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IP Court Case Summary:H23 (gyoke) 10191: 

March 22, 2012, the Intellectual Property High Court (IP High Court) reversed JPO board of appeal’s decision on the trial for invalidation of the patent. (Inventive step was discussed.)
 
The title of the invention is “Method for Carbonization”. The invention at issue is related to the method for carbonization which includes “coating the surface of raw materials in said mineral coking materials”.
 
According to specification, the raw materials are coated in mineral coking materials and the inflammables of raw materials are carbonized by mainly burning the gas ingredient of raw materials in the presence of oxygen. Therefore, “coating” should be interpreted as follows;
 
“Coating” means covering the surface of raw materials enough to inhibit the oxidation in the presence of oxygen. However, on the other hand, raw materials should be fired, and the gas ingredient of raw materials should be burned. Therefore, the excess covering is not adequate.
 
Citation-1 also describes “Method for Carbonization” and the “coating”. However, this “coating” is for inhibiting pulverization and controlling the size of the particles. Therefore, the technical significance of “coating” is different between claimed invention and citation-1.
 
JPO board of appeal recognized that the “coating” is common features between claimed invention and citation-1. Then, inventive step was denied.
 
However, IP High Court decided that the technical significance of “coating” is different between claimed invention and citation-1. As a conclusion, inventive step was accepted and JPO board of appeal’s decision was reversed.
 
http://www.ip.courts.go.jp/hanrei/pdf/20120326170400.pdf