Richard Treanor, Author at ElementIP Law

On February 13th of this year the Federal Circuit gave Applicants an early Valentine’s Day present in the form of a precedential opinion confirming the difficulty an Examiner faces in making an inherent anticipation rejection of a parameter claim: in US SYNTHETIC CORP. v. ITC (Appeal Number: 23-1217) the Federal Circuit, after reversing an almost comical misapplication of the Alice 101 analysis to a man-made diamond array bonded to a substrate, found that a claim describing a polycrystalline diamond compact (PDC) by its coercivity, permeability, and catalyst arrangement characteristics (i.e., by its “parameters”) was fully enabled by the specification.

In reversing the ITC’s 101 ineligibility decision (which had recognized that the claims “do recite compositions of matter that are not found in nature”) and finding that claimed polycrystalline diamond compact was “not an abstract result of generic computer functionality, but instead is a physical composition of matter defined by its constituent elements, dimensional information, and inherent material properties” (really) the Court explained that the claimed “inherent material properties” of coercivity, permeability, etc., were not functional or abstract, but rather were concrete and meaningful and “integrally and necessarily intertwined with” the microstructure of the diamond table.

This discussion of the inherent properties of the claimed diamond compact and their relation to its overall structure led the Court into its consideration of the patent challenger’s alternative argument for invalidity – that the claims were not enabled – and it is here that the Court provided its gift. It agreed with the ITC’s finding that “the Asserted Patents disclose ‘detailed manufacturing information’ and ‘working examples in Table I with a specific set of input conditions’ such that a [skilled artisan] ‘would know how the manufacturing information disclosed in the Asserted Patents can be used to achieve the claimed PDCs.’”

This finding of enablement by the Federal Circuit for parameter claims based on the examples in the specification, and the recent spate of decisions overturning inherent anticipation rejections of parameter claims in the face of arguments that the applied reference might not make a product with the claimed parameters (see, e.g., Ex Parte Harry (Appeal 2022-003109), Ex parte Castelberg (Appeal 2023-003393), Ex parte Fotheringham (Appeal 2023-001631)), is confirmation of the difficulty the Examiner currently faces in making such rejections. As we have been telling our clients for a while, there has never been a better time than now to file parameter claims.

In the recent decision Laboratory Corporation of America Holdings v. Ravgen, Inc., No. 2023-1342, 2023-1345 (Fed. Cir. Jan. 6, 2025) the Federal Circuit addressed an issue that commonly arises when challenging an Examiner’s determination of obviousness: is there sufficient motivation to combine the references? 

In Ravgen the Board found themselves having to deal with references that were “neither fish nor fowl” in terms of their motivating factors; that is, references lacking clear, easily identifiable and direct statements that either encourage or discourage their combination. In affirming the Board, the Federal Circuit found that the Board had properly weighed the evidence both for and against motivation to combine and correctly found that patentee’s reasoning and evidence against combinability outweighed petitioner’s arguments in favor of combinability.

Critical to this finding was the court’s approval of the Board’s determination, made in view of the noted absence of clearly motivating statements in the references, that “the literature would have dissuaded a [person of ordinary skill in the art] from using formaldehyde or paraformaldehyde in the [Chiu] modified method.” In supporting this decision the Federal Circuit cited Arctic Cat Inc. v. Bombardier Recreational Products Inc., 876 F.3d 1350 (Fed. Cir. 2017) and noted that “[e]ven if evidence does not ‘rise to the level of teaching away,’ it is still proper for the Board to consider evidence that “suggests reasons that a skilled artisan would be discouraged from pursuing such a combination.”

Both Ravgen and Arctic Cat remind us that, in attacking an Examiner’s combination of references, the “gold standard” of a clear teaching away in one or more of the references is not always necessary, and anything in a reference that discourages its combination with another can be used to attack the Examiner’s motivation to combine.

“If you give me six lines written by the hand of the most honest of men, I will find something in them which will hang him.”

