Beau Burton, Author at ElementIP Law

In Ex parte Johnson, the Patent Trial and Appeal Board (“Board”) rejected an Examiner’s construction of a claim term because it conflicted with the meaning given in other patents from analogous art.

The claims on appeal in Johnson were drawn to a prosthetic heart valve including, inter alia, a “cloth-covered undulating rod-like wireform.” Appellant’s specification defined the term “wireform” as “an elongated rod-like structure formed into a continuous shape defining a circumference around a flow orifice for supporting flexible leaflets in the various prosthetic valves herein.”  See US 2017/0239044, ¶ [0041].

In rejecting the claims as anticipated by US 5,928,281 (“Huynh”), the Examiner relied on element 99 of Huynh, which is shown below and linked here for convenience:

Applying the broadest, reasonable interpretation and relying on a dictionary published in 2020, the Examiner found that element 99 of Huynh was a rod-like wireform because it had “an elongated structure with a shape similar to a stick, wand, staff, or the like.”

Appellant disagreed with the Examiner’s construction, arguing element 99 of Huynh referred to a cloth top edge of a stent assembly rather than an “undulating rod-like wireform formed into a continuous shape having alternating cusps and commissures around a periphery.” Appellant’s argument was supported by Huynh’s description of element 99 as an “upper surface 99 (see FIG. 1) of [the] stent” and Huynh’s use of the term “wireform” elsewhere to refer to a “wire” or “wire-like” structure. Appellant’s construction was also consistent with the description of “wireform” in two separate analogous references to mean a bent “wire” structure (US 6,539,984 B2, issued Apr. 1, 2003) and a bent, machined, or molded “wire-like” structure (US 7,871,435 B2, issued Jan. 18, 2011).

Rejecting the Examiner’s construction as unreasonably broad, the Board noted:

It is well settled that prior art references may be indicative of what all those skilled in the art generally believe a certain term means . . . [and] can often help to demonstrate how a disputed term is used by those skilled in the art. Accordingly, the PTO’s interpretation of claim terms should not be so broad that it conflicts with the meaning given to identical terms in other patents from analogous art.

Relevant to the Board’s decision were the contemporaneous patents and even the prior art relied on in the rejection, all of which were consistent with Appellant’s specification and construction.

With Huynh lacking the claimed cloth-covered undulating rod-like wireform, the Board reversed the anticipation rejection.

Takeaway: While it can be difficult to rebut an Examiner’s unreasonably broad construction of a claim term when the specification does not define, or does not sufficiently define, the claim term in question, valuable rebuttal evidence may be found in contemporaneous publications. As shown in Johnson, the Board found the consistent usage of the claim term in three analogous publications (including the allegedly anticipating reference) trumped the Examiner’s construction based on a generic dictionary definition. This is not to say dictionaries are always a poor source of evidence, but dictionaries typically include multiple definitions and a general definition may not accurately reflect how the claim term is used in the relevant art.

Judges: S. Staicovici, E. Brown, W. Capp

In Google LLC v. NavBlazer, LLC, the Patent Trial and Appeal Board (“Board”) declined to institute inter partes review of U.S. Patent No 9,075,136 (“the ’136 patent”). IPR2021-00502, Paper 6 (mailed Aug. 5, 2021).

The ’136 patent is directed to an apparatus that provides a vehicle user with information such as road and traffic conditions. Each of the independent claims of the ’136 patent required an apparatus that “automatically detects a departure of the vehicle from the first travel route, and … identifies a second travel route on which the vehicle can travel to the destination in response to the detected departure of the vehicle from the first travel route.”

The petitioner argued that the claimed dynamic rerouting functionality would have been obvious over the combination of: a primary reference (Behr) that disclosed a base unit that calculated route guidance in response to a query using an up-to-date database located in the base unit and then transmitted the response to a display unit; and a secondary reference (Schreder) that disclosed an automobile equipped with an RF GPS navigation system and RF receivers that monitored updated traffic condition information for dynamic rerouting guidance.

According to the Petitioner, it would have been obvious to include Schreder’s dynamic rerouting functionality within the base unit of Behr so that when the base unit detected a deviation from a specified route, it would identify a new route. The Petitioner further argued that an artisan would have been motivated to make this modification because Behr teaches that guidance systems that are self-contained within a vehicle, such as the system disclosed in Schreder, suffered from many drawbacks, including the need for large data storage capabilities onboard the vehicle.

