Matthew Barnet, Author at ElementIP Law

During patent prosecution in the U.S., claims are given their broadest reasonable interpretation consistent with the specification. Ex parte Adel (Appeal No. 2020-006165) is a recent case in which the Patent Trial and Appeal Board (“Board”) found an examiner’s broad interpretation to be unreasonable.

Independent claim 1 recited (in part):

A process for manufacturing an edible water-in-oil emulsion, comprising the steps of:

a) providing a water-phase;

b) providing a liquid oil;

c) providing a fat powder comprising hardstock fat;

d) providing a hardstock fat in liquid form;

e) mixing the fat powder comprising hardstock fat, the hardstock fat in liquid form, and the liquid oil to form an oil-slurry, wherein the hardstock fat in liquid form is completely liquid before contact with the fat powder; …

The examiner rejected the claims as obvious over a combination of references. In the examiner’s proposed combination, the hardstock fat in liquid form included a portion that had crystallized (i.e., solidified) before contacting the fat powder.

The appellant argued that the existence of the crystallized portion meant that the hardstock fat in liquid form was not completely liquid before contact with the fat powder, contrary to the requirement of claim 1.

The examiner took the position that the hardstock fat containing the crystallized portion nonetheless satisfied the claim limitation of being “completely liquid.” The examiner noted that the primary reference described the hardstock fat as being “pumpable,” and stated that “[i]t is well understood that pumpable refers to the ability to move or transfer fluids or liquids.” The examiner took the position that the hardstock fat containing the crystallized portion “successfully meets the claimed limitation of the hardstock fat in liquid form [being] completely liquid.”

The Board disagreed with the examiner. The Board found it “unreasonable to interpret the term ‘completely liquid’ as encompassing hardstock fats that have already undergone some amount of crystallization. A liquid that has already undergone some amount of crystallization is not ‘completely’ liquid.” The Board found that such an “interpretation renders the word ‘completely’ a nullity, and such interpretations are disfavored.” Accordingly, the Board reversed the obviousness rejection.

Takeaway: U.S. examiners sometimes interpret the claims in a broader way than applicants intend. In such situations, it might be possible to argue that an examiner’s interpretation is unreasonably broad, and thus improper. Since examiners are likely to consider their interpretations to be reasonable, however, such arguments might require a supporting declaration from a skilled artisan, or an appeal to the PTAB.

Judges: Wilson, Kennedy, Gupta

Process (or method) claims recite one or more actions or steps to be performed. For example: a process for producing NaCl, comprising steps A, B and C. In contrast, product-by-process claims recite a product that is produced by a certain process. For example: NaCl, produced by a process comprising steps A, B and C.

In determining whether a process claim is obvious, a U.S. examiner compares the claimed process to the prior art, and asks whether the prior art suggests all the limitations (i.e., all actions or steps) recited in the process claim. In the example above, the examiner would assess the prior art for a suggestion of steps A, B and C.

The inquiry is somewhat different for a product-by-process claim. For infringement purposes, a product defined by a product-by-process claim is limited by the process. However, the patentability of the product does not depend on the process but on the product itself. In the example above (NaCl, produced by a process comprising steps A, B and C), the examiner would assess the prior art for a suggestion of the product (NaCl) not for a suggestion of the process (steps A, B and C). If the examiner could provide a rationale tending to show that the product appeared to be the same as or similar to that of the prior art, although produced by a different process, the burden would shift to the applicant to provide evidence establishing a nonobvious difference between the claimed product and the prior art product.

This important difference between process claims and product-by-process claims is illustrated in the recent Patent Trial and Appeal Board (“Board”) case of Ex parte Liu (Appeal No. 2020-006403).

Independent claim 1 recited:

A pot furnace low-temperature calcination method comprising:

providing a pot;

providing a flame path proximate to the pot such that heat from the flame path heats the pot;

controlling a flame path temperature and discharge rate of the pot furnace such that petroleum coke is calcined in the pot at a temperature range from 1150°C to 1220°C, the discharge rate of the pot being controlled to be 110 – 120 kg/hr; and

reducing an amount of desulfurization of the petroleum coke during calcination so that true density of the calcined coke is between 2.05 and 2.07 g/cm³;

wherein the flame path temperature is controlled to be less than 1250°C.

