【Volume 38】In the recent decision rendered in National Cheng Kung University v. Taiwan Intellectual Property Office (IPO)¹ , the Taiwan Intellectual Property Court (IP Court) has demonstrated its principles for determining “introducing new matter” regarding parametric claims. The case highlights the importance of setting the appropriate and desired parametric ranges in claims, and shows how amendment to such ranges is handled by the IPO.

Case Facts

National Cheng Kung University in Taiwan is the applicant of the invention patent no. TW104130772, “NON-METALLIC SEMICONDUCTOR QUANTUM DOT AND METHOD OF CARRYING OUT CHEMICAL REACTION OR PHOTOLUMINESCENCE REACTION BY USING THE SAME” (“‘772 patent”). A total of seven amendments were filed throughout the entire examination process, but the IPO rejected the amendments since it found that new matter was introduced, which in turn led to the ‘772 patent receiving an obviousness rejection. The applicant appealed to the IP Court, eventually resulting in defeat.

Main Point of Argument

‘772 patent relates to a non-metallic semiconductor quantum dot and a method of carrying out chemical reaction using the same. Claim 1 originally recites that “the non-metallic semiconductor quantum dot has a particle size ranged from 0.3 nm to 100 nm.” In its response to the Office Action, the applicant intends to amend it as “the graphene oxide quantum dot has a particle size ranged from 2.6 to 5.4 nm.” Whether amending the range of particle size is regarded as introducing new matter thus becomes the main point of argument.

The Court’s Opinion

1. At the time of filing the ‘772 patent, paragraph [0072] of the specification only recites the following: As shown in FIGS. 1a to 1b, the different sizes of amino-nitrogen-doped graphene oxide quantum dots have diameters of “10, 16, 26, 54, 61, 79 Å” respectively (namely, “1, 1.6, 2.6, 5.4, 6.1, 7.9 nm”), and present colors from light yellow to reddish-brown under a visible light irradiation. However, since graphene oxide quantum dots may include “non-doped,” “amino-nitrogen-doped,” and “other-elements-doped” graphene oxide quantum dots, the amino-nitrogen-doped graphene oxide quantum dot is merely a specific concept under the more generic category of “graphene oxide quantum dots.” Moreover, the range of particle size recited at the time of filing is apparently different from the particle size “between 2.6 nm to 5.4 nm” in the amendments. Therefore, the amendments had introduced new matter that was absent in the specification at the time of filing.
2. Multiple examples in the specification of ‘772 patent have indeed clearly recited using a series of centrifuge tubes having polyethersulfone membranes with different KD values to centrifugalize doped or non-doped graphene oxide quantum dots with different particles sizes. With this description, a person skilled in the art would be able to sufficiently understand the statement “with the filtering membrane of the same material, the doped and non-doped graphene oxide quantum dots with different particle sizes can be separated and obtained according to the necessary pore sizes.”

   However, the court held that if the graphene oxide quantum dots of different compositions are retained by the polyethersulfone membrane and result in identical or similar KD values, since the number of elements within the molecules would naturally differ due to the different compositions, the particle sizes would also differ. Therefore, one cannot determine that all graphene oxide quantum dots of different compositions in the ‘772 patent would have the same particle size or range solely based on the same main material of the graphene oxide. Furthermore, since the ‘772 patent does not clearly disclose the correlation between the KD values and the pore sizes of the filtering membrane, and that said correlation is not common knowledge within the relevant field, it would be difficult for a person skilled in the art to infer from the KD values and the ambiguous range of the pore sizes of the filtering membrane that the particle size of any “graphene oxide quantum dots” in the specification would range from 2.6 nm to 5.4 nm.