【Volume 51】

In the examination of inventive step, if a patent is rejected by combining multiple evidences in multiple citations, the patentee often argues that it is arbitrarily combined as a mosaic. However, as far as the court is concerned, what kind of cases would be considered as having no motivation to combine? In the 2020 Xing Zhuan Su Zi No. 4 judgment, the Taiwan Intellectual Property Court (IP Court) overturned the Taiwan Intellectual Property Office’s opinion, and established the indicators for the determination of the motivation to combine.

Case Facts

“Singapore Asahi Chemical & Solder Industries Pte Ltd” (petitioner, administrative lawsuit intervener) filed an invalidation action against “Accurus Scientific Co. Ltd” (patentee, plaintiff), the owner of the invention patent no. I576195,”A lead-free solder composition that has high-temperature aging resistance and high strength lead-free solder” (the ‘195 patent). The Taiwan Intellectual Property Office decided the patent invalid. The patentee was dissatisfied and filed an administrative appeal, which was again dismissed. Thus, Accurus filed an administrative litigation with the Taiwan IP court. The Taiwan IP court revoked the original administrative disposition, and deemed that the combination of evidence 1 and evidence 2 cannot negate the inventive step in claim 1 and claim 2 of the ‘195 patent.

The main technical feature of the ’195 patent and the evidences

1. Claim 1 of the ’195 patent:

   A lead-free solder composition, comprising: 4 wt % to 5 wt % of Ag, 0.2 wt % to 0.5 wt % of Cu, 1 wt % to 7 wt % of Bi, 0.005 wt % to 0.06 wt % of Ni, 0.005 wt % to 0.02 wt % of Ge, and the balance being Sn based on 100 wt % of said lead-free solder composition.

   The ’195 patent can improve the strength and hardness of the lead-free solder composition and meanwhile enhance the strength and antioxidant capacity of the interface with the above claimed composition.

2. Comparison between claim 1 of the ’195 patent and the evidences:

   Evidence 1: US 2010/0297470, “Lead-free solder alloy patent”

   

   (O: Necessary; △: Optional; X: Not mentioned)

   *The red column shows the elements contained in the ’195 patent

   **The blue column shows the elements contained in Evidence 2

    

   Evidence 2: US6176947B1, “Lead-free solders patent”

    Column 3, lines 37 to 49 of the specification of Evidence 2 discloses a high strength, high fatigue resistance, and high wetting lead-free solder alloy consisting essentially of 2%~4.5% Ag, 0.2% ~ 2.5% Cu, 0~5wt% Bi, 0%~12% In, 0~2wt% Sb, and 76%~96% Sn.

The Taiwan IP Court’s Opinion

1. There is no embodiment or example in Evidence 1 having all the components same as claim 1 of the ‘195 patent including Ag, Cu, Bi, Ni, Ge, and Sn. Also, according to the examples of the ‘195 patent and Evidence 1, different composition and the ratio thereof would result in different effects on the properties of the solder. Thus, a person having ordinary skill in the art (PHOSITA) cannot predict what property would be obtained, and whether the effect of high temperature aging resistance would be achieved, if they combine the three different embodiments of claim 4, 5, and 7 in Evidence 1.
2. The 6 components, Ag, Cu, Bi, Ni, Ge, and Sn, must be comprised in claim 1 of the ‘195 patent at the same time. However in Evidence 1, in addition to Cu, Ge and Sn that are disclosed in claims 4, 5, and 7 of Evidence 1, claim 4 further discloses at least one substance selected from Ag or Sb and the total amount no more than 4 wt%, claim 5 further discloses at least one substance selected from Ni, Co, Fe, Mn, Cr or Mo and the total amount no more than 0.5 wt%, and claim 7 further discloses at least one substance selected from Bi, In or Zn and the total amount no more than 5 wt%. That is, claims 4, 5 and 7 of Evidence 1 disclose multiple options, each option comprises multiple compositions, and each composition comprises multiple possible weight ratios. Since complex effects including the formation of metal compounds, metal crystallization and solid solution strengthening are involved in solder alloys, substitution of components or slight change in ratios would cause a major impact on the final property. Thus, it was difficult to deem that the PHOSITA can easily accomplish the invention of the ‘195 patent based on the evidences.
3. Moreover, in Evidence 1, the purpose of claim 4 and claim 5is to improve the mechanical strength, and the purpose of claim 7 is to decrease the melting temperature. The problems to be solved are different. Without teachings and suggestions, it is unreasonable to consider that the PHOSITA would have motivation to combine the three examples of claims 4, 5, and 7 of Evidence 1.
4. Evidence 2 does not disclose Ni and Ge, and the composition in Evidence 2 is significantly different from which of Evidence 1. There should be no motivation to choose and to combine the different compositions in Evidence 2 and Evidence 1.