2022 (Gyo-Ke) 10007 [Heat Transfer System] <Shoji> — Not “Obviousness upon Obviousness”
更新日：2 日前
Article information
Article type: Case note
Category: Patents
Topics: Inventive step
First published on this website: 2026-11-01
Display and classification checked: November 2, 2026
Originally published on Ameblo: 2024-08-26 (Japan time). Full English translation.
2022 (Gyo-Ke) 10007 [Heat Transfer System] <Shoji>
One of the matters actually disclosed in a publicly available reference was selected for comparison.
*Even if a mental operation of selecting and presenting a refrigerant combination relevant to the difference was involved, this merely selected the same term as in the claimed invention.
⇒ Not “obviousness upon obviousness”
(Excerpt from the court's reasoning)
The plaintiffs argue that the JPO decision, at the stage of identifying well-known matters, made an estimate or inference by selecting R32 from multiple exemplified refrigerants and did not objectively identify “well-known matters”; that, after encountering the claimed invention, it selected from multiple listed refrigerants the same configuration as the claimed invention, impermissibly introducing an obviousness assessment into the identification of the cited invention; and that, because its findings involved assumptions or inferences at the stage of identifying well-known technology and then an assessment of whether differences between the claimed and cited inventions could be rationalized, this constituted impermissible so-called obviousness upon obviousness…. …
However, …Cited References 2 and 11 are found to actually describe combinations of each of the multiple listed primary-side refrigerants with carbon dioxide, and the combination of R32, one of those refrigerants, with carbon dioxide is one of the combinations actually described. Identification of a cited invention is performed so as to enable error-free comparison with and assessment of the claimed invention. Since Difference 1 identifies that the primary-side refrigerant is R32 in the claimed invention but propane in the cited invention, selecting a combination with R32 as the primary-side refrigerant is naturally appropriate as a refrigerant combination relevant to Difference 1. Even if a mental operation of selecting and presenting a combination relevant to Difference 1 is involved, this merely selects a combination relevant to the difference from the reference's description by searching for the same specific term, “R32,” used in the claimed invention's elements. This cannot be regarded as an estimate, inference, or assumption departing from the reference's disclosure, nor can it be said to be an obviousness assessment.
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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.
