obviousness Archives - Page 7 of 9

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 Appeal No. 2020-001246 (PTAB Dec. 10, 2020) (non-precedential).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

Obviousness requires both a reason to modify or combine prior art to achieve a claimed invention and a reasonable expectation of success. Evidence showing there was no reasonable expectation of success would support a conclusion of nonobviousness. In Ex parte Hewes (Appeal 2019-006474), the Patent Trial and Appeal Board (“Board”) reversed the Examiner’s obviousness rejection because the Board found Appellant’s evidence showing no reasonable expectation of success was persuasive.

The claimed invention in Hewes, as recited in the illustrative claim 17, was directed to “a method for treating a BcrAbl positive leukemia in a subject that is resistant to imatinib.” Imatinib is a drug typically used to treat patients with chronic myelogenous leukemia (CML) because it blocks an abnormal protein called “the tyrosine kinase protein ‘BcrAbl’” that drives overproduction of abnormal white blood cells characteristic of leukemia. Some patients, however, develop resistance to imatinib “due to point mutations in the bcr/abl gene.” F317L is such a mutation. The claimed method at issue comprises “administering to the subject a therapeutically effective amount of [bosutinib], wherein the subject has a mutation in BcrAbl protein selected from F317L.”

The Examiner rejected claim 17 as obvious over Manley and over Boschelli ‘780 in view of Shah.

In the obviousness rejection over Manley, the Examiner admitted Manley did not disclose a single embodiment regarding administration of bosutinib to a patient suffering from imatinib resistant BcrAbl positive leukemia. However, the Examiner asserted a skilled artisan would have been motivated to practice the claimed method with reasonable expectation of success based on Manley’s teaching that bosutinib was one of a class of promising new inhibitor compounds for treating imatinib-resistant CML, that imatinib resistance was due to emergence of clones expressing mutant proteins, and that F317L was alleged to be among the “most frequently occurring mutants.”

Appellant contended that Manley did not suggest any promising new CML drug, including bosutinib, could treat imatinib-resistant CML associated with F317L and that F317L was actually a rare mutation. More importantly, Appellant argued for unpredictability in treatment of imatinib-resistant leukemia in patients with the F317L mutation, citing, in particular, the affidavit by Dr. Murray. The Murray affidavit testified that the F317L mutant was especially resistant to treatment even with second generation drugs like dasatinib and nilotinib, citing several references. The Murray affidavit explained that different patients, even with the same mutation, were known to display different clinical response upon treatment. Therefore, along with other documentary references, the Murray affidavit proved that imatinib resistance arising from mutations of the Bcr-Abl gene was poorly understood at the time of the invention. The Murray affidavit also testified that “clinical findings show F317L to be a[n] imatinib/dasatinib-resistant mutation” although preclinical models might have predicted drug potency against F317L mutants; and thus proved the preclinical models in this area were poor predictors of clinical efficacy and success.

Although the Board agreed with many of the Examiner’s readings of Manley, the Board agreed with Appellant that none of the second-generation drugs in Manley were disclosed as effectively treating imatinib-resistant CML associated with the F317L mutation. The Board found Appellant’s argument and supporting evidence that showed a lack of predictability in treating imatinib-resistant patients particularly with the F317L mutation were convincing. The Board noted that Appellant’s evidence, especially Dr. Murray’s testimony, “calls into significant doubt whether the ordinarily skilled person would have reasonably expected success with bosutinib when other second-generation, Bcr-Abl/Src inhibitors were known and shown to be ineffective in treating subjects with the F317L mutation.” The Board found that the Examiner provided no persuasive rebuttal in the face of Appellant’s argument and evidence.

In addressing the Examiner’s characterization of the Murray affidavit as “merely opinions” on the state of the art, the Board noted that the affidavit could not be summarily swept aside in this way because “Dr. Murray cites repeatedly to the scientific literature[, including Manley and Shah, which are the references asserted by the Examiner,] in support of his opinions, grounding those opinions in an adequate factual basis.” The Board found it was the Examiner who failed to “grapple persuasively with Dr. Murray’s opinions or the facts on which they are based.”

The Board thus concluded that even if the Examiner’s reasoning provided some motivation to treat patients with the F317L mutation with bosutinib, considering the totality of the evidence, the Examiner’s rejection failed “on the issue of reasonable expectation of success.” Accordingly, the Board reversed the Examiner’s obviousness rejection over Manley.