― Cardinal Richelieu (1585-1642)

On April 29, 2024, the Patent Trial and Appeal Board in Ex parte Wang (Appeal 2023-003255) affirmed an examiner’s single reference obviousness rejection of a claim to a process for stabilizing a protein against thermal inactivation:

A process for stabilizing a protein against thermal inactivation, comprising: binding a protein to the surface of a solid substrate; the protein bound to the surface by a linker moiety between an active group of the protein and said substrate, wherein the linker comprises a bond formed from one or more active groups selected from the group consisting of alcohol, thiol, carboxylic acid, anhydride, epoxy, and ester, and wherein said bond of the protein to the solid substrate stabilizes the protein against thermal inactivation.

This claim was finally rejected over Minier, characterized by the Examiner as disclosing a protein bound to a solid surface via “an alcohol linker active group bound to [a] metal substrate through a glutaraldehyde active group,” and thereby being inherently stabilized against thermal inactivation.

Appellants made two arguments. First, Appellants argued that surface bonding through a glutaraldehyde group was not included in or suggestive of the requirements of Claim 1. Second, they challenged the inherency finding.

With regard to the first argument, Appellants, in their Pre-Appeal Brief filed in direct response to the final rejection, characterized Claim 1 as reciting “[a] protein bound to the surface [of a solid substrate] by a linker moiety between an active group of the protein and said substrate, wherein the linker comprises a bond formed from [an] alcohol, thiol, carboxylic acid, anhydride, epoxy, and ester.” Then, in their Appeal Brief, Appellants characterized Claim 1 as reciting “[a] process for stabilizing a protein against thermal inactivation comprising binding a protein to the surface of a substrate; … by a linker moiety …. formed from one or more active groups selected from the group consisting of alcohol, thiol, carboxylic acid, anhydride, epoxy, and ester.” In both instances, Appellant argued that the reference’s use of a glutaraldehyde active group failed to disclose bonding a protein to a surface using one of their claimed linker moiety’s active groups. As for their second argument – inherent stabilization – Appellants argued that the reference nowhere discussed or recognized any thermal stabilization of the bound protein.

The Board was having none of it. Characterizing both issues as ones that “resolve based on a proper interpretation of claim 1” the Board walked Appellants through their surface/linker/active group claim language, demonstrating that in Claim 1 the linker’s active group need not be directly bound to the surface in the claim, just located “between” the protein and the surface. And with regard to thermal stability, the Board pointed to Appellants’ specification, which described thermal stability as a property necessarily flowing from the bond. Rejection Affirmed.

What went wrong? Well, Appellant was apprised of the Office’s interpretation of their claim language after the first rejection. Rather than discuss the case with the Examiner and come to agreement as to how to distinguish their clearly different invention from the applied art they barreled ahead with the same claim language, insisting that the Office see things their way. And when the Office didn’t, rather than seek reconsideration from the Examiner, Appellant filed a multi-issue Pre-Appeal Brief that simply upheld the rejection and provided no useful feedback. Full Appeal (with Oral Hearing) followed, after which the Board provided Appellant with the same answer the Examiner had given them two and a half years earlier: your invention is different, but your claims encompass the prior art.

The moral of the story? Differences aren’t important unless they are reflected in the claims. Listen to what the Examiner is saying – they look at the claims differently than you do. Sometimes, they are right. Oftentimes, simple amendments can address the issue, as here.

On April 17, 2024, the Patent Trial and Appeal Board in Ex parte Sanada (Appeal 2023-002165) affirmed an examiner’s single-reference obviousness rejection of a claim to a magnetic material comprising magnetic particles and an intercalated phase and requiring an angle of orientation between the magnetic particles and the plane of the material to be 10° or less.

In attacking the prima facie case, Appellant argued that the applied reference did not suggest the claimed combination of particularities concerning each of the magnetic particles, the intercalated phase, and the angle of orientation, and urged that the data in the specification demonstrated “unexpectedly favorable strength and magnetic properties for their inventive Examples in contrast to Comparative Examples.”