The examiner rejected claim 1 as obvious. In response, the applicant argued that the applied prior art did not suggest the process limitation of a discharge rate of 110 to 120 kg/hr. On appeal, the examiner seemed to apply a product-by-process interpretation to the claimed discharge rate: “It is not necessary for the reference to make or recognize the same mental correlation or relationship as appellant, nor to heat for the same reasons, as long as the product made is the same or essentially the same” (emphasis added).

The Board agreed with the applicant. The Board noted that “the claim is a method claim and not a product-by-process claim. Thus, it is the method step recitations that cannot be skipped in making an obviousness determination.” Accordingly, the Board reversed the obviousness rejection.

Takeaway: It is important to keep in mind the difference between process claims and product-by-process claims. If an examiner refuses to give patentable weight to a process limitation because he considers it to be a product-by-process limitation, this can form the basis of a successful appeal.

Judges: Franklin, Gupta, Inglese

When U.S. patent examiners cannot find all the components of a claim in a single prior art reference, they usually cite a secondary reference for a missing component. In such cases, examiners often take the position that the missing component is equivalent to one of the components in the primary reference, and that it would have been obvious to replace the component in the primary reference with the equivalent component from the secondary reference.

Sometimes, however, the two components are not actually interchangeable equivalents. This issue is illustrated in the recent Patent Trial and Appeal Board (“Board”) case of Ex parte Fei (Appeal No. 2020-006288).

Independent claim 1 recited:

An anyhydrous dentifrice or toothpaste, comprising:

an orally acceptable vehicle, the orally acceptable vehicle comprising propylene glycol;

a thickening system, the thickening system comprising a polymeric thickener, wherein the polymeric thickener is a copolymer of 2-acrylamidomethylpropanesulphonic acid or a salt thereof; and

a peroxide whitening agent.

The examiner rejected claim 1 as obvious over the combination of two references: Golding and Joiner. Golding described a composition for whitening teeth, comprising propylene glycol, a copolymer of 2-acrylamidomethylpropanesulphonic acid, and a phthalocyanine blue pigment as whitening agent. However, Golding did not describe a peroxide whitening agent.

Joiner described whitening agents such as hydrogen peroxide. The examiner took the position that it would have been obvious to replace the pigment whitening agent in Golding with the peroxide whitening agent in Joiner, since both were “used in the prior art as useful for the same purpose…as a tooth whitening agent.”

The applicant argued that such a replacement would not have been obvious. The applicant explained that in Golding, whitening of teeth was performed “without the use of harsh chemicals or components that effect permanent whitening.” Golding used pigments as temporary whitening agents, applied to teeth to directly alter color. In contrast, Joiner used peroxides as permanent whitening agents, applied to teeth to remove existing stain coloring. The applicant argued that these different mechanisms of action meant that pigments and peroxides were not interchangeable equivalents.

The applicant also argued that if the pigment in Golding were replaced with the peroxide in Joiner, there would be no “need for the copolymer, since peroxide whiteners are not dependent upon being maintained on the teeth throughout the day to achieve their effect.”

The Board agreed with the applicant. The Board found that these whitening components were “not simple substitutes but rather operate in different ways. Golding’s pigment needs to remain on the teeth the entire time that a whitening effect is desired…The peroxide of Joiner, meanwhile, may be removed after it chemically reacts with stains in teeth resulting in whiter teeth.” The Board also found that the examiner provided “no persuasive reason why the other components of claim 1 or Golding, added to result in retention of pigment on teeth, would provide any benefit or improvement on the chemical tooth whitening effect of the peroxide compounds used by Joiner.” Accordingly, the Board reversed the obviousness rejection.

Takeaway: When an examiner takes the position that certain components are interchangeable equivalents, it is worth analyzing whether they really are equivalent. If there is a technical reason why it would not be obvious to substitute the components for each other (such as a difference in the mechanism of action of the components), then this reason can help overcome an obviousness rejection.