Regarding the obviousness rejection over Boschelli ‘780 in view of Shah, the Board found it was unsustainable for substantially the same reason.

Takeaway: As noted by the Board in Hewes, there are two different inquiries in an obviousness rejection – the motivation and the reasonable expectation, with the latter referring to the likelihood of success in modifying prior art to reach a claimed invention. A determination of obviousness is not proper if, upon consideration of all the evidence, the outcome would not have been reasonably predictable and there would not have been a reasonable expectation of success at the time of the invention. As illustrated by Hewes, such evidence could be in the form of an expert’s affidavit. To provide a probative expert’s affidavit, the expert should set up facts suggesting the unpredictability and corroborate her opinions with scientific literature preferably authored by other people skilled in the field.

Judges: D. E. Adams, E. B. Grimes, and T. G. Majors

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.

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.

While a judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, such a reconstruction is improper if it includes knowledge gleaned only from applicant’s disclosure. In Ex parte Shelton (Appeal 2020-001178), the Patent Trial and Appeal Board (“Board”) reversed the Examiner’s obviousness rejection because the Examiner improperly resorted to hindsight.

Claim 1 was illustrative and was drawn to a staple cartridge assembly for use with a surgical stapler. The claimed staple cartridge assembly contained a cartridge body, a biocompatible, bioabsorbable adjunct material, and “an effective amount of at least one medicant disposed within and releasable from the adjunct material, the at least one medicant including an activator material configured to be activated within the body of the patient by an activator located outside the body of the patient, the activation of the at least one medicant allowing monitoring of the adjunct material after its delivery to the tissue, the activator material being configured to be activated by a magnetic field induced by the activator.”

The Examiner rejected claim 1 as obvious over a staple cartridge assembly described in Schmid as modified by adding an activator material described in Dormer. The Examiner alleged it would have been obvious to a skilled artisan to “have provided Schmid’s [staple cartridge assembly] with the features as taught by Dormer in order to target deliver[y] of a medicament.”

Appellant countered in the Appeal Brief that there was no reason for the proposed modification and the Examiner’s rejection was based on improper hindsight. Specifically, Appellant contended Dormer’s magnetic targeted delivery was wholly unnecessary because “Schmid already provides targeted delivery of its medicament.”

In response, the Examiner acknowledged Schmid had “an activator, such as a fluid activator or an oxidizing agent, for a controlled release of the medicament” but alleged that Dormer was relied upon “to show the mode of activating a material, such as using a magnetic field.” The Examiner thus provided a second rationale for her proposed modification – it would have been obvious to “apply Dormer’s mode of activation, i.e.[, a] magnetic field, to Schmid’s adjunct material in order [to] control the release of the medicament.”

The Board noted that, in Dormer, the site of delivery was different from the site of treatment and Dormer used magnetically-susceptible nanoparticles to move medicants from the site of delivery to the site of treatment; while Schmid had its medicants already at the site of delivery and the site of treatment. Because Schmid already provided targeted delivery of its medicament, the Board sided with Appellant and did not find the Examiner’s first reason for her proposed modification persuasive.

The Board further noted Dormer’s magnetically-susceptible nanoparticles and the equipment necessary to generate a magnetic force to move or oscillate the nanoparticles to control the release of its medicant seemed more complex than Schmid’s use of an oxidizing agent to control the release of its medicant at the site of treatment. The Board found that the Examiner did not provide a reason why it would have been obvious to substitute Schmid’s simple mode of activation for Dormer’s more complex one. Therefore, the Board was also not persuaded by the Examiner’s second reason for her proposed modification.

Because the Examiner did not articulate a persuasive reason supported by rational underpinning for combining Schmid and Dormer, the Board concluded that “it is more likely than not that the Examiner improperly resorted to hindsight in reaching a conclusion of obviousness.”

The Board emphasized it was not proper to base a conclusion of obviousness upon facts gleaned only through hindsight, noting that to use an invention as a template for its own reconstruction when the prior art did not contain or suggest that knowledge was “an illogical and inappropriate process by which to determine patentability” and that “[t]he invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made.” Accordingly, the Board reversed the Examiner’s obviousness rejection.

