A Change in the IPTAB's Element-by-Element Comparison May Constitute a New Ground for Rejection

The Patent Court Decision in Case No. 2025heo10293 is a case that illustrates when a change in the way the Intellectual Property Trial and Appeal Board (IPTAB) compares components of prior art, compared to the examination stage, constitutes a new rejection reason in an appeal against a refusal decision. While the IPTAB's decision was ultimately revoked for procedural illegality, it served to reconfirm the criteria for determining the direction of arguments and amendments in practice.

The core issue is simple. Even if the same prior art is cited, if the correspondence between the components of the claimed invention and the components of the prior art changes, the applicant's counterargument and amendment strategy can be affected. In such cases, if a decision is made without giving the applicant another opportunity to submit an opinion, that decision may be procedurally unlawful.

Starting Point of the Case: Application for a Multi-Layer Coating with Visual Effects

The claimed invention in this case relates to a multi-layer coating with visual effects. Claim 1 comprised, in essence, a high-clarity gel coat layer, a visual effect layer, and a color layer. Prior Art 1 was a Japanese unexamined patent publication concerning an ink composition and a resin molded article.

During the examination stage, the examiner compared the components of the applicant's invention with the components of Prior Art 1 as follows:

Based on this comparison, the applicant submitted an opinion brief and made amendments. That is, the focus was on how the intermediate layer or white layer of the prior art differed from the visual effect layer or color layer of the applicant's invention.

The Problem: The Correspondence Between Components Changed at the Appeal Stage

In the appeal against the refusal decision, the IPTAB used the same Prior Art 1 but viewed the correspondence between components differently than during the examination stage.

On the surface, it might seem like an obviousness judgment based on the same prior art. However, the court did not stop there. An obviousness judgment involves comparing the components of the claimed invention and the prior art, identifying commonalities and differences, and then assessing whether those differences can be easily overcome by a person skilled in the art. Therefore, which components are matched with each other is central to the obviousness judgment.

Specifically, in this case, the ink composition layer, intermediate layer, and white layer of the prior art had distinct technical meanings. When comparing the visual effect layer of the claimed invention to the intermediate layer of the prior art versus comparing it to the ink composition layer, the differences that the applicant needs to emphasize would change. The amendment direction could also change.

The Patent Court's Standard: Does the Correspondence Logic and Amendment Direction Change?

The Patent Court did not consider a change in the component comparison method alone to always constitute a new rejection reason. However, it held that if the difference in the comparison method leads to significant differences in the recognition of commonalities and differences, the content of the obviousness judgment, the applicant's counterargument logic, and the amendment direction, then the situation changes.

If the rejection reason, which corresponds the visual effect layer to the ink composition layer of the prior art, had been presented from the examination stage, the applicant might have focused on whether the ink composition layer contained visual effect pigments, how visual effect pigments differ from simple pigments, and how to limit the particle size or properties of the visual effect pigments.

However, in the actual examination stage, the applicant did not have the opportunity to submit an opinion brief or amend based on such logic. The Patent Court, citing this point, ruled that the decision constituted a new rejection reason that did not align in its main thrust with the rejection reason previously notified.

Procedural Violations Cannot Be Rectified by Subsequent Substantive Judgment

Another important aspect of this ruling concerns the curing of procedural violations. The Commissioner of the Korean Intellectual Property Office argued in the lawsuit for the revocation of the decision that the original obviousness logic of the refusal decision was substantively sound. However, the court held that a procedural defect, such as the lack of an opportunity to submit an opinion, cannot be cured by later asserting the validity of the substantive conclusion.

The opportunity to submit an opinion, guaranteed by Articles 63 and 170 of the Patent Act, is not merely a formal procedure. It is a core procedure that ensures the applicant can decide on the technical counterarguments to a rejection reason and the amendments to make. Therefore, to dismiss an appeal based on a new rejection reason, the applicant must first be notified of the reason and given an opportunity to submit an opinion brief and amend.

Implications for Patent Prosecution Practice

This case demonstrates that patent applicants must not only consider the numbers of cited documents when responding to rejection reasons but also accurately manage the correspondence between components.

• First, the response brief must clearly present the correspondence table between the prior art and the claims. To determine later in the appeal stage whether the comparison method has changed, the correspondence assumed during the examination stage must be recorded.
• Second, even if the prior art is the same, check if the logic has changed. Even with the same document, if the compared components, technical problem, differences, motivation for combination, or amendment direction change, a new rejection reason may arise.
• Third, in the appeal stage, prepare arguments for procedural violations along with substantive counterarguments. If it is a new rejection reason, point out the lack of opportunity to submit an opinion, but it is safer to simultaneously clarify why the changed correspondence is technically unreasonable.
• Fourth, the amendment strategy may vary depending on the correspondence between components. The direction of numerical limitation, material limitation, functional limitation, or relationship limitation will differ depending on which layer, part, or step corresponds to which component of the prior art.

Pine IP Firm's Perspective

The most dangerous situation in responding to rejection reasons is when the logic refuted by the applicant and the logic finally adopted by the appeal body diverge. In such cases, it cannot be assumed that procedural opportunities were sufficient simply because the same prior art was used.

Pine IP Firm recommends an approach that manages component correspondence tables for each claim, the technical nature of prior art documents, and possible amendment scenarios during the rejection reason response stage. Thoroughly documenting this record during the examination stage provides a clearer basis for determining whether a new rejection reason exists and for arguing procedural illegality in the appeal stage.

The Patent Court Decision in Case No. 2025heo10293 confirms that even if the IPTAB uses the same prior art, if it changes the component comparison method, thereby altering the applicant's response direction, a decision made without an opportunity to submit an opinion can be revoked. In patent practice, the core of a rejection reason lies not only in the name of the document but also in how it is corresponded to the claims.

References

• Patent Court Decision dated February 12, 2026, rendered in Case No. 2025heo10293
• Patent Court Decision Brief No. 15, February 27, 2026
• Patent Act, National Law Information Center