Judges: Adams, Fredman, Jenks

In a recent IPR, the PTAB found a chemical formula in the claims not to be fully supported by a provisional application, opening the claims to anticipatory prior art. IPR2020-00349, Paper 53 (PTAB July 15, 2021).

The patented claims related to a battery comprising an additive represented by Chemical Formula 1:

where each of k, l and m is independently an integer of 0 to 20; each of k, l and m are different from each other such that the compound has an asymmetric structure; and n is an integer of 1 to 7.

Chemical Formula 1 itself was identical between the provisional and nonprovisional applications. However, the nonprovisional application added the following statement: “For example, the compound represented by Chemical Formula 1 may be 1,3,6-hexane tricarbonitrile, 1,3,5-hexane tricarbonitrile, or 2,3,6-hexane tricarbonitrile.”

The petitioner argued that a skilled artisan would not have understood the originally disclosed Chemical Formula 1 to encompass the second and third of these exemplary compounds. In particular, 1,3,5-hexane tricarbonitrile does not have a cyano group at position 6 of the hexane backbone. Thus, to map this compound onto Chemical Formula 1 would require a methyl substituent on the main carbon backbone of Chemical Formula 1. Similarly, 2,3,6-hexane tricarbonitrile does not have a cyano group at position 1 of the hexane backbone. To map this compound onto Chemical Formula 1 also would require a methyl substituent on the main carbon backbone of Chemical Formula 1.

The petitioner argued that Chemical Formula 1 is a “bond-line formula” which would be understood in the provisional application to exclude substituents from the backbone -CH₂– moieties. The petitioner argued that the inclusion of 1,3,5-hexane tricarbonitrile and 2,3,6-hexane tricarbonitrile as examples of compounds of Chemical Formula 1 in the nonprovisional application broadened the meaning of Chemical Formula 1 to include substituents on the backbone. Because of this, the petitioner argued that the scope of the patented claims was not fully supported by the provisional application.

The PTAB agreed with the petitioner. The PTAB was not persuaded by the patent owner’s argument that the possibility of substituents was implied in Chemical Formula 1 in the provisional application. The PTAB noted other instances within the provisional application where R groups were used to identify optional substituents, and found that “[w]hen the inventors…intended to disclose a chemical formula that permitted substituents to be optionally added, they knew how to do so.”

Since the priority chain from the patent to the provisional application was broken, the PTAB found the claims to be anticipated by prior art that could not be antedated.

Takeaway: Innovation is dynamic, and often continues between the filing of a priority (e.g. provisional) application and a nonprovisional application. New material that is developed within this time generally can be included in the nonprovisional application. Caution is required, however, since the new material can raise an issue of written description support, breaking the priority chain and opening the application or patent to additional prior art.

Judges: Crumbley, Kokoski, McGee

U.S. patent examiners often use an optimization rationale when rejecting claims as obvious. Such situations typically arise when a claim recites a range of possible values for a certain variable, and the prior art discloses a value of the variable that is outside the claimed range. In these situations, examiners usually take the position that the claimed range would have been obvious to obtain by routine optimization of a “result-effective variable,” i.e., a variable that achieves a recognized result in the prior art.

In other situations, however, examiners apply a result-effective variable rationale to a claimed property that is not disclosed in the applied prior art. This is illustrated in the recent Patent Trial and Appeal Board (“Board”) case of Ex parte Horiuchi (Appeal No. 2020-000126).

In Horiuchi, independent claim 1 recited:

A covering material for an electric wire, the covering material having a composition containing a polyvinyl chloride,

wherein the composition of the covering material comprises a characteristic such that a change curve of a loss modulus with respect to temperature for the composition of the covering material containing the polyvinyl chloride has no peak within a temperature range of -30°C to 60°C, which is a temperature range in a usage environment for the electric wire, and

wherein the composition of the covering material comprises more than or equal to 35 parts by weight and less than or equal to 50 parts by weight of a plasticizer and 2 to 20 parts by weight of a flexible resin with a melt flow rate of 1.0 g/10 min or less, the plasticizer and the flexible resin combined with respect to 100 parts by weight of the polyvinyl chloride such that the composition comprises the characteristic.