The Board was not persuaded, stating:

We disagree with Petitioner that reducing vehicle-side processing and data storage justifies modifying Behr’s navigation system to include Schreder’s dynamic rerouting feature. Petitioner’s proffered rationale justifies where a skilled artisan would have located Schreder’s rerouting functionality—in Behr’s central system—but does not address why a skilled artisan would have added that functionality to Behr in the first place. Given this deficiency, we find that Petitioner has not produced the required ‘articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’

Absent an articulated reason for “why” an artisan would have made the modification, the Board found that the Petitioner failed to carry its burden to show a reasonable likelihood of prevailing on any claim, and thus declined to institute inter partes review of the ’136 patent.

Takeaway: In Google v. NavBlazer, the Petitioner arrived at the claimed subject matter but neglected to explain why the modification would have been obvious in the first place. Unlike anticipation, obviousness requires a story, and the most important part of that story is why a skilled artisan would have been motivated to modify the primary reference to arrive at the claimed subject matter. Without “the why” (i.e., a reason), the obviousness rationale collapses into a hindsight-guided combination of elements. Therefore, when challenging the claims of patent for obviousness it is critical to supply the Board with “the why” of the story you are telling.

Judges: K. Turner, G. Baer, A. Moore

Ex parte Kiely is a recent decision of the Patent Trial and Appeal Board (PTAB) addressing whether a Markush group stating “selection from the group comprising” was indefinite.

In Ex parte Kiely the Appellant argued that the phrase “selection from the group comprising” was not improper because the Examiner allowed claims in another application with language and alleged that such phrasing was found proper in Multilayer Stretch Cling Film Holdings, Incorporated v. Berry Plastics Corporation, 831 F.3d 1350 (Fed. Cir. 2016). The PTAB disagreed.

First, the PTAB relied on Abbott Labs. v. Baxter Pharm. Products, Inc. for the proposition that “a proper Markush group is limited by the closed language term ‘consisting of.’” 334 F.3d 1274, 1281 (Fed. Cir. 2003). The PTAB also cited MPEP § 2173.05(h), which states “[i]f a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group ‘comprising’ or ‘consisting essentially of’ the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim.”

With respect to Appellant’s reliance on Multilayer Stretch Cling, the PTAB noted that this case did not sanction the phrase “selected from the group comprising.” The claims at issue in Multilayer Stretch Cling did not even use this language. To the contrary, the court in Multilayer Stretch Cling stated:

[I]f a patent claim recites ‘a member selected from the group consisting of A, B, and C,’ the ‘member’ is presumed to be closed to alternative ingredients D, E, and F. By contrast, the alternative transitional term ‘comprising’ creates a presumption that the recited elements are only a part of the device, that the claim does not exclude additional, unrecited elements.

Finally, the PTAB rejected the Appellant’s argument that allowed claims in another application could cure the indefiniteness rejection because “compliance for each case with the statutory requirements is done on a case-by-case basis.” See In re Giolito, 530 F.2d 397, 400 (CCPA 1976)(“We reject appellants’ argument that the instant claims are allowable because similar claims have been allowed in a patent. It is immaterial whether similar claims have been allowed to others.”); see also In re Wertheim, 541 F.2d 257, 264 (CCPA 1976) (holding that “[i]t is immaterial in ex parte prosecution whether the same or similar claims have been allowed to others”).

Accordingly, the PTAB affirmed the Examiner’s indefiniteness rejection.

Takeaway: A Markush group is common when claiming alternative members for a particular purpose. The proper language for a Markush group is “selected from the group consisting of.” The PTAB in Ex parte Kiely was not open to an alternative format that bucked this convention. Thus, when claiming a Markush group it is best to use the standard phrasing. It is also important to remember that a Markush group carries a presumption that it is closed to unrecited alternatives and a presumption, albeit weaker, that it is closed to mixtures/blends of the recited alternatives. This latter presumption was overcome in Multilayer Stretch Cling, because the specification supported blends. Therefore, a Markush group should not be used when there is a clear intent for the claim to remain open to unrecited elements/members.

Judges: T. Owens, M. Colaianni, D. Praiss

In United States v. Arthrex, Inc., the Supreme Court ruled 5-4 that the unreviewable authority wielded by administrative patent judges (APJs) during inter partes review (IPR) is incompatible with their appointment by the Secretary of Commerce to an inferior office.