Takeaway: Due to the very nature of the process of patent application examination, it is often difficult for examiners to avoid the tendency to resort to “hindsight” based upon applicant’s disclosure. However, such a reconstruction is proper only if it takes into account knowledge that was within the level of ordinary skill in the art at the time of the invention and does not include knowledge gleaned only from applicant’s disclosure. As illustrated by Shelton, when the examiner’s reason for a proposed modification lacks support in the prior art and appears to be only drawn from applicant’s own disclosure, the rejection could be rebutted on the ground of improper hindsight.

Judges: C. N. Greenhut, M. L. Hoelter, and A. R Reimers

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

Ex parte Jud, is a 2007 decision of the Board of Patent Appeals and Interferences (BPAI) that is listed among the Patent Trial and Appeal Board’s (PTAB) informative decisions. Ex parte Jud, is indicated by the PTAB to be informative as to “Obviousness – 35 U.S.C. § 103… Person of ordinary skill in the art…evidence considered.”

According to the PTAB’s Standard Operating Procedure, “[i]nformative decisions set forth Board norms that should be followed in most cases, absent justification, although an informative decision is not binding authority on the Board.”

In Ex parte Jud, the BPAI considered a request for rehearing based on applicant’s assertion that the BPAI, in its original decision, did not properly consider the requirement that a determination of the level of ordinary skill in the art must be made to sustain an obviousness rejection.

The BPAI first noted that both 35 USC 103 and the Supreme Court’s decision in Graham v. John Deere Co., 383 U.S. 1 (1966), require a skill-level determination to ensure objectivity in the analysis of obviousness. However, neither the statute nor Graham requires any particular format for the determination. The BPAI posited that this flexibility is intentional.

The BPAI stated that evidence of the level of ordinary skill can be found in applicant’s disclosure, prior art references, and additional testimony, if necessary. The BPAI noted that evidence of the level of ordinary skill in applicant’s own disclosure tends to be indirect and must not be confused with applicant’s own contribution over the prior art. According to the BPAI, prior art references should be given great weight – although prior art references also generally give indirect evidence of the level of ordinary skill, such references are reliable because generally they are prepared without regard for their use in the skill-level determination (in contrast with direct testimony on the level of ordinary skill).

The BPAI noted that direct testimony about the level of ordinary skill could be probative if well-grounded in facts. However, the BPAI cautioned that, during examination, an examiner has little chance to challenge testimony. Further, the BPAI noted that statements of the education/experience level of a skilled artisan and statements that the level ordinary skill is high or low are typically of little probative value.

In making her obviousness rejection in this case, the examiner stated what she believed a skilled artisan would understand based on the references forming the basis of the rejection, without explicitly stating what she believed to be the level of ordinary skill. The BPAI stated that this was sufficient to put applicant on notice of what the examiner thought one of skill in the art would have known and why. The BPAI stated that, procedurally, the examiner’s skill-level findings can be faulted – at most – for failing to be explicitly labeled as such.

The BPAI noted particularly that applicant did not propose alternative findings on the level of ordinary skill and did not explain why the examiner’s determination (even if indirect) resulted in an incorrect obviousness determination. The BPAI concluded that it would not undo the original panel decision in the absence of some indication that reconsideration of the determination of the level of ordinary skill would make a difference in the ultimate outcome.

Ex parte Jud was decided by an expanded seven-judge panel. According to the PTAB’s Standard Operating Procedure, “[a]n expanded panel is not favored and ordinarily will not be used… [a]n expanded panel may be used, where appropriate, to secure and maintain uniformity of the Board’s decisions….”

Takeaway: Determining the level of ordinary skill is a critical part of obviousness analysis, as is clear from the language of 35 USC 103 and the Supreme Court’s articulation of the Graham factors. However, a purely procedural attack on an examiner’s failure to explicitly state the level of ordinary skill is not likely to be fruitful. The Jud decision leaves a path for challenging obviousness rejections based on the level of ordinary skill: (i) applicant should use facts from her own disclosure and the prior art (and possibly expert testimony based on such facts) to correctly define the level of ordinary skill, and (ii) applicant should provide an explanation of why, if viewed properly, the prior art would not have rendered her invention obvious. If an examiner has truly failed to view prior art in the manner that a skilled artisan would, a challenge based on the level of ordinary skill could be productive.