The examiner rejected claim 1 as obvious. The examiner acknowledged that the applied prior art did not disclose the claimed property of a change curve of loss modulus having no peak within a temperature range of -30°C to 60°C. However, the examiner took the position that the

change curve of loss modulus with respect to temperature is a result effective variable. As the change curve of loss modulus with respect to temperature peaks the material undergoes a decrease in flexibility. Thus, it would have been obvious to…have a covering material that has a change curve of loss modulus with respect to temperature which shows no peak within a temperature range in a usage environment for the electric wire motivated by the expectation of maintaining flexibility over the usage environment for the electric wire, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art.

In response, the applicant argued that the claimed property of having no peak within a certain temperature range of the change curve of loss modulus was not itself a result-effective variable known in the prior art. Instead, the applicant explained that this claimed property depended on at least five other variables: the amount of plasticizer, the amount of flexible resin, the melt flow rate of the flexible resin, the relative proportions of components, and temperature. The applicant argued that a skilled artisan would understand that “such a complex combination of material concentrations along with melt flow rates could not be summarily characterized as one ‘variable’ in the form of a simple graph of loss modulus v. temperature, that could be routinely manipulated.” Thus, the applicant argued that it would not have been obvious to achieve the claimed property from the applied prior art.

The Board agreed with the applicant, and reversed the obviousness rejection. The Board did not explain its reasoning regarding the examiner’s result-effective variable rationale, other than mentioning that it adopted the reasoning provided by the applicant. However, the Board emphasized that the amount of plasticizer in the claims (35 to 50 parts by weight with respect to 100 parts PVC) was higher than the upper limit in the applied prior art (30 parts by weight with respect to 100 parts PVC). The Board noted that the applied prior art taught away from using an amount of plasticizer higher than 30 parts by weight, since doing so could cause the covering material to have an insufficient damage-resistance property. The Board concluded that “the Examiner does not explain adequately how one skilled in the art would arrive at the claimed covering material from the [applied prior art].”

Takeaway: Whenever an examiner takes the position that a claimed property is a result-effective variable that would have been obvious to optimize, it is important to carefully evaluate the teachings of the prior art relating to the claimed property. If, as in Ex parte Horiuchi, the claimed property is distinguishable from variables in the prior art, then this distinction can help overcome an examiner’s obviousness rejection. If the claimed property is related to certain claimed variables (such as concentration of a component), but the claimed values of these variables do not overlap the corresponding values in the prior art, this approach can be particularly useful.

Judges: Smith, Cashion Jr., Inglese

In an anticipation rejection, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. However, “it is not enough that the prior art reference . . . includes multiple, distinct teachings that [an ordinary] artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Instead, the reference must “clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” Id. (quoting In re Arkley, 455 F.2d 586, 587 (C.C.P.A. 1972)). Although “[s]uch picking and choosing may be entirely proper in the making of a 103, obviousness rejection . . . it has no place in the making of a 102, anticipation rejection.” Arkley, 455 F.2d at 587-88.

This issue is illustrated in the recent Patent Trial and Appeal Board (“Board”) case of Ex parte Eckhardt.

Independent claim 16 recited a multilayer pressure-sensitive adhesive assembly comprising a propylheptyl acrylate adhesive copolymer layer and a second acrylate pressure-sensitive adhesive foam layer. The propylheptyl acrylate adhesive copolymer layer comprised (a) 50 to 99.5 weight percent of 2-propylheptyl acrylate as a first monomer, (b) 1.0 to 50 weight percent of a second non-polar monomer, (c) 0.1 to 15 weight percent of a third polar acrylate monomer, and (d) a tackifying resin in an amount of 3 to 100 parts per 100 parts of the copolymer. Independent claims 37 and 38 recited similar multilayer pressure-sensitive assemblies, but with somewhat different components (d), and different scope of components (a), (b) and (c).