Under the Appointments Clause of the Constitution, only the President, with the advice and consent of the Senate, can appoint noninferior (i.e., principal) officers, while Congress may appoint inferior officers by law. Inferior officers must be “directed and supervised at some level by others who were appointed by Presidential nomination with the advice and consent of the Senate.” Edmond v. United States, 520 U. S. 651, 663 (1997). This structure provides accountability because it ensures the blame of a bad nomination falls upon the president.

Congress has vested the “powers and duties” of the USPTO in a sole Director (a Senate-confirmed officer), who provides policy direction and management supervision for USPTO officers and employees. In the America Invents Act (AIA) of 2011, Congress also provided that APJs would be appointed as inferior officers by the Secretary of Commerce (a Senate-confirmed officer). Thus, APJs are organizationally inferior to the Secretary of Commerce who appoints them and the Director who fixes their pay rate, selects them to reconsider the validity of challenged patents, and controls whether or not to institute IPRs.

Despite the inferior appearance, the AIA insulated APJs from supervision because it provided APJs with the power to render a final decision on behalf of the United States without any review of their nominal superior or other principal officer in the Executive Branch. And the only possibility for review is a request for rehearing, but Congress unambiguously specified in 35 U.S.C. § 6(c) that only the PTAB may grant rehearings. In the majority’s view, the result is that “[t]he chain of command runs not from the Director to his subordinates, but from the APJs to the Director.” Accordingly, the Court found the unreviewable authority exercised by APJs violated the Appointments Clause.

Having found this violation, the Court turned to the appropriate remedy. The Court declined Arthrex’s request to hold the entire regime of IPR unconstitutional and went with a more tailored approach. Specifically, the Court held that Section 6(c) is unenforceable to the extent that it prevents the Director from reviewing final decisions rendered by the APJs.

Notably, while the Court found a limited remand to the Director appropriate in Arthrex’s case, the Court emphasized that “the Director need not review every decision of the PTAB. What matters is that the Director have the discretion to review decisions rendered by APJs.” Thus, while it is clear that the PTO will need to implement a procedure for the Director to review APJs’ decisions, it is unclear how rigorous or meaningful the review process will be. For now, the PTO has implemented an interim procedure whereby review of a PTAB final decision may be initiated sua sponte by the Director or requested by a party to a PTAB proceeding. Additional details on this interim procedure are available here. It also remains to be seen whether the APJs’ new status as inferior officers will limit the deference they are provided on appeal.

Ratios can be useful when claiming a subset of two well-known components or variables, particularly when the subset (defined by a ratio) provides a new and useful result. However, when the prior art teaches broad ranges for the individual components or variables, it is common for examiners and petitioners to argue obviousness based on overlapping theoretical ranges of the ratio derived from selecting the maximum and/or minimum values for each of the components or variables. The issue with this is approach is that the prior art may not direct a person of ordinary skill in the art (POSA) to the particular selections required to arrive at the claimed ratio. SNF S.A. v. Solenis Technologies is illustrative. IPR2020-01730, Paper 10 at 4 (PTAB April 22, 2021).

In SNF S.A., the challenged claims required a glyoxalated copolymer (G-PAM) obtained by reacting:

[A] 5–40 parts of glyoxal; and

[B] 60–95 parts of a cationic copolymer including:

[b1] ~15–85 wt% of diallyldimethylammonium halide monomer (DADMAC); and

[b2] ~85–15 wt% of acrylamide monomer,

the cationic copolymer having a weight average molecular weight (WAMW) of 120,000 to 1,000,000 Daltons, and

a ratio of the WAMW to the weight % of the DADMAC being greater than 4000 Daltons/weight%.

According to the background of the patent, the patentee found that the ranges of the WAMW and % DADMAC in combination with the claimed ratio thereof improved water drainage during processing and increased the strength of paper or boards treated with the G-PAM.

The petitioner, SNF S.A., argued obviousness based on three different primary references: Wright, Lu, and Dauplaise. The petitioner admitted that none of the cited references disclosed a ratio between WAMW and % DADMAC. To remedy this deficiency, the petitioner presented two arguments.