Judges: Fleming, Torczon, Kratz, Timm, Smith, Moore, Linck

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)

A threshold issue for the Patent Trial and Appeal Board (“Board”) to resolve is often claim interpretation. It is well-settled that claims must be “given their broadest reasonable interpretation consistent with the specification” during patent examination. In Ex parte Awad (Appeal 2019-005866), the Board reversed the Examiner’s obviousness rejection because the Board found the rejection was based on an unreasonably broad claim interpretation when the relevant claim language was read in light of the specification.

Claim 1 was illustrative and was drawn to a flexible solar panel, which contained a polymer matrix and a plant extract completely incorporated in the polymer matrix and “being a green-colored extract of B. vulgaris subsp. cicla, wherein the extract includes chloroplasts.”

The Examiner rejected the claimed solar panel as obvious over Ochiai in view of Pavokovic and Yang. In particular, the Examiner found Ochiai taught a solar panel containing a PVA matrix and a plant extract completely incorporated in the polymer matrix wherein the extract included green-colored chloroplasts. The Examiner admitted Ochiai did not disclose that the plant extract was “a green-colored extract of B. vulgaris subsp. cicla.” However, the Examiner found Pavokovic taught that betalains, such as those from B. vulgaris subsp. cicla, were useful as “natural pigments” in solar cells and found Yang taught that incorporating chlorophyll-containing plant extracts in a PVA polymer matrix stabilized the extracts against light- and oxygen-induced damage.

In response to Appellant’s arguments that betalains described in Pavokovic were “classified in two groups: red-violet betacyanins and yellow betaxanthins” and that Pavokovic did not teach “the usage of a green, chloroplast-containing extract of B. vulgaris subsp. [cicla] in a [dye-sensitized solar cell],” the Examiner argued he did not rely on Pavokovic “for teaching the entirety of the claimed plant extract,” instead, he relied on Pavokovic “only to teach that betalain extracts of B. vulgaris subsp. cicla are useful as natural pigments in solar cells to convert radiant energy into electric energy.” The Examiner argued “Ochiai teaches a plant extract that is green and includes chloroplasts” and further argued “even if the betalains of B. vulgaris subsp. cicla are colors other than green, the final product created from the combination of the prior art references still contains a plant extract comprising the green-colored chlorophyll chloroplasts taught by Ochiai because these betalains are added to Ochiai’s plant-extract composition.”

Therefore, as noted by the Board, the Examiner interpreted the claim limitation of the plant extract “being a green-colored extract of B. vulgaris subsp. cicla, wherein the extract includes chloroplasts” to encompass any combination of plant extracts “as long as the final combination (a) is green-colored, (b) includes a B. vulgaris subsp. cicla extract, and (c) includes chloroplasts.”

The Board found such interpretation was broader than what was reasonable when the claim language was read in light of the specification. Specifically, the Board noted that the specification stated that the field of the invention related “particularly to a flexible solar panel including an extract of chard (B. vulgaris subsp. cicla)” and that at no point did the specification discuss extracts from any plant other than B. vulgaris subsp. cicla. The Board further found the specification specifically taught “a green colored extract of B. vulgaris subsp. cicla” and each of the working examples used an extract from B. vulgaris subsp. cicla, not from any other plant and not mixed with any other plant extract.

The Board thus concluded that, when the claim language was interpreted in light of the specification, the broadest reasonable interpretation of the claim limitation required “an extract from B. vulgaris subsp. cicla that itself is green-colored and also contains chloroplasts; i.e., the chloroplasts are derived from B. vulgaris subsp. cicla.” The Board further explained “‘being’ in the quoted limitation is construed to mean ‘consisting of’: the plant extract consists of a green-colored extract of B. vulgaris subsp. cicla, wherein the extract includes chloroplasts.” The Board explicitly pointed out that “[to] interpret the quoted limitation to encompass a mixture of plant extracts would be inconsistent with the specification’s disclosure.”

With the correct claim interpretation, the Board further found none of the cited references disclosed a green-colored extract from B. vulgaris subsp. cicla that included chloroplasts as required by the claim limitation. Because the Board did not find the Examiner had shown the plant extract as required by the claim would have been obvious over the cited references or that the prior art would have provided a reason to use such an extract in the claimed solar panel, the Board reversed the obviousness rejection.