The examiner rejected independent claims 16, 37 and 38 as anticipated by a single reference, Bartholomew. In response, the applicant argued that “[t]he cited reference provides a great multiplicity of possible combinations and no direction that would lead one of skill in the art to the claimed invention.” For component (a), the applicant explained that Bartholomew listed “2-propylheptyl acrylate as one of 10 options.” For the specific components (b) and (c) recited in claims 37 and 38, the applicant explained that component (b) was one of eight options listed in Bartholomew, and component (c) was one of ten listed options. For component (d), Bartholomew described a tackifying resin as optional. Based on this, the applicant argued that “the number of possible combinations presented by these passages in Bartholomew is 10 x 8 x 10 x 2 = 1600.” The applicant argued against anticipation because “one of ordinary skill in the art would be required to pick items from at least 1600 types of polymer to arrive at the claimed invention.”

The Board agreed with the applicant, finding that the anticipation rejections “rely upon picking and choosing from various lists in Bartholomew,” and that “[a] preponderance of the evidence supports Appellant’s position that Bartholomew’s disclosure is insufficient to establish anticipation of the compositional components of independent claims 16, 37, and 38.”

Additionally, the Board noted that although the ranges of amounts of components (a), (b) and (c) in Bartholomew overlapped the claimed ranges, “the Examiner has not adequately explained how Bartholomew anticipates the claims” in view of Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985).

Accordingly, the Board reversed the anticipation rejections. However, the Board entered a new ground of rejection, finding the claims obvious over Bartholomew. Specifically, the Board found that the selection of the claimed components, in the claimed amounts, would have been obvious from Bartholomew. The Board was not persuaded by the applicant’s argument of unexpected results, particularly with respect to a showing of criticality and whether the unexpected results were commensurate in scope with the claims.

Takeaway: When an examiner rejects a claim as anticipated based on several selections from lists disclosed in a prior art reference, a strong case can be made against anticipation. After overcoming the anticipation rejection, however, the question of obviousness usually remains. To rebut the case of obviousness, strong evidence of unexpected results often is necessary.

Judges: Gaudette, Hastings, Ren

Chemical compounds in patent claims often include variables representing different possible substituent groups. For example, a chemical formula may include a variable R¹ representing a hydrogen atom or an alkyl group, a variable R² representing an alkenyl group, and a variable X representing a halogen atom. This notation allows for a compact representation of many different specific compounds (species) within a generic formula (genus).

When evaluating a genus of chemical compounds for obviousness, U.S. examiners often find a disclosed genus of chemical compounds sharing species with the claimed genus. The question then is whether the disclosed genus of chemical compounds is sufficient to render obvious the claimed genus of compounds. This issue is illustrated in the recent Patent Trial and Appeal Board (“Board”) case of Ex parte Alig.

Independent claim 1 recited a method for controlling animal pests with an N-arylamidine substituted trifluoroethyl sulfoxide derivative of formula (I):

where:

n represents the number 1,

X represents fluorine, chlorine, bromine, or iodine,

Y represents (C₁-C₄)-alkyl or (C₁-C₄)-haloalkyl,

R² represents hydrogen, (C₁-C₄)-alkyl or (C₁-C₄)-haloalkyl, and

R¹ and R³ together with the atoms to which they are attached represent the group

where the arrow points to the remainder of the molecule.

The examiner rejected claim 1 on the ground of non-statutory obviousness-type double patenting over claims 1-20 of U.S. Patent No. 9,642,363 (“the ‘363 patent”) in view of WO 2007/131680. As articulated by the Board, “[t]he Examiner’s position, essentially, [was] that the pending claims would have been obvious over the reference claims because the reference claims disclose a genus of compounds that encompasses the compounds recited in the pending claims.”

The applicant explained that to arrive at the compounds in the pending claims, a person of ordinary skill in the art would need to make several specific choices to narrow the genus recited in the reference claims. For example, the person would need to choose the specific ring structure formed by R¹ and R³ in pending claim 1 from among 14 ring systems recited in claim 1 of the ‘363 patent and 16 groups recited in claim 8 of the ‘363 patent. Additionally, the person would need to choose fluorine, chlorine, bromine, or iodine for the variable X in pending claim 1, from among 41 substituents (many of which could contain further substitutions) in the claims of the ‘363 patent. The person also would need to choose (C₁-C₄)-alkyl or (C₁-C₄)-haloalkyl for the variable Y in pending claim 1, from among 41 substituents (many of which could contain further substitutions) in the claims of the ‘363 patent. The applicant argued that pending claim 1 was not obvious because the “claims of the ‘363 patent provide no teaching whatsoever that would suggest the specific choices that would lead to the claimed compounds.”