The petitioner’s first argument was that a POSA would have selected values of the WAMW and % DADMAC disclosed by each of the references to arrive at the ratio required by the claims. Specifically, with respect to the Wright reference, the petitioner argued “the ratio of 150,000 WAMW to 25 wt.% DADMAC, as both taught by Wright ’343, is 6,000 [and] … the ratio of 1,000,000 WAMW to 30 wt.% DADMAC is 33,333.” The petitioner supported this assertion with an expert declaration that similarly stated it would have been “obvious” and “routine” to select molecular weights of 150,000 (an upper endpoint of the preferred range) and to select DADMAC concentrations of 25% and 30% (preferred concentrations).

For ease of discussion, the scope covered by the claims (shaded blue box) relative to the scope disclosed by the Wright reference (shaded red box) and the two particular data points of the Wright reference relied on by the petitioner (red dots) are shown graphically below and here:

As shown above, Wright’s broad WAMW range of 30,000 to 5,000,000 and broad % DADMAC range of 0.1–90 wt% cover a WAMW/%DADMAC ratio of 4,000, as they theoretically cover ratios from 333 to 5×10⁷. And although one of the ratios derived by the petitioner (lower red dot) was derived from a preferred amount of DADMAC (25 wt%) and an upper endpoint of a preferred WAMW range (150,000), the Board found:

Petitioner, however, never explains how or why a person of ordinary skill in the art would have been led to select the value ‘150,000 WAMW,’ or ‘25 wt.% DADMAC,’ or any of the specific values it uses to calculate the claimed ratio. Nor does Petitioner direct us to any disclosure in the prior art showing an embodiment having the specific values used in Petitioner’s calculations.

…

Absent explanation from Petitioner, it appears that Petitioner picked the specific values it used to calculate a ratio from broad, unrelated ranges of WAMW and % DADMAC disclosed in the prior art simply because they combine to produce a ratio that meets the ratio recited in the claims of the ’320 patent. This suggests Petitioner relied on hindsight in forming its challenges. Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (‘[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.’).

This use of hindsight is not excused by the mere fact that the specific values combined to produce the claimed ratio fall within the ranges disclosed in the prior art.

The other two primary references relied on by the petitioner, Lu, and Dauplaise, suffered similar defects.

The petitioner’s second argument was that “a POSA would have arrived at the ratio using routine experimentation to optimize result-effective variables, as guided by the art.” The Board also rejected this argument.

First, the Board found that a POSA would not have optimized the ratio itself because “there is no evidence that skilled artisans knew that the claimed ratio of WAMW to % DADMAC was a parameter of any importance or one worth optimizing.” That is, the ratio was not a result-effective variable.

Second, the Board found that there was no persuasive evidence to support a conclusion that independently optimizing WAMW and % DADMAC would result in a polymer having the claimed ratio rather than one of the many ratios falling outside the scope of the claims. Again, the Board emphasized the innumerable combinations of values. But it seemed that the Board was more persuaded by the fact that there was evidence of polymers outside the scope of the claim exhibiting the same properties as those having the claimed ratio such that optimization could equally result in a copolymer having a ratio outside the claim. Ultimately, the Board concluded that the evidence did not support the petitioner’s assertion that independent optimization would lead to the claimed ratio.

For the foregoing reasons, the Board concluded that the petitioner failed to carry its burden and declined to institute the IPR.

Takeaway: When facing an office action or post-grant petition in which a claimed ratio is alleged to be obvious based on the selection or optimization of the components making up the numerator and denominator, you should first determine whether the ratio itself is a result-effective variable. If not, the next step is to determine whether there is an embodiment that discloses values for the numerator and denominator that would result in the claimed ratio. As shown in SNF S.A., the fact that specific values can be combined to produce the claimed ratio is insufficient by itself when there are innumerable combinations of values. If neither of these applies, the final step is to determine whether the prior art teaches a reason to optimize the numerator and denominator in a manner that would result in the claimed ratio.

Judges: C. Crumbley, J. Abraham, D. Cotta

A conclusion of obviousness requires that a skilled artisan would have had a reason to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.

The reasonable expectation of success requirement can be difficult to challenge during prosecution because the reply is consistently that “only a reasonable expectation of success, not absolute predictability, is necessary for a conclusion of obviousness.” In re Longi, 759 F.2d 887, 897 (Fed. Cir. 1985). This seemingly insurmountable conclusion is compounded by a lack of bright-line rules defining when a reasonable expectation of success exists. However, Ex parte Saerens provides a nice example of facts resulting in a conclusion that a skilled artisan would not have had a reasonable expectation of success. Appeal No. 2020-005386 (PTAB Feb. 25, 2021) (non-precedential).

