大韩民国

The translation does not have any legal effect and the Judiciary of the Republic of Korea does not guarantee the accuracy of the translated text. Please refer to the original decision in Korean for an accurate statement of law.

 

PATENT COURT OF KOREA

FIRST DIVISION

DECISION

 

Case No.:  2016Heo2737 Final Rejection (Patent)

 

Plaintiff:  A
United Kingdom

 

Defendant:  Commissioner of the Korean Intellectual Patent Office (KIPO)

 

Closure of Hearing:  August 23, 2016

 

Date of Decision:  September 29, 2016

 

ORDER

 

1. The decision rendered on February 29, 2016 by the Intellectual Property Trial and Appeal Board with respect to Case No. 2015Won2935 shall be cancelled.

 

2. The trial costs shall be borne by the defendant.

 

PLAINTIFF’S DEMAND

 

It is the same as the Order.

 

OPINION

 

1. Background Facts

 

A. Procedural History

 

1) On May 7, 2014, the plaintiff filed a divisional application to the KIPO, Korean Patent Application No. 10-2014-7012219 titled "ROTOR FOR AN ELECTRICAL MACHINE" (priority dates: August 24, 2010/January 20, 2011, hereinafter, referred to as "subject application").

 

2) On June 13, 2014, the examiner issued a notice of preliminary rejection indicating that the subject application was rejected due to the lack of an inventive step under Article 29(2) of the Korean Patent Act (hereinafter, referred to as "rejection of this case"), and a Notice of Final Rejection on April 27, 2015 based on the same ground of rejection reason (hereinafter, referred to as "final rejection of this case").

 

3) The plaintiff appealed against the examiner’s decision of final rejection (2015Won2935) on May 27, 2015. However, Intellectual Property Trial and Appeal Board (hereinafter, referred to as "IPTAB") made an administrative decision to dismiss the appeal (hereinafter, referred to as "administrative decision of this case") on February 29, 2015.

 

B. Invention of Subject Application

 

1) Claims (Amended on December 10, 2014)

 

[Claim 1] A rotor comprising a rotor core assembly secured to a shaft, the rotor core assembly comprising: a magnet, and an end cap secured to an end of the magnet, wherein: each of the magnet and the end cap have a bore into which the shaft extends the end cap forms an interference fit with the shaft the magnet forms a clearance fit with the shaft (hereinafter, referred to as "Feature 1"); an adhesive is located in the clearance between the magnet and the shaft (hereinafter, referred to as "Feature 2") and the end cap is secured to the magnet using an adhesive different from the adhesive located between the magnet and the shaft (hereinafter, referred to as "Feature 3"). (hereinafter, referred to as "Claim 1 Invention of this case")

 

[Claims 2 to 9] (Description omitted)

 

2) Major Drawings

 

 

FIG. 1 Exploded View of Rotor

 

	[Prior Art Numerals] 1: rotor, 2: core assembly, 3: shaft, 4: magnet, 5: first end cap, 6: second end cap, 7: sleeve, 8: bore, 9, 10: end, 11: outer surface, 12, 13: bore, 14, 15: mating face, 16, 17, 18: adhesive

 

FIG. 2 Cross-sectional View of Rotor

 

C. Prior Arts in Examination of Subject Application

 

1) Prior Art 1

 

Prior Art 1 is U.S. Patent Application Publication No. 2009/0284094 (Plaintiff's Exhibit No. 4) which was published on November 19, 2009 with a title of "MOTOR STRUCTURE FOR MOTOR".

 

The rotor structure of Prior Art 1 includes a shaft (10), a magnet (20), and two fixing seats (30), as shown in FIGS. 2 and 3 below. While assembling the rotor, an axial hole (21) of the magnet (20) is slightly closely fits or loosely fits the shaft (10), and the fixing seats (30) closely fit the shaft (10). In addition, due to friction between an abutting faces (32) of the fixing seats (30) and a rough surface provided on an end faces (22) of the magnet (20), the shaft (10) and the magnet (20) are stably combined, and thus, the magnet (20) may revolve synchronously with the shaft (10) (see paragraphs [0025] and [0026]). In another embodiment, the magnet (20) and the fixing seats (30) may be secured using various fitting members (See FIGS. 4 to 10).

