In a Judgment issued in January 2025, the Intellectual Property and Commercial Court (IPC Court) rendered an observation on the inventive step of Invention Patent No. I535383, entitled "Soft Candy and Method for Producing Soft Candy”, being opposite to that earlier rendered by the Intellectual Property Office (IPO).
This case relates to a patent application filed on May 11, 2012 and was granted Invention Patent No. I535383 after examination. The issued claims include claims calling for soft candies and methods for producing soft candies, respectively. However, a third party filed an invalidation action against the patent, averring that the soft candy claims were not supported by the specification and lacked novelty and inventive step in view of three cited references. (Evidence 1, Evidence 2, and Evidence 3). This article will focus solely on the inventive step issue on which the IPO and the IPC Court reached divided conclusions.
The patented technology is as follows. Claim 1 of the patent concerned calls for a soft candy, which comprises a candy dough comprising 0.2 to 5 wt% of pullulan and 0.2 to 2 wt% of gelatin and impregnated with gas bubbles; and said soft candy obtained by imparting the candy dough with a specific gravity controlled to not greater than 1.2 by the impregnation of the candy dough with the gas bubbles, and shaping the candy dough imparted with the specific gravity controlled to not greater than 1.2. Claim 9 calls for a soft candy comprising 0.2 to 5 wt% of pullulan and 0.2 to less than 2 wt% of gelatin, being impregnated with gas bubbles and having a specific gravity of not greater than 1.2.
The bubbles adjust the candy dough's specific gravity, allowing the soft candy to achieve a light and rich texture as well as a firm chewing sensation with a small amount of gelatin (less than 2 wt%). The patent specification states: "[i]f the proportion of the gelatin is less than 0.2 wt%, the soft candy fails to have a rich eating texture. If the proportion of the gelatin is greater than 2 wt%, the soft candy has an excessively high chewability and, hence, an unsatisfactory chewing texture.”
Evidence 1 discloses an edible chewy soft candy containing 0.5 to 5 weight% pullulan and 0.2 to 2 weight% gelatin. Evidence 2 discloses a soft candy containing 0.5 to 3 weight% pullulan and 2 to 5 weight% gelatin, with a specific gravity between 0.6 and 1.1. Comparing the evidence with the claims at issue, while Evidence 1 does not disclose the technical feature of "a specific gravity of 1.2 or below" defined in Claim 1, Evidence 2 does not disclose the "gelatin content of less than 2 wt%" defined in the claims. On the other hand, Evidence 2 explicitly states in paragraph [0009] that "when the gelatin content is less than 2 wt%, the intended texture cannot be maintained." Based on this, the IPO, asserting that this negative technical teaching in paragraph [0009] would deter a person skilled in the art from combining Evidence 1 and Evidence 2 to arrive at the patented invention, reached a conclusion that the soft candy claims meet the requirement of inventive step.
Not being satisfied with the IPO’s decision, the invalidation petitioner appealed the case to the IPC Court. Upon a review, the court reached a different conclusion on the issue of inventive step by pointing out the following facts:
Evidence 1 states that its goal is "to provide an edible chewy candy with resilient texture," while Evidence 2 (paragraph [0004]) specifies its goal as "to provide a soft candy that is not sticky, does not have excessive chewiness, and has a sticky yet resilient texture." The examples of Evidence 1 show that the candy mixture is whipped, which incorporates air into it. Based on the common general knowledge in the relevant technical field, incorporating air into a candy base means introducing small bubbles, which naturally reduces the final product's specific gravity. Evidence 2 (paragraph [0019]) discloses the use of a foaming machine to aerate the raw solution, forming an aerated dough, and adjusting the aeration level to achieve a target specific gravity range. A person skilled in the art would thus have the motivation to combine the teachings of Evidence 1 and Evidence 2. If such a person aimed to achieve a light and more resilient texture for the soft candy in Evidence 1, they would naturally consider applying the specific gravity range (0.6 to 1.1) disclosed in Evidence 2 to the soft candy in Evidence 1.
Regarding the content of paragraph [0009] in Evidence 2, the court noted that it describes a totally different effect from that described in paragraphs [0010]. To be specific, paragraph [0009] states that adjusting the gelatin content to 2 to 5 wt% is intended to achieve a "chewy texture" (original text: "もちもち感"), whereas paragraph [0010] states that adjusting the soft candy's specific gravity to 0.6 to 1.1 is intended to achieve a "light and resilient texture" (original text: "柔らかくかつ弾力性のある食感"). Since these two textural effects are independently achieved, a person skilled in the art seeking for a candy with a "chewy texture" might be deterred from lowering the gelatin content below 2 weight% due to paragraph [0009]. However, when aiming to achieve the "lighter, richer texture and firm chewing sensation” intended by the patented invention, there is no indication whatsoever in Evidence 2 that a specific gelatin content must be maintained to achieve such an effect. Moreover, as stated above, paragraph [0019] in Evidence 2 reveals that the specific gravity is mainly adjusted by the amount of aeration rather than the gelatin content. Therefore, a person skilled in the art would have had the motivation to combine the teachings of Evidence 1 and Evidence 2, apply the specific gravity range of 0.6 to 1.1 from Evidence 2 to the soft candy of Evidence 1, and readily arrive at the claimed soft candy invention.
From the above discussion, it is evident that the IPC Court did not automatically negate the combination of evidence based solely on negative statements found in the prior art. Instead, it further examined the reasons behind the negative statements and assessed their relevance to the objectives and effects of the patent at issue. This approach ensures that a negative statement in prior art does not necessarily prevent a person skilled in the art from considering a combination that could lead to a patented invention.