The claims in Saerens were drawn to a method for fermenting cocoa beans with at least one Pichia kluyveri yeast strain, where the fermented cocoa beans exhibited particular ratios of isobutyl acetate/isobutanol and isoamyl acetate/isoamyl alcohol.

The Examiner relied on a primary reference for its disclosure of adding pectinolytic yeast during cocoa bean fermentation and cited a secondary reference for evidence that certain strains of Pichia kluyveri are pectinolytic. According to the Examiner, a skilled artisan would have had a reason to select Pichia kluyveri from the secondary reference for use as the pectinolytic yeast in the primary reference.

The Appellant disagreed because the secondary reference “focused on examination of pectinolytic activity on a coffee substrate, not cocoa” and there was no evidence the Pichia kluyveri would have exhibited similar activity on all pectin-containing substrates, or would otherwise have been useful for cocoa bean fermentation. In response, the Examiner argued that “pectinolytic activity is universal,” and predictably stated that “Appellants are reminded that only a ‘reasonable expectation of success’, not an ‘absolute success’ would have been required in an obviousness rejection.” Examiner’s Answer at 15.

Reversing the Examiner’s rejection, the Board held that “the prior art must give some indication of which parameters were critical or which of many possible choices is likely to be successful.” Here, however, the secondary reference relied on by the Examiner showed significantly different Pichia kluyveri activity when cultured on yeast polygalacturonic acid medium vs. coffee broth. Consequently, the evidence of record showed that Pichia kluyveri activity would have been considered substrate-specific in complete contradiction to the Examiner’s unsubstantiated finding that “pectinolytic activity is universal,” irrespective of whether the substrate is coffee or cocoa.

Accordingly, the Board found that a skilled artisan would not have been guided by the secondary reference to substitute Pichia kluyveri for any of the yeasts in the primary reference, and reversed the Examiner’s rejection.

Takeaway: It can be difficult to persuade an Examiner who has already concluded there would have been a reasonable expectation of success even when the subject matter claimed is unpredictable, as with the chemical and biological arts. This is illustrated in Saerens, where the Examiner maintained the obviousness rejection despite the experimental data in the secondary reference itself contradicting his conclusion of “universal activity.” Nevertheless, it is important to present any experimental data, technical publications, and/or expert testimony that shows unpredictability as these will be more persuasive than mere attorney argument. In the event that an Examiner is not persuaded by such evidence, the evidence can serve as a basis for reversal in a formal appeal.

Judges: C. Timm, G. Best, J. Snay

When evaluating whether a Petitioner’s inter partes review petition is based on matters previously presented to the Office, the Patent Trial and Appeal Board (“the Board”) uses the following two-part framework:

1. determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and
2. if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.

See Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In making this determination the Board considers several non-exclusive factors, which are outlined in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton, Dickinson”).

In Biocon Pharma Ltd. v. Novartis Pharmaceuticals Corp., IPR2020-01263, Paper 12 (PTAB Feb. 16, 2021) (“Biocon Pharma”), the Petitioner presented two grounds of unpatentability that each included a reference (EP ’072 and the ’996 patent) that was cited on an IDS but not applied in any rejection by the Examiner. According to the Petitioner, citation of a reference on an IDS was inconsequential because the Board “has consistently declined to exercise its discretion under § 325(d) based on the mere citation of references in an [Information Disclosure Statement (IDS)] that were not applied by the Examiner.” The Board disagreed.

Applying the first part of the framework, the Board found that the record showed the Examiner signed an IDS listing both of EP ’072 and the ’996 patent. The Board also pointed out the precedential Advanced Bionics decision states that “[p]reviously presented art includes art made of record . . . such as on an Information Disclosure Statement (IDS).” Biocon Pharma, 9 (quoting Advanced Bionics, 7–8). Consequently, the Board rejected the Petitioner’s argument that it should decline to exercise discretion under § 325(d) because these references “were not applied by the Examiner.”

Having found that the “same or substantially the same prior art” was presented previously to the Office, the Board did not assess whether the “same or substantially the same arguments” were presented previously to the Office before moving to the second part of the framework. See id., f.n. 4 (citing Advanced Bionics, 20).

