2022 (Gyo-Ke) 10007 [Heat Transfer System] <Shoji> — Design Matters and Motivation
更新日：2 日前
Article information
Article type: Case note
Category: Patents
Topics: Inventive step, Motivation and teaching away, Design choices
First published on this website: 2026-11-01
Display and classification checked: November 2, 2026
Originally published on Ameblo: 2024-10-22 (Japan time). Full English translation.
2022 (Gyo-Ke) 10007 [Heat Transfer System] <Shoji>
*Design matters and motivation
“Where the claimed invention is reached by adopting, in the primary cited invention, design changes or design matters accompanying the concrete application of technology for solving its problem, adoption of suchdesign changes or design matters … permits a finding of obviousness even without particular motivation」
(Excerpts from the court's reasoning)
B. Whether there is motivation to apply well-known technology to the primary cited invention
(a) Whether motivation was assessed
The plaintiffs argue that, even when something is regarded as a design matter based on well-known matters, the mere fact that it is well known does not permit omission of consideration of whether obviousness can be rationalized (including whether there is motivation to apply it or any teaching away). Because the JPO decision did not make these assessments, they argue that its determination is erroneous (Part 3, 3, [Plaintiffs' Arguments], (2)A above).
In principle, affirming obviousness of the claimed invention requires motivation to combine the primary cited invention with an invention described in a secondary reference or with well-known technology. However, where the claimed invention is reached by adopting design changes or design matters accompanying the concrete application of technology to solve the primary invention's problem, adopting them is merely an exercise of the ordinary creative ability of a person skilled in the art. Obviousness should therefore be recognized even without particular motivation. As stated in (1) and (2) above, applying to the cited invention the configurations of the claimed invention relating to Differences 1 and 2 is merely an exercise of ordinary creative ability and can be regarded as a design matter; obviousness is recognized even without a showing of particular motivation for that application.
Moreover, as stated in (1) and (2), the problem addressed by the cited invention can be solved by adopting its means of solution, and there are no circumstances indicating that applying the configurations relating to Differences 1 and 2 would prevent solution of that problem. Thus, there is no teaching away from their application. The JPO decision identified the plaintiffs' teaching-away arguments and rejected them (section 6(3)B [pp. 26–27 of the decision]), and no error is found in that determination. As explained, particular motivation is not required to recognize the obviousness of Differences 1 and 2, but the plaintiffs' arguments are examined below for completeness.
(b) Whether the technical fields are related
The plaintiffs contend that, when assessing the relationship between technical fields, each technology must not be generalized. They argue that, whereas the claimed invention concerns a multisplit air-conditioning system for buildings, the cited invention focuses on a problem peculiar to a pair-type system and concerns a two-cylinder rotary compressor. Because their specific technical fields differ, motivation to combine other technology with the cited invention to arrive at the claimed invention is extremely weak (Part 3, 3, [Plaintiffs' Arguments], (2)B above).
However, as stated in 3(2)C, the claimed invention is not limited to a multisplit system for buildings, nor does it specify the concrete structure of the medium pressurizer or the like. Further, as stated in (2), the cited invention's problem is not peculiar to a pair-type system. The plaintiffs' argument therefore cannot be accepted at the level of its premise.
Translator’s notes (editorial)
The source summary quotation is split across markup nodes and lacks a closing quotation mark. Its split and incomplete punctuation are preserved.
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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.