The Board agreed with the applicant. The Board explained that “[t]he fact that the pending claims recite compounds encompassed within the genus disclosed in the prior art is not, by itself, sufficient to establish a prima facie case of obviousness” (citing In re Baird, 16 F.3d 380 (Fed. Cir. 1994) and In re Jones, 958 F.2d 347 (Fed. Cir. 1992)). The Board noted that “[i]n both Baird and Jones, our reviewing court reversed rejections similar to the present rejection, in which the rejected compounds were encompassed by large genera that included millions of compounds, but the prior art did not suggest selecting from those genera the particular compound, or subgenus of compounds, recited in the claims at issue.”

The Board found that the examiner did not “provid[e] a sufficient evidentiary basis explaining why, out of the enormous number of possibilities encompassed within the genus described in the ‘363 patent, a skilled artisan would have made the particular set of selections and modifications that would be required to arrive at the compounds recited in the pending claims.” The Board concluded that “[t]he mere fact that one might arrive at Appellant’s claimed compounds by a hindsight-guided selection of appropriate substituents from the large genus disclosed in the reference claims does not persuade us that the pending claims would have been obvious to a skilled artisan.” Thus, the Board reversed the double patenting rejection.

Takeaway: When claims recite a sub-genus of chemical compounds, and the examiner rejects the claims as obvious over a broader genus of compounds, it is important to analyze the selections necessary to arrive at the sub-genus. If the applied references do not provide guidance for making such selections, then a strong argument can be made against obviousness.

Judges: Fredman, Cotta, Hardman

Section 101 broadly recognizes patent eligibility for “any new and useful process, machine, manufacture, or composition of matter.” However, the U.S. Supreme Court has identified exceptions to patent eligibility, including laws of nature, natural phenomena, and abstract ideas.

The Supreme Court has articulated a two-step framework for evaluating patent eligibility, based on the Alice (573 U.S. 208 (2014)) and Mayo (566 U.S. 66 (2012)) cases. Step 1 asks whether the claim relates to at least one of the statutory categories (process, machine, manufacture, or composition of matter). If the answer is yes, then step 2A asks whether the claim is directed to a judicial exception (law of nature, natural phenomenon, or abstract idea). If the claim is directed to a judicial exception, then step 2B asks whether the claim recites additional elements that amount to significantly more than the judicial exception.

When a claim recites a mathematical formula, examiners sometimes take the position that the claim is directed to an abstract idea, i.e., the mathematical formula itself. It has long been held that mathematical formulas, by themselves, cannot be patented (see, e.g., Gottschalk v. Benson, 409 U.S. 63 (1972)). Instead, to be patent eligible under § 101, such a claim must integrate the mathematical formula into a practical application.

This issue is illustrated in the recent Patent Trial and Appeal Board (“Board”) case of Ex parte Okura.

Independent claim 3 recited (in part):

A method for liquid chromatography,

…the method comprising the steps of:

…calculating elution time “t_r^c” based on Equation (1), the elution time “t_r^c” being from a start of flow-in of the sample into the column to elution of a component “c” which is one of the components from the column;

(1)

selecting the column based on the calculated elution time “t_r^c”; and

conducting the liquid chromatography using the selected column…

The examiner rejected claim 3 under section 101. Since this claim related to a method, it satisfied step 1 of the Alice/Mayo framework. At step 2A, however, the examiner took the position that claim 3 was “directed to an abstract idea,” specifically “equations for calculating mobility” which were “not integrated into a practical application because the additional steps do not add a meaningful limitation to the method as they are insignificant extra-solution activity.”

In contrast, the applicant contended that claim 3 recited a method using “new equations to control the physical components of the liquid chromatography process.” In particular, the applicant contended that claim 3 was not directed to a mathematical formula, but an improved liquid chromatography method that used “more accurate estimates to control the physical parameters” of the process “to yield more accurate results.”