Under the second part of the framework, the Board noted that “[i]f . . . the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” Advanced Bionics, 8–9. This is similar to district court litigation where a challenger relying on previously considered references “has the added burden of overcoming the deference that is due to a qualified government agency presumed to have properly done its job, which includes one or more examiners who are assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art and whose duty it is to issue only valid patents.” Ultra-Tex Surfaces Inc. v. Hill Brothers Chemical Co., 204 F.3d 1360, 1367 (Fed. Cir. 2000) (quoting American Hoist & Derrick Co. v. Sowa & Sons, Inc. 725 F.2d 1350, 1359 (Fed. Cir. 1984)).

Here, the petitioner argued that the Examiner erred because he found the patentee’s showing of synergistic results unexpected. However, the patent owner argued, and the Board agreed, that the prior art and evidence of record, which included a Declaration under 37 C.F.R. § 1.132, supported the Examiner’s finding of unexpected results. Accordingly, the Board exercised its discretion under § 325(d) and denied institution of trial.

Takeaway: No matter which side of an IPR petition you are on, it is important to note that the first part of the Advanced Bionics two-part framework may be satisfied when the references relied on in the IPR petition were merely cited on an IDS during prosecution. Thus, the Board’s discretion to institute an IPR based on references that were cited on an IDS during prosecution but never applied in a rejection will turn on the petitioner’s ability to demonstrate a material error by the Examiner.

Judges: E. Franklin, R. Pollock, K. Sawert

Claimed ranges are prima facie obvious when they overlap a prior art range. When there is no overlap, Examiners will bridge the gap by arguing that the parameter of the range is a result effective variable (such that it would have been obvious to go beyond the literal range) or rely on Titanium Metals to assert that the claimed range is obvious simply because it is “close enough” to the prior art range. The Examiner in In re Yanez tried both of these approaches but failed. Appeal No. 2020-001246 (PTAB Dec. 10, 2020) (non-precedential).

The claim at issue in Yanez required a nickel-aluminide alloy comprising, among other things, 0.15 wt % or less zirconium (Zr). The prior art, Liu, disclosed a nickel aluminide composition that included “from about 0.1 to about 1.5[atomic]% zirconium.” The Examiner converted the lower endpoint of 0.1 at.% in Liu to 0.17 wt%.

The Examiner recognized that Liu’s lower endpoint of 0.17 wt% exceeded the Applicant’s upper limit of 0.15 wt%. However, the Examiner argued: (1) “0.17 wt% is considered close to presently claimed 0.15% or less according to MPEP 2144.05 I”; and (2) “Liu expressly disclose[s] varying amounts of Zr … leads to different YS [(yield strength)] and elongation as illustrated in Figure 2a and 2b … [I]t would have been obvious to one skilled in the art to have adjusted the result-effective variable of Zr amount, in the Nickel-aluminide alloy of Liu in order to achieve a desired VS [sic, YS] and elongation.”

The Board rejected the Examiner’s “close enough” position, stating “no evidence that Liu’s about 0.17 wt% Zr is sufficiently close to the Appellant’s 0.15 wt% Zr to have suggested 0.15 wt% Zr to one of ordinary skill in the art.”

Next, the Board found “[t]he result effective variable in Liu’s Figures 2a and 2b is [molybdenum] Mo concentration, not [zirconium] Zr concentration.” The Board further noted that an example in Liu having 0.3 at% of Zr had a yield strength between examples containing 0.5 at% and 1.0 at% of Zr; suggesting the Zr content did not correlate with yield strength.

Absent a factual basis to support the Examiner’s positions, the Board reversed the obviousness rejection.

Takeaways: When facing an obviousness rejection where there is a nonoverlapping range, it is important to assess how the prior art range is arranged relative to the claimed range and what the prior art teaches about the range.

The “close enough” rationale from Titanium Metals made sense in that case because the prior art disclosed two compositions (no ranges were described) and the claimed composition fell between those two compositions. Thus, while there was no overlap with the specific compositions in Titanium Metals, a skilled artisan would have expected that an intermediate composition would have the same properties.