 

[FIG. 2] An exploded perspective view according to the first embodiment	[FIG. 3] A cross-sectional side view according to the first embodiment

 

2) Prior Art 2

 

Prior Art 2 is U.S. Patent Application Publication No. 2011/0209872 (Plaintiff's Exhibit No. 5) which was published on August 19, 2010 with a title of "ROTOR FOR AN ELECTRONIC MOTOR, ELECTRIC MOTOR AND DENTISTRY HANDPIECE".

 

As shown in FIG. 2 below, the rotor according to an embodiment of Prior Art 2 includes a shaft (20) having a rotational axis (80), a magnet (40) arranged around the rotational axis (80), balancing rings (100, 100’) in contact with the magnet (40), and a centering element (60) which presses the magnet (40) from the outside to center (see paragraphs [0035], [0038], and [0041]). An adhesive bond (24’) is provided between the shaft (20) and the magnet (40) (see paragraph [0048]).

 

[FIG. 2] A cross-sectional view of a rotor according to the first embodiment

 

 

D. Reasons for Rejection of This Case

 

1) Feature 1 of Claim 1 of the subject application is disclosed in Prior Art 1. Features 2 and 3 thereof are not disclosure in Prior Art 1.

 

2) However, Features 2 and 3 could have been easily conceived by a person having ordinary skill in the art (hereinafter, referred to as "PHOSITA") from teachings of the Prior Art 2 which pertains to the same technical field as Prior Art 1, specifically the feature that "the magnet (40) and the shaft (20) are bonded with the adhesive bonds (24, 24’), and the balancing rings (100, 100’) and the magnet (40) are bonded with a press bond (22’) different from the adhesive bonds (24, 24’) (Plaintiff's Exhibit No. 5, and FIGS. 2 to 4)".

 

3) Therefore, Claim 1 invention of this case could have been easily conceived by PHOSITA from the combined teachings of Prior Arts 1 and 2.

 

E. Summary of Administrative decision

 

1) Feature 1 of Claim 1 invention of this case is disclosed in Prior Art 1, and Feature 2 thereof is disclosed in Prior Art 2.

 

2) Feature 3 of Claim 1 invention of this case corresponds to "the balancing rings (100, 100’) and the magnet (40) are bonded using the press bond (22’)" disclosed in Prior Art 2 (Plaintiff's Exhibit No. 5, and FIGS. 2 to 4).

 

Although Prior Art 2 utilizes "press fit", not an adhesive, to bond a magnet to balancing rings, it discloses fixing the magnet and the shaft with an adhesive, and thus, it is not difficult for PHOSITA to conceive the idea of bonding the balancing rings and the magnets with an adhesive or any other way different from; "press fit" (Plaintiff's Exhibit 5, paragraphs [0039] and [0063], and FIGS. 2 to 4).

 

Furthermore, it is generally known that bond strength between a magnet and a shaft should be greater than bond strength between a balancing ring and a magnet. Thus, the balancing ring and the magnet can be easily fixed with an adhesive that provides bond strength and a thermal range which are different from those of an adhesive between the magnet and the shaft.

 

3) Prior Arts 1 and 2 are within same technical fields, and there is no technical difficulty in combining corresponding features of Prior Arts 1 and 2. In addition, there is no technical conflict or negative implication which disrupts the corresponding features from combining, and such combination does not lead to any change in other features. Thus, PHOSITA can easily combine the corresponding features.

 

4) Therefore, the Claim 1 invention of this case is rejected due to lack of an inventive step over Prior Arts 1 and 2.

 

[Factual Basis] Indisputable fact, Plaintiff's Exhibit Nos. 1 to 5 (including branch numbers), Defendant's Exhibit Nos. 1 to 3, and the purport of overall arguments

 

2. Summary of Arguments from Parties Involved

 

A. plaintiff’s Argument against Administrative decision of This Case

 

1) The rejection of this case is partly acceptable since Feature 1 of Claim 1 invention of this case is disclosed in Prior Art 1, and Feature 2 is disclosed in Prior Art 2.

 

2) However, the rejection of this case alleging that Feature 3 of Claim 1 invention can be easily conceived from the "press bond" disclosed in Prior Art 2, which is incorrectly interpreted as "adhesive bond" instead of literally "press bond (by force)". Furthermore, Feature 3 cannot be easily drawn from "press bond" disclosed in Prior Art 2.

