein a background of the basic display screen consists of a plurality of background elements;
a third step of setting display positions of the background elements.”
In summary, the above-mentioned invention represents a method for setting the background of a standby screen in a mobile terminal by selecting a plurality of images as the background elements.
The JPO Appeal Decision states that the technical concept of the “background of the basic display screen consists of a plurality of background elements, … setting display positions of the background elements” is deemed to be well-known art referring to the instructions for setting up a standby screen described in the instruction manual of a mobile terminal (Citation 1).
According to the court ruling, “Document 1 illustrating well-known art describes that the standby screen consists of images of a clock and a calendar shown as status indicators as well as the image of a dog shown in a selected position on wallpaper. This image of a dog is selected as a display image which is one element of the standby screen, and the image is distinguished from display images of the status indicators. Accordingly, the image of a dog can be regarded as one of the background elements of the standby screen. Thus, the image of a dog and the wallpaper correspond to a plurality of background elements on the same screen”. The plaintiff (applicant) argued that the image of a dog cannot be regarded as the background of the clock or of the calendar referring to the definition of “background” in a Japanese dictionary and to the mode of the dog image in the screen. However, the court did not accept the plaintiff’s argument.
It is important for applicants to understand what the technical common knowledge is, regardless of the contents of well-known art described in cited documents. In this case, the court judged that the standby screen consists of a plurality of background images regardless of the size of the elements and/or the importance of the indicators based on a user’s selection. The court accepted that this can be regarded as technical common knowledge and is well-known art as described in the cited documents.
Example 2: Location Dependent Display of Information for GPS Devices
In the Claims…
“A device comprising a memory medium which stores a plurality of GPS-advice data sets, each comprising a GPS-advice type, a GPS-advice range, and GPS-advice, … wherein the CPU of the GPS device compares the current GPS device location with the GPS-advice range included in the GPS-advice data sets and selects a GPS-advice data set for output to the output device if the current GPS device location falls within the GPS-advice range included in the GPS-advice data set … .”
The JPO Appeal Decision recognized that the coordinates of longitude and latitude mentioned in Citation 1 are not used as “coordinate points” but used as “a coordinate area”. Moreover, documents were submitted to the Intellectual Property (IP) High Court which prove that the determination of location-specific information from a predetermined range of latitude and longitude was already a well-known technology.
The IP High Court reached the following conclusion. “Coordinates” are defined as specific points.
Although the citation does mention, in general, the start-up of an automatic search system on a database regarding specific content in which a user may be interested within a predetermined radius centering on the user’s actual location, it does not mention a specific constitution or method.
The IP High Court found that “Citation 1 does not describe or suggest comparing the current GPS device location with location-specific information which indicates a specific range of coordinates on the GPS and which includes upper and lower limits of longitude and latitude”.
It seems that the IP High Court examined whether or not “GPS data” can be regarded as “a specific range of GPS coordinates” by considering the content mentioned in Citation 1, but this does not mean that well-known technology can be applied to any type of disclosed content.
In conclusion, when a patent application is rejected by the JPO and the applicant argues against the rejection by submitting Amendments to the JPO, the applicant should give serious consideration to what is the well-known technology, in particular, regardless of the contents of cited documents about well-known technology, and consider whether the well-known technology can be referred to in view of the content of the main cited publication.