Appellant’s first argument was dismissed by the Board in view of the reference’s disclosure of overlapping ranges for each limitation, citing In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003) (“A prima facie case of obviousness arises when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”). In dismissing the second argument – that data in the specification demonstrated unexpected results – the Board reviewed the specification and found it lacking:

Here, Appellant’s unexpected results are not supported by factual evidence. The Specification’s description of Figures 11–13 and Tables 1 and 2 does not describe the inventive Examples as demonstrating results that are unexpected. For instance, paragraphs 110–112 of the Specification do not describe the results shown in Figures 11–13 as unexpected and paragraph 166 merely states that results provided in Table 2 are “excellent” and “remarkable effects are obtained.” Therefore, Appellant’s assertions that the results are unexpected are supported only by attorney argument and conclusory statements in the Specification, which are insufficient.

and in a final blow noted that Appellant had not addressed whether the asserted unexpected results provided a comparison with the closest prior art. Rejection affirmed.

What could Appellant have done differently? They could have filed a Declaration supporting their contentions and providing the (apparently available) data in the form of evidence sufficient to overcome the rejection. As noted in In re Soni, 54 F.3d 746 (Fed. Cir.1995), cited by the Board in this appeal, “when an applicant demonstrates substantially improved results, as Soni did here, and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary (emphasis in original).” Because it is unusual for a patent specification to describe data as unexpected, the filing of a Declaration providing this statement and explaining the importance of the results can oftentimes mean the difference between allowance and rejection.

Recently we reviewed the USPTO’s published Examiner guidance concerning “the flexible approach to determining obviousness that is required by KSR Int’l Co. v. Teleflex Inc. (KSR)” in which the Office instructed Examiners to avoid any type of formalistic or formulaic approach when providing a reason to modify the prior art in favor of relying on any possible source that “may, either implicitly or explicitly, provide reasons to combine or modify the prior art to determine that a claimed invention would have been obvious.” Unfortunately for applicants, this advice seems to have accurately captured the current sensibility of the Federal Circuit which, in Janssen Pharms., Inc. v. Teva Pharms. USA, Inc., No. 2022-1258 (Fed. Cir. Apr. 1, 2024), recently openly admonished a District Court for using a “degree of rigidity” in its obviousness analysis that was foreclosed by KSR and, perhaps most devastatingly, for “ask[ing] the wrong questions about important aspects of the obviousness inquiry.”

In particular, and among the district court’s several identified errors, the Federal Circuit in Janssen found that the district court analyzed the prior art without giving the needed weight to the perspective of a person of ordinary skill in the art (POSA) who is “capable of deducing what references fairly suggest or employing ordinary creativity.” And instead of considering the prior art in context or in combination, the Federal Circuit criticized the district court’s consideration of each reference one-by-one, “identifying each difference or dissimilarity between an individual reference and the claims, but not fully assessing the teachings in toto” thereby yielding a “siloed and inflexible approach” that left insufficient room for consideration of how background knowledge in the art would have impacted a POSA’s understanding of, or motivation to modify, the primary references at issue.” This approach, in the view of the Federal Circuit, inflated the significance of “minor variations between the prior art and the claims,” leading to the district court’s erroneous conclusion of nonobviousness.

Given the general decorum typically surrounding court opinions, this level of direct and unfettered criticism can mean only one thing – that at least for the foreseeable future the USPTO guidelines got it right insofar as the Federal Circuit is concerned. As the Federal Circuit, citing KSR, emphasized in this case, “[a]ssessing obviousness is based on an ‘expansive and flexible approach’ that ‘need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ’.” Applicant beware.

