<Trial and Appeal Practitioners Study Group Report 2024> Case 1 (Mechanical) — 2022 (Gyo-Ke) 10007 [Heat Transport System]
Updated: 2 days ago
Article information
Article type: Reports and activities
Category: Patents
Topics: Inventive step, Examination and appeal practice, Motivation and teaching away
First published on this website: 2026-11-01
Display and classification checked: November 2, 2026
Originally published on Ameblo: 2025-07-20 (Japan time). Full English translation.
<Trial and Appeal Practitioners Study Group Report 2024> Case 1 (Mechanical)
2022 (Gyo-Ke) 10007 [Heat Transport System]
•In practice, it is difficult to determine whether alternatives can be said to be “actually described in parallel.” … Moreover, depending on the state of the art, there may be cases in which it is permissible to extract one member from the description of a general formula in a cited reference ….
•It is understandable that, with a number of alternatives on the order of that in this case, they can be said to be “actually described in parallel,” whereas, when the number is enormous, a particular alternative cannot be extracted; nevertheless, the dividing line is unclear.
•The participants agreed that the judgment's finding of obviousness as a design modification or the adoption of a matter of design choice, even without particular motivation, was appropriate.
On the other hand, concern was also expressed that determining what constitutes a matter of design choice is not necessarily highly predictable.
When well-known technology is used as a secondary cited invention, it is the subject of application (combination), so motivation is naturally required. By contrast, when well-known technology is used as the basis for a design modification or the like, motivation is not necessarily required under the rule stated in this judgment.
•Regarding identification of the cited invention, the judgment states that configurations not essential to solving the problem need not be included in that identification. However, it is not necessarily clear how far descriptions in the specification and other documents may be extracted and identified in making a concrete finding.
Accordingly, care must be taken not to identify the invention in a manner that is merely convenient for the person making the finding.
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November 1, 2026: First published on this website.
November 2, 2026: Added article information, classification, topics, language navigation, related articles where the same case was confirmed, consultation guidance, and SEO. The original text and first-published date were preserved.
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