 

3) In the rejection of this case, it is alleged that Claim 1 invention of this case can be easily conceived by PHOSITA based on combination of Prior Art 2 and Prior Art 1. However, such combination is against the solution principle of Prior Art, and there is no reason or motivation to combine two inventions.

 

4) The defendant alleges that Claim 1 invention can be easily conceived by PHOSITA by combining common general knowledge with Prior Art 1 or by combining common general knowledge with Prior Art 2, and thus, the administrative decision is reasonable. However, such reasoning is newly presented, which was not mentioned during the previous examination. Therefore, the defendant's allegation is not acceptable.

 

5) There is no evidence supporting that Feature 3 of Claim 1 invention of this case is common general knowledge.

 

6) Applying the common general knowledge of using adhesive bond between the balancing rings and the magnet to Prior Art 2 is against the solution principle of Prior Art 2, and there is no motivation or implication of such application.

 

B. Defendant’s Argument

 

1) Feature of Claim 1 invention of this case is disclosed in Prior Art 1, and Feature 2 thereof is disclosed in Prior Art 2.

 

2) Feature 2 of Claim 1 invention of this case can be easily conceived by combining common general knowledge with Prior Art 1, and Feature 3 thereof can be easily conceived by combining common general knowledge with Prior Art 1 or 2.

 

3) Therefore, Claim 1 invention of this case can be easily made by ① combining Prior Art 2 with common general knowledge and Prior Art 1, ② combining common general knowledge with Prior Art 1, or ③ combining common general knowledge with Prior Art 2. This coincides with main points of rejection of this case, and thus, it is not considered as a new reason.

 

3. Decision by Court

 

A. Criterion for Decision

 

To issue a final rejection in the examination of a patent application, an examiner shall notify the applicant of grounds for the rejection and provide the applicant an opportunity to present his/her written arguments. In addition, to uphold the decision of final rejection in an IPTAB's trial for a new reason which is different from any previous rejection reason, the examiner shall provide an opportunity to the applicant to submit written arguments about the new reason (see Article 62, Article 63, and Article 170 of the Korean Patent Act). These are mandatory requirements subscribed in the Korean Patent Act to guarantee the applicant’s procedural rights, and thus, the administrative decision to dismiss the appeal against the decision of final rejection is illegal because the administrative decision was made on the basis of a new reason and the applicant has not be given an opportunity to present his or her arguments about the new reason. For the same reason, even in a litigation for cancellation of the administrative decision, the commissioner of the KIPO cannot argue a new rejection reason regarding which the applicant was not given any opportunity to submit written argument in the course of examination or the trial. However, a new rejection reason can be used as the basis of determination that the administrative decision is reasonable, only when the new rejection reason coincides with the main points of a rejection of the previous office action: even though the reason was cited by the commissioner for the first time in a judicial procedure to cancel an administrative decision of dismissal of an appeal against the final rejection, if the new reason merely complements the rejection of this case and coincides with the main points thereof to the point where it is considered the applicant was substantially given an opportunity to submit written arguments about the new reason, the new reason may be used as the basis of determination that the administrative decision is reasonable. In particular, in a case where a previous rejection of this case does not acknowledge an inventive step of a subject application over a prior art, complementing the prior art in order to prove existence of common general knowledge widely spread in the technical field at the time of filing date of the subject application is not considered as common general knowledge. Thus, even the court which presides the trial for cancellation of an administrative decision has adapted the complementing of the prior art as the basis for rejecting the inventive step of the subject application, it is not considered that the decision was made for a new reason which does not coincides with the main points of the previous rejection of this case (see Supreme Court Decision 2013Hu1054 rendered on September 26, 2013).