On February 27, 2024, the USPTO published “updated guidance to provide a review of the flexible approach to determining obviousness that is required by KSR Int’l Co. v. Teleflex Inc. (KSR).” While these guidelines are “a matter of internal Office management” and do not constitute new rules or new law, going forward they can be expected to significantly influence how Examiners determine obviousness on a day-to-day basis.

Although the stated purpose of the guidelines refers to the 2007 KSR case, the updated guidance first emphasizes that the factual inquiries set forth in the much earlier Supreme Court decision in Graham v. John Deere (1966) continue to control the obviousness determination within the Office: the scope and content of the prior art; the differences between the prior art and the claims at issue; and the level of ordinary skill. Against this background, the obviousness or nonobviousness of the subject matter is determined in light of any so-called secondary considerations such as unexpected results, commercial success, long felt but unsolved needs, failure of others, etc. It is upon this established “Graham framework” that the Office then addresses the ways in which KSR and its Federal Circuit progeny influence this framework.

Here, the guidelines make it very clear that the Office views KSR and its progeny as mandating flexibility in the determination of obviousness, in two respects: “first with regard to the proper understanding of the scope of the prior art, and second with regard to appropriate reasons to modify the prior art.” As concerns the proper (i.e., flexible) understanding of the prior art, the guidelines emphasize that a person of ordinary skill is “a person of ordinary creativity, not an automaton” who has “common sense, which may be used to glean suggestions from the prior art that go beyond the primary purpose for which that prior art was produced” and to make “reasonable inferences” and “be able to fit the teachings of multiple patents together like pieces of a puzzle.” With regard to a flexible approach in providing a reason to modify the prior art the guidelines disavow any type of formalistic or formulaic approach, such as the teaching, suggestion, and motivation (TSM) test, in favor of any possible source that “may, either implicitly or explicitly, provide reasons to combine or modify the prior art to determine that a claimed invention would have been obvious” including market forces, design incentives, the interrelated teachings of multiple patents, any need or problem known in the field of endeavor at the time of invention and addressed by the patent, and the background knowledge, creativity, and common sense of the person of ordinary skill.

Finally, and in summing up, the guidelines note the requirement that the Examiner provide a “clear articulation of the reason(s) why the claimed invention would have been obvious,” warning that “common sense—whether to supply a motivation to combine or a missing limitation—cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references” and emphasizing that all relevant evidence, including objective indicia of nonobviousness, must be considered in making the obviousness determination.

On balance, these guidelines do not substantially change what we currently see from Examiners in the chemical arts, so why publish them now? Are we about to see an even more “flexible” approach to obviousness? We think (hope) not. Instead, we believe that these guidelines have been published to make the determination of obviousness more consistent throughout the various technical areas of the Office, including the mechanical and electrical arts where, in our limited experience, the amendments and rebuttal arguments necessary to overcome obviousness rejections are perhaps not as significant, or as convincing, as those necessary for success in the chemical arts.

In May of 2023 the U.S. Supreme Court in Amgen v. Sanofi unanimously found that claims drawn to any antibody that could 1) bind to at least two specified residues of a certain protein and 2) block the binding of the protein to a certain receptor by at least 80% were invalid for lack of enablement. In doing so, the court found patentee’s 26 specific examples and two disclosed methods for finding other examples insufficient to enable “an entire class of things defined by their function.” In Amgen the Supreme Court made it clear that claiming everything – an entire class – by only its function is not allowed unless the specification also discloses “some general quality . . . running through” the class that gives it “a peculiar fitness for the particular purpose.” The court also made it clear that only when this “general quality” is present may the specification then call for a reasonable amount of experimentation to make and use a patented invention.

The U.S. Patent and Trademark Office (USPTO) has recently issued Guidelines for assessing enablement in view of Amgen, setting forth the USPTO’s position. These Guidelines make it clear that the USPTO understands that the ruling in Amgen:

1) applies to all technologies and all types of claims, and

2) confirms that USPTO personnel should continue to use the several “factors” established in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) when assessing enablement – i.e., when assessing whether only a “reasonable” amount of experimentation (Amgen, Supreme Court) or “undue amount” of experimentation (Wands, Federal Circuit) would be required to practice the full scope of the claims.