The rationale from Titanium Metals starts to break down when the nonoverlapping claimed range is next to the prior art range and the prior art does not teach that the range is flexible (i.e., does not use the modifiers “about” or “approximate”) or suggest that the properties outside the disclosed range would be expected to be the same (i.e., does not state that any concentration is acceptable before setting forth preferred ranges). See In re Patel, 566 F. App’x 1005 (Fed. Cir. 2014) (nonprecedential) (rejecting the PTO’s position that proximity of nonoverlapping ranges alone is sufficient to establish a prima facie case of obviousness). In Yanez, while the prior art used the modifier “about,” it appears that the Board concluded a skilled artisan would not have expected the claimed composition to have the same properties since the concentration of Zr did not correlate with the yield strength (i.e., the lowest concentration of Zr had an intermediate yield strength).

Yanez also shows the importance of assessing the prior art teachings surrounding the alleged result-effective variable. Here, the data relied on by the Examiner showed that the result effective variable was a completely different element than asserted by the Examiner. As such, there was no basis for the Examiner’s rejection. For another good illustration on this topic, readers are referred to Matthew Barnet’s recent blog, “Nonobviousness: When a Result-Effective Variable Is Different from the Claimed Variable.”

Judges: T. Owens, B. Baumeister (concurring), B. Range

In Ex parte Song, the Patent Trial and Appeal Board (“Board”) reversed an Examiner’s obviousness rejection after finding the Examiner failed to establish that it would have been obvious to optimize a ratio as claimed through routine optimization. Appeal No. 2020-004060 (PTAB Nov. 18, 2020) (non-precedential).

In Song, the claims were directed to a touch panel including an adhesive film and a substrate, the adhesive film including a semi-cured adhesive composition including: (A) a polymerizable acrylic based composition; and (B) a polymerizable epoxy and/or vinyl ether composition, wherein “the ratio of the radical polymerizable composition [(A)] to the cation polymerizable composition [(B)] is 1:1.”

The Examiner relied on a primary reference that disclosed a double-sided pressure-sensitive adhesive (PSA) sheet for fixing a touch panel to a display surface, where the PSA was acrylic based and included a photoinitiator (i.e., the (A) component).

For the (B) component and the ratio of (A) to (B), the Examiner relied on a secondary reference. The secondary reference disclosed polymerizable epoxide systems and ionic photoinitiators (i.e., component (B)) and mentioned the optional presence of acrylic compounds (i.e., component (A)). As for the ratio, the secondary reference stated “[t]he proportion of the individual constituents in the adhesive composition can be varied within wide ranges and are not particularly critical” and that “[t]he ethylenically unsaturated substance [(A)] which can be polymerized by free radicals can be 5–50% wt%, preferably about 10 wt%, of the ionically polymerizable epoxide system [(B)].” This corresponds to a ratio of (A) to (B) from 1:20 to 1:2.

The Examiner recognized that the prior art range did not encompass the claimed ratio of 1:1, but reasoned “[a]s the workability of the adhesive is a variable that can be modified, among others, by adjusting the amount of the individual components, the precise amount would have been considered a result effective variable by one having ordinary skill in the art” so such a person “would have optimized, by routine experimentation, the ratio of ionically polymerizable peroxide system to ethylenically unsaturated substance that is polymerized by free radicals in the prior [art] to obtain the desired adhesive workability.”

The Board was not persuaded. Although the prior art taught that the amounts of the individual components could be varied within wide ranges, it also taught that they were not particularly critical and neither the broad ratio range of 1:20 to 1:2 nor the preferred ratio of 1:10 overlapped with the claimed ratio of 1:1. Accordingly, the Board found that Examiner failed to establish that routine optimization would have led a person of ordinary skill in the art to the ratio of 1:1.

Takeaway: The CAFC has held that proximity of nonoverlapping ranges alone is not sufficient to establish a prima facie case of obviousness. Thus, Examiners often resort to “routine optimization” or “result effective variables” to bridge the gap between the prior art and the claims. In Song, the Examiner’s attempt to bridge the gap was unsuccessful because the prior art’s range was not close enough to the claimed range and the preferred prior art ratio was 10:1, which is in the wrong direction if the optimum ratio is supposed to be 1:1.

The rationale here is similar to In re Sebek, 465 F.2d 904, 907 (CCPA 1972), where the CCPA held that when the prior art indicates that an optimum should be sought within a range, the determination of optimum values outside that range may not be obvious. In Sebek the case for nonobviousness was stronger because there were indications elsewhere that suggested that the optimum values would not be within the claimed range. Nevertheless, when confronted with a nonoverlapping prior art range, no indication in the prior art that the endpoints are flexible enough to encompass your claimed range, and the prior art’s preferred ranges lead away from your claimed range, there is a strong case for nonobviousness as in Song and Sebek.