 

B. Whether the Rejection of This Case is Reasonable

 

1) Details of Rejection Reason

 

Claim 1 Invention of This Case	Rejection Reason of This Case
[Feature 1] A rotor comprising a rotor core assembly secured to a shaft, the rotor core assembly comprising: a magnet, and an end cap secured to an end of the magnet, wherein: each of the magnet and the end cap have a bore into which the shaft extends; the end cap forms an interference fit with the shaft; the magnet forms a clearance fit with the shaft	[Prior Art 1] the magnet (20) is slightly closely fits or loosely fits the shaft (10), and the fixing seats (30) closely fit the shaft (10) (Gap Evidentiary Document 4, FIGS. 2 and 3, and paragraph [0026])
[Feature 2] an adhesive is located in the clearance between the magnet and the shaft	[Prior Art 1] no corresponding feature [Prior Art 2] it can be easily conceived from the adhesive bonds (24’) provided between the shaft (20) and the magnet (40) (Plaintiff's Exhibit No. 5, and FIGS. 2 to 4)
[Feature 3] the end cap is secured to the magnet using an adhesive different from the adhesive located between the magnet and the shaft	[Prior Art 1] no corresponding feature [Prior Art 2] it can be easily conceived from the press bond (22’) which bonds the balancing rings (100, 100’) and the magnet (40) (Plaintiff's Exhibit No. 5, and FIGS. 2 to 4)

 

The rejection of this case is issued on the grounds that features of Claim 1 invention of this case are disclosed in Prior Arts 1 and 2, and thus, PHOSITA could have easily made Claim 1 invention by combining Prior Art 2 with Prior Art 1.

 

2) Review on the Rejection Reason of This Case

 

a) As the notice of preliminary rejection of this case alleges, it is true that Feature 1 of Claim 1 invention of this case is disclosed in Prior Art 1, and Feature 2 thereof is disclosed in Prior Art 2.

 

b) The notice of preliminary rejection alleges that "bond" of Prior Art 1 is construed as an "adhesive", and thus, Feature 3 of Claim 1 invention of this case could have been easily conceived by PHOSITA from Prior Art 1 which discloses using an adhesive named "adhesive bond" between "the shaft (20) and the magnet (40)" and using a different adhesive named "press bond" between "the balancing rings (100, 100’) and the magnet (40) (Plaintiff's Exhibit Nos. 2-1 and 2-2).

 

The centering element 60 and the magnet 40 are connected to one another according to the embodiment by a press fit or a press bond 22′. A connection via a shrink fit may also be provided. The press bond 22′ is in this case provided on a surface of the magnet 40 which—in relation to the rotational axis 80—is a surface facing outwards. In this way the centering element 60 can act or press on the magnet 40 from outside.(see paragraph [0039] in Plaintiff's Exhibit No. 5)   The arrangement according to the invention is additionally advantageous in relation to the absolute width of the adhesive gap of the adhesive bond 24′ between the magnet 40 and the shaft 20. Since by comparison with the above-described prior art the centering of the magnet 40 now no longer has to be created via as small a gap as possible, a wider gap can be chosen, which further results in adhesives also being able to be used which in comparison to the prior art are more viscous, in other words in general also adhesives which may have more adhesive strength and/or can be better processed. (see paragraph [0051] in Plaintiff's Exhibit No. 5)

 

However, as shown in the following, Prior Art 1 uses "bond" meaning "a bonding state" rather than "adhesive", and uses "adhesive" meaning "a substance that provides adhesion." Therefore, it should be understood that "adhesive bond" means "a bonding state by an adhesive" and "press bonds" means "a bonding state by press".

 

c) Therefore, the notice of preliminary rejection is unreasonable, because it alleges that Feature 3 of Claim 1 invention of this case could be easily conceived from a feature which is not substantially disclosed in Prior Art 2.

 

C. Regarding Other Defendant’s Arguments for Legitimacy of Administrative decision

 

1) As follows, the defendant argues that Feature 3 of Claim 1 invention of this case could have been easily conceived by combining common general knowledge with Prior Art 1 or 2 (hereinafter, referred to as "ground for the litigation for cancellation of an administrative decision") and this coincides with the main points of the rejection of this case.

 

① The specification of the subject application of this case specifies that an adhesive recited in Feature 3 is used merely to secure an end cap to a magnet, and that the strength of the adhesive recited in Feature 3 is relatively unimportant, and therefore, the adhesive recited in Feature 3 aims only to secure the end cap to the magnet. ② The type, purpose, and effects of the adhesive are known to a person skilled in the art, and thus, there is no particular difficulties for a person skilled in the art in selecting a different type of adhesive, when necessary. ③ Using an adhesive for a rotor corresponds to common general knowledge (see the background of the subject application, the background of Prior Art 1, and the background of Prior Art 2), and it is acknowledged that Prior Art 1 requires a stable joint between fixed seats and a magnet. For these reasons, there is no particular difficulties for a person skilled in the art in adding an adhesive for more secure joint between the fixed seats and the magnet, and even resulting effects are expectable.