The Board agreed with the applicant. The Board acknowledged that claim 3 recited a mathematical formula, and thus recited an abstract idea. However, the Board found that the claim was “not ‘directed to’ an abstract idea because…the abstract idea is integrated into a practical application under Step 2A.” The Board found that “[t]he claimed process…requires generating an eluent by mixing two solvents, selecting the chromatography column based on the calculated elution time, and conducting the liquid chromatography.” The Board concluded that this “combination of steps…adds significantly more than the abstract idea the claims are alleged to be directed to so as to transform the abstract idea into an inventive concept.”

Additionally, the Board found that claim 3 “reflects a specific asserted improvement in technology, rooted in computer technology, over that which was available in the prior art. Accordingly, we find the Appellant’s arguments persuasive that the claimed subject matter is not directed to merely performing mathematical processes but to a technical improvement.” Thus, the Board reversed the rejection under section 101.

Takeaway: If an examiner rejects a claim under section 101 for reciting a mathematical formula, it is important to emphasize that the claim is not directed to the mathematical formula, but that the claim integrates the mathematical formula into a practical application. It also can be helpful to emphasize how using the mathematical formula leads to an improvement in the underlying technology. In this way, Ex parte Okura is reminiscent of Diamond v. Diehr, 450 U.S. 175 (1981), where a claim for curing synthetic rubber recited the Arrhenius equation to improve an otherwise conventional method, and was found to be eligible under section 101.

Judges: Hastings, Wilson, McManus

However, in such a rejection, it is important that the claimed variable matches the result-effective variable from the prior art. This issue is illustrated in the recent Patent Trial and Appeal Board (“Board”) case of Ex parte Amini (Appeal No. 2020-000285).

Claim 1 recited (in part):

An article comprising:

a MAX phase solid in the form of particles, the MAX phase solid having a formula M_n+1AX_n, where n=1-3, M is an early transition metal, A is an A-group element, and X includes at least one of carbon and nitrogen; and

a high temperature melting point metallic material through which the particles of the MAX phase solid are dispersed such that the particles are spaced apart and the metallic material surrounds the particles…wherein the high temperature melting point metallic material and the MAX phase solid together define a porosity of 50 vol% to 80 vol%.

The MAX phase solid particles could be, for example, Ti₂AlC or Ti₃SiC₂, and the high temperature melting point metallic material could be Ti, Zr, Y, Sc, Be, Co, Fe, Ni, or an alloy thereof. The inventors found that the composite material, formed from the MAX phase solid particles dispersed in the metallic material, was well suited for damping applications in high temperature environments, for example as a component of a gas turbine engine.

The examiner rejected claim 1 as obvious over a combination of two references. The examiner relied on the primary reference (“Barsoum”) for a composite material comprising MAX phase particles dispersed in a metallic material. The examiner acknowledged that Barsoum did not disclose a porosity of 50 vol% to 80 vol% as recited in claim 1, and relied on the secondary reference (“Sun”) for this limitation.

In particular, the examiner relied on a description in Sun of a MAX phase having a porosity of approximately 43 vol%. The examiner took the position that this value was close enough to the numerical range of 50 to 80 vol% recited in claim 1 to render this limitation obvious. Alternatively, the examiner took the position that Sun established the porosity to be a result-effective variable that would have been obvious to optimize to obtain the claimed range.

The Board disagreed with the examiner. The Board noted that Sun described the porosity only for the MAX phase solid. In contrast, claim 1 recited the porosity for the MAX phase solid together with the metallic material, i.e., the porosity of the composite material formed by dispersing the MAX phase solid particles in the metallic material. Based on this, the Board found that the numerical value of approximately 43 vol% for the porosity in Sun could not be directly compared to the range of 50 to 80 vol% in claim 1, because these porosities were different variables.