Judges: Owens, Kennedy, McManus

Applicants are not always required to present evidence of unexpected results in a § 1.132 declaration. If the specification identifies a result as unexpected or surprising, this evidence may be sufficient to rebut a prima facie case of obviousness. Ex parte Bergman is illustrative. Appeal No. 2019-007011 (PTAB Nov. 2, 2020) (non-precedential).

In Bergman, the claims were directed to a cosmetic composition containing a water-insoluble UV-screening agent (A) and a functionalized oil compound (B) in a cosmetically acceptable medium. The Examiner required the Applicant to elect a single species of (A) and (B) for examination. In response to the election requirement and for purposes of appeal, the claims were limited to butylmethoxydibenzoylmethane as the UV-screening agent (A) and a functionalized 2-decyltetradecanol as compound (B).

The Examiner rejected the claims over a primary reference that disclosed cosmetic compositions containing the elected compound (B) and the cosmetically acceptable medium. While the primary reference did not include specific UV-screening compounds (A), it taught that its compositions could be in the form of sunscreens. In view of this, the Examiner relied on a secondary reference to show that dibenzoylmethane derivatives (i.e., the genus of the elected water-insoluble UV-screening agents) were “well known per se as screening agents.” Accordingly, the Examiner found–and the Board agreed–that it would have been prima facie obvious to add the elected UV-screening agent (A) to the cosmetic composition of the primary reference, which expressly suggested the inclusion of a UV-screening agent.

The Applicant countered the prima facie case of obviousness by arguing “the present application already includes comparative examples that illustrate unexpected results obtained from the present invention.” Specifically, the Applicant cited a solubility test that showed that using compounds (B), including the elected compound (B1), increased the solubility of several UV-screening agents, including the elected UV-screening agent (A1), whereas the solubility of a UV-screening agent outside the scope of the invention (A7) was not improved when combined with the elected compound (B1).

The specification further showed that the maximum solubility of the elected UV-screening agent (A1) increased from 1% w/w in isododecane to 15% w/w in a mixture of isododecane and the elected compound (B1). And critically, the specification taught that “[t]he aim of . . . find[ing] efficient solvents for water-insoluble solid organic UV-screening agents” that have desirable properties “surprisingly . . . can be achieved by combining particular water-insoluble solid organic UV-screening agents defined below with particular compounds that are capable of establishing hydrogen bonds with particular partner junction groups.” That is, the specification concluded that the results were unexpected.

The Board agreed with the Applicant and found the fifteen-fold increase in the maximum solubility of the UV-screening agent (A) to be a substantial and unexpected improvement. In addition, the Board found that the cited references did not provide a basis for doubting the specification’s statement that the improvement solubility was unexpected. Therefore, the Board concluded that the evidence of nonobviousness outweighed the evidence of obviousness and reversed the obviousness rejection.

Of note is that one APJ did not agree that the evidence in the specification supported a conclusion of nonobviousness because the showing of unexpected results was based on a 50/50% mixture of the elected compound (B1) and isododecane as compared to isododecane alone and the claims did not require any particular amounts of the elected compound (B1) to isododecane. However, this conclusion overlooks the unexpected result being associated with hydrogen bonding that occurs between the compounds (B) and the UV-screening agents (A). Such an effect should occur any time the compounds (B) and the UV-screening agents (A) are combined. See, e.g., In re Kollman, 595 F.2d 48, 56 (C.C.P.A. 1979) (“Often, one having ordinary skill in the art may be able to ascertain a trend in the exemplified data which would allow him to reasonably extend the probative value thereof.”).

Takeaway: “When an applicant demonstrates substantially improved results . . . and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary.” See In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995). As shown by Bergman, a showing of unexpected results may be part of the original specification. Therefore, it is important to review the specification for an express recognition of surprising or unexpected results, particularly when dealing with compositions based on known components. Also, when the evidence of unexpected results in the specification is limited in scope, it is beneficial to draft dependent claims that are closer in scope to the examples and to ascertain whether there is a trend that can be gleaned from the limited showing because, as the dissent suggests, some APJs take a very rigid approach when assessing whether a showing of unexpected results is commensurate in scope with the claims.

Judges: E. Grimes, U. Jenks, R. Townsend (dissenting)

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