As a reminder, the Wands factors include, but are not limited to: (A) the breadth of the claims, (B) the nature of the invention, (C) the state of the prior art, (D) the level of one of ordinary skill, (E) the level of predictability in the art, (F) the amount of direction provided by the inventor, (G) the existence of working examples, and (H) the quantity of experimentation needed to make and use the invention based on the content of the disclosure.

In one sense, the USPTO has essentially said, regarding Amgen, that “there is nothing to see here.” On the other hand, however, Amgen can be seen as effectively putting an end to functional claiming in the absence of what will likely be claim-narrowing specification disclosure of “some general quality . . . running through” the functionally claimed class that gives it its “peculiar fitness for the particular purpose.” Thus, Amgen can be viewed as a “reigning in” of a claiming strategy typically used in the early and quickly developing stages of a new technology, when prior art is often unavailable to provide a moderating effect on claim scope.

Recently, the U.S. Supreme Court in Amgen Inc. v. Sanofi, 598 U.S. ___ (May 18, 2023) spoke with one voice in finding claims drawn to any antibody that could do two things – 1.) bind to at least two specified residues of the protein PCSK9 and 2.) block the binding of PCSK9 to the low density lipoprotein receptor gene by at least 80% – invalid for lack of enablement. In doing so, the court found patentee’s 26 specific examples and two disclosed methods for finding other examples insufficient to enable “an entire class of things defined by their function.”

In its analysis the court first reviewed several famous historical U.S. patent cases including the telegraph invented by Morse and the lightbulb invented by Edison that in their view established the concept that claiming everything – an entire class – that provides a certain function is not allowed unless the specification “also discloses ‘some general quality . . . running through’ the class that gives it ‘a peculiar fitness for the particular purpose.’” Only when this general quality is present, the “specification may [then] call for a reasonable amount of experimentation to make and use a patented invention. What is reasonable in any case will depend on the nature of the invention and the underlying art.”

In reviewing Amgen’s specification the Court found that it failed to identify the required “general quality . . . running through” the claimed class of antibodies that provided their “peculiar fitness” for their claimed functions, and found Amgen’s “roadmap” and “conservative substitution” methods to be “little more than two research assignments” amounting to random trial-and-error. For these reasons, the Court found the Amgen claims to be invalid as not enabled.

The Amgen case thus provides us with good guidance for enabling broad claims generally, and especially broad, functional claims – the importance of describing a “general quality” applicable to the claimed class that gives it a “peculiar fitness” for the claimed purpose.

Only time will tell, but how this case will be applied to traditional chemical cases will be interesting to watch. Will a well-defined chemical “core” be sufficient for a Markush group potentially including 500,000 members? Maybe, with the answer probably depending at least in part on how much “detailed” core there is, and its distinctiveness. Clearly, cores described as “A-B-C” with definitions and sub-definitions for each will face an uphill battle, and probably represent one end of the chemical spectrum (the difficult end) whereas a sterol core, even with several substituents, and many choices of substituents, probably represents the other end.

In the 1960s the Federal Circuit’s predecessor court, the Court of Customs and Patent Appeals (CCPA), established a “flavor” of anticipation that did not require an example – when a reference was so limited and specific in its disclosure that one of ordinary skill in the art was able to “at once envisage” the specific compound, method, etc., claimed, that claim was anticipated by the reference. On December 20, 2022, the Patent Trial and Appeal Board (PTAB) in Ex parte Mizushima (Appeal 2022-003863) extended this theory of anticipation to a secondary, academic use of an “envisioned” composition.

