BEYOND BORDERS Seminar September 4, 2017 Inventive Step in Japan Masashi Moriwaki Examination Guidelines for Patent and Utility Model in Japan https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/1312 002_e.htm 1
Overview of JPO Examination Flow Determining Inventive Step in Japan 2
Cf. EPO/USPTO Approach EPO The problem solution approach Could Would Approach (for avoiding Ex post fact analysis) USPTO Graham case Difference between Prior Art in Claim, Level of skill; Secondary Considerations KSR case TSM + Other considerations Basic Idea of Determination of Japan Inventive Step Whether or not it could be reasoned that a person skilled in the art easily arrives at the claimed invention based on the prior art. 3
A person skilled in the art in Japan Includes a Team of Experts (Same as EPO) Has the common general knowledge in the technical field of the claimed invention at the time of filing A person skilled in the art in Japan Can comprehend all the matter in the state of the art in the technical field of the claimed invention 1. at the time of filing, and 2. in the field relevant to problems to be solved by the invention 4
Examination of Inventive Step in Japan Single closest reference for 1. solving a problem in the claimed invention 2. providing reason to combine by following the steps (1) to (4) Step(1): Is it possible to provide any reason based on other pieces of prior art or considering the common general knowledge? Step(2): If it is impossible to provide any reason to combine based on the above step (1), the examiner determines that the claimed invention involves an inventive step. Step(3): If it is possible, the examiner determines whether it is possible to provide any reason to combine by comprehensively assessing various factors which includes factors in support of the existence of an inventive step. Step(4): If the examiner determines that the it is impossible to provide any reason to combine based on the above step (3), the examiner determines that the claimed invention involves an inventive step. Otherwise, the examiner determines that the claimed invention does not involve an inventive step. 5
Detail of Determination of Inventive Step in Japan The examiner should not regard the combination of two or more independent pieces of prior art as the primary prior art Where there are two or more claims, the examiner should determine the existence of an inventive step for each claim. 6
Example 1 Multifunctional Bottle Holder Box (EP2771249/ JP / US ) Removable Edge 7
IPR has positive opinions for Inventive Step Swingler 8
US Prosecution Non Final OA Cited in ISR Swingler (5,285,900) Abandon Olivero (US 2001/0025824) 9
Reference 1 in JP Grant a Patent 20.08.2015 Rejected Abandon Rejected Decision of Rejection 25.10.2016 10
Example 2 WO2012/014058 Cooling Plate A liquid cooling device of an electronic card for Super Computer (Claimed Invention) 11
WO2012/014058 WO2012/014058 hydraulic connectors Switching / Deflector Means (plugs) hydraulic connectors 12
Claim 1 as of International Filing 1. Cooling device with liquid for electronic cards (16), in particular for high performance processing units, comprising at least a hydraulic circuit (13) in which a heat carrying fluid flows in order to extract the heat produced by the electronic components (18) and/or by the hot spots (20) present on at least one associated electronic card (16), characterized in that it comprises a cooling plate (12) made of heat conductive material, and provided with means (43) for mechanical coupling to said electronic card (16) so as to be inserted together therewith in a containing rack (30) for electronic cards of said processing unit, wherein said cooling plate (12) has at least a heat extraction surface (24) directly facing said electronic components (18) and/or said hot spots (20) and at least partly in contact with, or at least in close proximity, in the order of tenths of a millimeter, to said electronic components (18) and/or said hot spots (20), said hydraulic circuit (13) being made in the thickness of said cooling plate (12) and comprising a plurality of hydraulic sub circuits (13a) and switching/deflector means (42) disposed along at least part of said hydraulic sub circuits (13a) in order to define desired paths which can be selectively varied by switching the flow of the fluid in correspondence with the main electronic components (18) and/or with the hot spots (20) of said electronic card (16), and in that said cooling plate (12) has sliding guide means (15) able to cooperate with corresponding alignment means (31) of the containing rack (30) in order to insert/ extract the combined plate(12)/card (16) into/from the rack (30). 13
Inventive Step : Yes 14
Claim 12 EPO JPO switching/deflector means (42) consist of plugs (or similar) EP2599371 (Granted Claim1) 15
Grant a Patent 24.08.2017 Rejection in Japan On Feb.25, 2015 Lack of Inventiveness 16
Rejection in Japan On Feb.25, 2015 IDS filed to the USPTO on June 1, 2015 Rejection in Japan 17
Examiner s Recognition Ref. 1 discloses basic components of cooling devices, except for Switching/deflector means. Ref. 2 discloses Switching/deflector means (42). CLAIM12 is also rejected in Japan in view of Ref. 1 6. Cited Documents in Japan Ref. 1(JPA2004 246615) Ref. 2 Switching / Deflector Means grooves 216, Switching/Deflector means are NOT disposed along at least part of the branches of said hydraulic sub circuits (13a) b/c there were no branches in the cited inventions. 18
Amended Claim 1 in Japan On July.2, 2015 said hydraulic circuit (13) being made in the thickness of said cooling plate (12) and comprising a plurality of hydraulic sub circuits (13a) and switching/deflector means (42) disposed along at least part of the branches of said hydraulic sub circuits (13a) (CLAIM 12) WO2012/014058 hydraulic connectors Switching / Deflector Means hydraulic connectors switching/deflector means (42) disposed along at least part of the branches of said hydraulic sub circuits (13a) 19
Argument 20
Rejection in U.S. On Mar.26, 2015 Amended Claim 1 in U.S. On July.27, 2015 21
CLAIM 5 USPTO JPO Oct. 2 2015 Claim 1 + 5 Notice of Allowance Dec. 28 2015 Notice of Allowance Claim 1 + 12(branches) USPTO examiner has issued a notice of allowance AFTER fully consideration of the cited documents in Japan filed as IDS. JPO examiner has issued a notice of allowance AFTER fully consideration of the US exam result. 22
24.08.2017 Grant a Patent Claim 1 + 12(plugs) Masashi Moriwaki MORIWAKI IP, P.C. Fifth Hase Building 637 Suiginya cho Shimogyo ku Kyoto JAPAN Shinagawa East One Tower 4th Floor 2 16 1 Konan Minato ku Tokyo JAPAN www.moriwakipat.com 23