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On December 22, 2010, the Intellectual Property High Court (IPHC) supported JPO board of appeal’s decision that the claimed inventions should be rejected due to lack of inventive step.
 
The invention at issue is “Tube feeding supplement” which identifies the viscosity as “from 1000 to 60000 mPa・s (milli-Pascal second)”. The citation disclosed “Semisolid food” which is almost the same as the claimed “Tube feeding supplement”, but it does not identify the viscosity. This citation just referred to “R Terumeal Soft” which is the trademark of “Semisolid food”. Another document (Pamphlet) disclosed that the viscosity of “R Terumeal Soft” is 20000 mPa・s (milli-Pascal second), but it was published approximately 17 months after the application.

Plaintiff insisted that it is against Patent Law Article 29-2 to find the state of the art at the time of the application, based on the publication which was published after the time of application. Plaintiff also insisted that JPO board of appeal found the viscosity of the cited invention, based on the publication which was unpublished at the time of the application, which is against Patent Law Article 29-2.
 
As for this judgment, if those skilled in the art can obtain the elements in the publication, based on the description of the publication and the common general technical knowledge at the time of the patent application, the property of the elements does not have to be disclosed in the publication specifically. Moreover, as for this judgment, it is not against Patent Law Article 29-2 to find the state of the art at the time of the application, based on the publication which was published after the time of application.
 
http://www.ip.courts.go.jp/hanrei/pdf/20101224115555.pdf