In Mizushima the claim was directed to a powdered coloring material comprising at least one pigment selected from three protein-based pigment candidates in combination with at least one of three chelating agents. The prior art cited described an academic study of the influence of temperature, pH, and preservatives on one of the claimed pigment candidates, all conducted in solution. Eight preservatives were used, one of which was a claimed chelating agent (citric acid), used in solution in a claimed weight ratio. In addition to the solution studies, the paper provided a microstructure analysis on dried solutions of the pigment with two of the preservatives – sugar, described as being known for stabilizing proteins, and salt.

In affirming the examiner’s rejection, the Board acknowledged that the reference failed to make a solid composition comprising the pigment and citric acid in the claimed amounts, but took the position that one of ordinary skill “would have readily recognized or inferred” such a solid composition as emanating from the described solution using citric acid given the description of dried solutions using sugar and salt.

Ex parte Mizushima thus extends traditional “Petering” anticipation, which typically arises when an examiner chooses a combination of ingredients from a limited list to provide a claimed composition, to include different physical forms of ingredient combinations described in a reference for the purpose of academic study. That is, in a typical “Petering” situation the examiner constructs the anticipatory composition for the same reason the inventors did – to cure a disease, to treat a surface, to add to gasoline, etc. Here, the only reason the authors dried two of their solutions was academic curiosity – to see how two of their preservatives coated the pigment. Would the Federal Circuit agree with the Board that academic curiosity is sufficient motivation for one of ordinary skill to “at once envisage” a new form of a described material?

Judges: Hastings, Colaianni, Kennedy

On June 21, 2022, the Federal Circuit decided Novartis Pharm. Corp. v. Accord Healthcare, Inc., No. 2021-1070 (Fed. Cir. June 21, 2022) finding that a negative limitation added during the course of prosecution was not supported by the original specification.

The claims in this case were originally directed to a method for treating multiple sclerosis by administering a certain “daily dosage” of the drug fingolimod to a patient. Importantly, a “daily dosage” was well known in the art to be different from a “loading dose,” which is a more concentrated dose typically given only once – at the initiation of treatment, and prior to the administration of daily dosages. During prosecution, a preliminary amendment was submitted in which the claims were amended to exclude the use of a loading dose. No support was cited for this amendment.

On rehearing, the Federal Circuit found that this negative limitation lacked written description support in the original specification, noting that the specification was completely silent regarding loading doses. The fact that the (prophetic) example did not use a loading dose was not helpful, according to the court, because it had not been shown that “a skilled artisan would understand the specification as inherently disclosing the negative limitation” for example by establishing “that in a particular field, the absence of mention of a limitation necessarily excluded that limitation.” Otherwise, the court noted, “[i]f silence were generally sufficient, all negative limitations would be supported by a silent specification.”

In Novartis, although the Federal Circuit reversed its prior decision and found the disputed limitation unsupported, the court mentioned all the usual forms of support for negative limitations (stated disadvantages; listed alternatives; etc.) and acknowledged the possibility that silence could also form the basis of support. This is an important reminder for the practitioner trying to distinguish a claim from the prior art – not everything at your disposal is before your eyes: “[w]hile a written description’s silence about a negative claim limitation is a useful and important clue and may often be dispositive, it is possible that the written description requirement may be satisfied when a skilled artisan would understand the specification as inherently disclosing the negative limitation.” Discussion of how the PTAB recently handled a similar can be found on our blog.

Older Posts

Posts by Richard Treanor

The Beat(down) Goes On

Feeling Unmotivated?

When to Appeal?

Declaration Anybody?

Federal Circuit Emphasizes Flexible Approach to Obviousness Determination

The USPTO Revisits the Determination of Obviousness

Enablement Reconsidered: USPTO Guidance in view of Amgen v. Sanofi

Big Claims, Big Trouble

“Petering” Anticipation Extended to Different Physical Form

Negative Limitations Must be Supported by Positive or Inherent Disclosure

USPTO Withdraws Proposed Terminal Disclaimer Rule

USPTO Further Delays Non-DOCX Fee Until January 17, 2024