 

① The adhesive of Feature 3 of the subject application is used merely to secure an end cap to a magnet, whereas a centering element and a balance ring substantially form one component in an embodiment of Prior Art 2, and thus, the centering element and the balance ring are forcibly secured to the magnet. Thus, the adhesive of Feature 3 and the above feature of this embodiment of Prior Art 2 are identical in that the both are used to secure between an end cap ((a centering element or a balancing ring) and a magnet). ② The background of Prior Art 2 discloses using the conventional adhesive method for securing between a reinforcement component, such as a centering element and a balancing ring, and a magnet. In addition, a type, a purpose, and effects of the adhesive is well known to PHOSITA, and thus, there is no difficulty for PHOSITA in selecting a different-type adhesive. In conclusion, there is no difficulty for PHOSITA in selecting and adding an appropriate adhesive to further improve the strength of securing between the reinforcement component (the centering element or a balancing ring) and the magnet in the embodiment of Prior Art 2, and resulting effects are expectable.

 

2) It was examined whether the "rejection of this case" and the "rejection reason of the litigation for cancellation of an administrative decision of this case" coincide with each other in terms of main points. However, the two rejection reasons are not considered to coincide with each other, considering the following:

 

① The notice of preliminary rejection of this case was issued on the grounds that Feature 3 could have been easily conceived from Prior Art 2 disclosing that different adhesives are used between "the shaft (20) and the magnet (40)" and between "the balancing rings (100, 100’) and the magnet (40)". However, the rejection reason of the litigation for cancellation of an administrative decision of this case is that Feature 3 could have been easily conceived from common general knowledge that an adhesive bond is used to secure components of a rotor and from the background of Prior Art 2. Therefore, the two rejection reasons suggest different subject inventions which are regarded as disclosing an adhesive bond.

 

② Indeed, Prior Art 2 secures "the balancing rings (100, 100’) and the magnet (40)" by press, not by an adhesive, so it is not considered substantially identical to the common general knowledge of utilizing an adhesive bond or the background of Prior Art 2.

 

③ The attempt of replacing an adhesive bond between "the balancing rings (100, 100’), which does not even exist in Prior Art 2, with the common general knowledge of using an adhesive bond or the background of Prior Art 2 cannot be considered to complement Prior Art 2 for further clarifying the meaning or complementing the rejection of this case.

 

④ Given that the examiner mistakenly interpreted "press bond" of Prior Art 2 as "adhesive bond" in the course of examination of the subject application and then issued a notice of preliminary rejection of this case, it is not reasonable to expect that the plaintiff, an applicant, would not merely overcome the misinterpretation of the examiner, but make an amendment or submit written argument by considering the common general knowledge of using an adhesive bond or the background of Prior Art 2, which was not mentioned in the notice of preliminary rejection of this case.

 

⑤ Indeed, upon receiving the notice of preliminary rejection of this case, the plaintiff did not amend Claim 1 (therefore, Claim 1 invention of this case is the same as that of original Claim 1 which was filed before the rejection of this case was issued), and merely argued that, regarding Feature 3 of Claim 1 invention of this case, press bond between "the balancing rings (100, 100’) and the magnet (40)" of Prior Art 2 is not bonding by use of an adhesive, and thus, Feature 3 is not disclosed in Prior Art 2 (Plaintiff's Exhibit Nos. 2-1 and 2-2).

 

D. Result of Review

 

As described above, the notice of preliminary rejection of this case is unreasonable, and the rejection reason of the litigation for cancellation of an administrative decision of this case corresponds a new reason which does not coincides with main points of the rejection of this case, and therefore, the decision of final rejection of this case is illegal.

 

4. Conclusion

 

Accordingly, the administrative decision to uphold the decision of final rejection of this case is contrary to the above result, and thus, it is illegal. In this regard, the plaintiff’s appeal for cancellation of the administrative decision is reasonable, and thus, this court renders its decision as set out in the Order.

 

Presiding Judge   Hwansoo KIM

Judge  Jongsun CHOI 

Judge  Hyunjin CHANG