Lee International

The Intellectual Property Trial and Appeal Board (IPTAB) ruled on January 25, 2021 that the invention of a patent application entitled “Organic Laser” (“Subject Application”), which is handled by LEE INTERNATIONAL, has an inventive step.  Particularly, the Subject Application was finally rejected for lack of an inventive step by the Korean Intellectual Property Office (KIPO) twice.  However, LEE INTERNATIONAL appealed against the two final rejections and overturned them.  As a result, it was confirmed from the IPTAB that the invention of the Subject Application has an inventive step.

The organic laser in the Subject Application is characterized in that light from an organic light-emitting device disposed on a substrate is focused onto a region, in which a laser device is disposed, by allowing the substrate to be curved.  In the first Final Rejection, KIPO conceded that the cited prior art references do not disclose the feature of curving a substrate.  However, the examiner rejected the inventive step of the invention of the Subject Application by asserting that it is a well-known technology to focus light onto a certain region and it is a simple design modification to change the shape of a substrate to be curved for focusing the light.  In this regard, upon review, LEE INTERNATIONAL was confident that the prior art references cited by KIPO during examination do not explicitly disclose a curved substrate, and that the claimed invention recites curving the substrate as an essential step.  On this basis, LEE INTERNATIONAL argued that, although the problem of the claimed invention (focusing light) is not well-known, the technical significance of the problem-solving means (a curved substrate) should be separately considered.  LEE INTERNATIONAL also emphasized that it would be difficult for one of ordinary skill in the art to derive the claimed curved substrate from the cited prior art references because the planar substrate in the cited prior art references is different from the curved substrate in the Subject Application in terms of the problem-solving principles.  Consequently, the IPTAB accepted LEE INTERNATIONAL’s argument and determined that the invention of the Subject Application has an inventive step as the technical feature of curving the substrate in the Subject Application could not have been easily derived from the cited prior art references.

As such, the Subject Application was first remanded to the KIPO.  KIPO further examined the Subject Application and issued a second Final Rejection citing new prior art references on the basis that the claimed invention lacks an inventive step from a combination of a prior art reference, which discloses a planar substrate (“Cited Reference1”), and another prior art reference, which discloses a curved substrate (“Cited Reference 2”).  Since the feature of curving the substrate is disclosed in Cited Reference 2, it was difficult for LEE INTERNATIONAL to reiterate the argument made during the previous appeal against the first Final Rejection.  However, LEE INTERNATIONAL thoroughly analyzed the objectives of Cited References 1 and 2 and learned that Cited Reference 1 aims to provide a laser device which can use unfocused light, and thus, is contrary to the objective of Cited Reference 2.  On this basis, LEE INTERNATIONAL vigorously argued that it would not be easy for one of ordinary skill in the art to combine Cited Reference 1 with Cited Reference 2 as it would be technically difficult to combine Cited Reference 1 and Cited Reference 2, which allows the substrate to be curved to focus light, as they have different and contrary objectives.  The IPTAB accepted LEE INTERNATIONAL’s argument and determined that the invention of the Subject Application has an inventive step as it would be technically difficult to combine Cited References 1 and 2 which have different objectives.

The significance of the IPTAB’s two decisions affirming LEE INTERNATIONAL’s appeals lies in clarifying the principles of the inventive step that the scope of an easily conceivable invention should not be extended without clear evidence, and it should not be determined that the cited references could be easily combined solely on the basis that they are in the same technical field.