Since these porosities were different variables, the Board also disagreed with the examiner’s rationale relating to a result-effective variable. The Board noted that “[i]t is well established that optimization of a prior art range flows from the normal desire of scientists or artisans to improve upon what is already generally known. But it is equally well established that when the parameter optimized was not recognized to be a result-effective variable, optimization would not have been obvious.” The Board found that the examiner had “not identified evidence in the present record that the prior art recognized the need for the porosity of the composite (‘the high temperature melting point metallic material and the MAX phase solid together’) to be between 50 vol% to 80 vol% as required by independent claim 1.” The Board concluded that “[b]ecause the disclosed porosity of Sun is different than the claimed porosity, there is no basis to conclude that the claimed porosity is a result-effective variable.” Accordingly, the Board reversed the obviousness rejection.

Takeaway: Whenever an examiner takes the position that a claimed variable is a result-effective variable that would have been obvious to optimize, it is important to carefully evaluate the teachings of the prior art relating to the claimed variable. If, as in Ex parte Amini, the claimed variable is distinguishable from the variable in the prior art, then this distinction can help overcome an examiner’s obviousness rejection.

Judges: Smith, Dennett, Cashion Jr.

The Supreme Court has articulated a two-step framework for evaluating patent eligibility, based on the Alice (573 U.S. 208) and Mayo (566 U.S. 66) cases. Step 1 asks whether the claim relates to at least one of the statutory categories (process, machine, manufacture, or composition of matter). If the answer is yes, then step 2A asks whether the claim is directed to a judicial exception (law of nature, natural phenomenon, or abstract idea). If the claim is directed to a judicial exception, then step 2B asks whether the claim recites additional elements that amount to significantly more than the judicial exception.

The judicial exception of natural phenomena includes products of nature. For claims relating to products of nature, a key issue is whether the claimed product has markedly different characteristics from the naturally occurring product. If so, then the claimed product is patent eligible. If not, then the claimed product is not patent eligible.

This issue is illustrated in the recent Patent Trial and Appeal Board (“Board”) case of Ex parte Asolkar.

Independent claim 3 recited:

A composition comprising:

(a) a whole cell broth collected from Flavobacterium sp. H492 (NRRL Accession No. B-50584) agitated fermentation, and

(b) a carrier, diluent, surfactant or adjuvant;

wherein said composition has pesticidal or plant growth modulating activity.

The examiner rejected claim 3 under section 101. Since this claim related to a composition of matter, it satisfied step 1 of the Alice/Mayo framework. At step 2A, however, the examiner took the position that claim 3 was “directed to a natural product (i.e., a law of nature/a natural phenomenon).” At step 2B, the examiner took the position that the claim did “not include additional elements that are sufficient to amount to significantly more than the judicial exception.”

In particular, the examiner found that the claimed composition was “not markedly different from its naturally-occurring counterpart because there is no indication that the extract composition has any characteristics or properties that are different from the naturally-occurring counterpart.”

The applicant explained that the whole cell broth in claim 3 was produced by agitated fermentation. The applicant explained that this agitated fermentation led to the claimed property of “pesticidal or plant growth modulating activity,” and that this property was not exhibited under natural conditions.

To support this position, the applicant submitted a Rule 132 declaration. The declaration included data showing a difference in pesticidal properties depending on the culturing conditions of Flavobacterium. In particular, the data showed that bacteria grown under agitated fermentation conditions exhibited pesticidal activity, whereas bacteria grown under non-agitated fermentation conditions did not exhibit such activity. Based on this, the applicant argued that the claimed composition exhibited markedly different characteristics from the bacteria found in nature.

The Board agreed with the applicant. The Board found that the applicant “demonstrate[d] that the claimed composition exhibits phenotypic differences compared to what would be exhibited by a similar, natural composition, which are due to processing by agitated fermentation, as claimed.” The Board concluded that “the claimed composition possesses markedly different characteristics from any found in nature, in the form of phenotypic differences that have come about by the effort of the inventors, not independently as a natural phenomenon.” Accordingly, the Board reversed the rejection under section 101.

Takeaway: If an examiner takes the position that a claimed product does not have markedly different characteristics from a product of nature, and rejects the claim under section 101, it is critical for the applicant to provide evidence that the claimed product does have markedly different characteristics. Such evidence can be in the form of a technical explanation, preferably supported by experimental data.

Judges: Schneider, Flax, Townsend

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