Takeaway: U.S. examiners are required to give claims their broadest reasonable interpretation in light of the specification. However, in practice, they sometimes fail to consider whether their “broadest” interpretation of the claim language is “reasonable in light of the specification.” Therefore, it is advisable to scrutinize an Examiner’s claim interpretation especially when there is a complicated claim limitation that includes multiple sub-features. As illustrated by Awad, examiners sometimes fail to recognize that sub-features are related, instead treating them separately. This approach can lead to unreasonably broad interpretations.

Judges: E. B. Grimes, L. M. Gaudette, and L. Ren

Patent claims often recite structural limitations in combination with one or more properties. In the chemical arts, for example, a claim might recite a copolymer comprising certain monomer components, where the copolymer has certain rheological properties (e.g., melt flow rate, die swell).

In such cases, U.S. examiners often rely on the theory of inherency to fill gaps in the prior art. If the prior art describes the claimed structural limitations, but not the claimed properties, examiners often take the position that the claimed properties would be inherent in the structure of the prior art, even though the properties are not explicitly described in the prior art (see, e.g., here and here).

Alternatively, U.S. examiners sometimes take the position that the claimed properties would result from an obvious optimization of a different property in the prior art. This issue is illustrated in the recent Patent Trial and Appeal Board (“Board”) case of Ex parte Isaka.

Claim 1 recited (in part):

A tetrafluoroethylene/hexafluoropropylene copolymer having a melt flow rate measured at 372°C of 35.0 to 45.0 g/10 minutes and a die swell of -8.0% to 5.0%…

Claim 1 also recited a detailed method by which die swell was measured.

The examiner rejected claim 1 as obvious over a combination of two references. The primary reference (“Burch”) described a tetrafluoroethylene/hexafluoropropylene copolymer having a melt flow rate overlapping the claimed range. However, Burch was silent regarding the die swell of its copolymer.

The examiner relied on a second, evidentiary reference (“Krevelen”) for the property of die swell. The examiner found that Krevelen taught a correlation between the molecular weight of a polymer and its swelling properties. The examiner found that it would have been obvious to modify the molecular weight of the copolymer in Burch to optimize the melt flow properties of the copolymer. The examiner took the position that “[i]n modifying the melt flow properties…one would also be optimizing the die swell properties, as these properties are related through the polymer weight average molecular weight.” Thus, the examiner concluded that the die swell in claim 1 would result from an obvious optimization of melt flow properties in the prior art.

The Board disagreed with the examiner. Instead, the Board agreed with the applicant that “optimizing melt flow rate and molecular weight is not equivalent to optimizing die swell properties.”

In particular, the Board found that Krevelen taught that “die swell is modified by both molecular weight and molecular weight distribution.” The Board was not convinced that modifying the molecular weight by itself (i.e., without also accounting for the molecular weight distribution) would result in optimized die swell properties reading on claim 1.

The Board concluded that the examiner “did not sufficiently explain why a person of skill in the art would have had reason to adjust molecular weight distribution or why a person of skill in the art would otherwise have reason to adjust process variables in a manner that would reach claim 1’s recited die swell of -8.0% to 5.0%.” Accordingly, the Board reversed the obviousness rejection.

Takeaway: If an examiner takes the position that a claimed property would result from an obvious optimization of a different property in the prior art, it can be helpful to argue that optimizing the property in the prior art would not necessarily optimize the claimed property. As with arguments against inherency rejections, arguments in this situation are strengthened by technical explanations, optionally supported by experimental data.

Judges: Owens, Baumeister, Range

On November 9, 2020, the Patent Trial and Appeal Board issued a decision in Ex parte Tramontano et al. (Appeal 2020-002413) in which a misplaced claim interpretation/35 U.S.C. 112 argument distracted the Board from finding clear error in the Examiner’s obviousness rejection.

In Tramontano Claim 25, relating to the formation of a gel at a tissue treatment site, was the representative claim:

25. A process for forming a gel comprising:

forming an oxidized cellulose solution;

forming a precipitating composition; and

contacting the oxidized cellulose solution and the precipitating composition at a tissue treatment site thereby precipitating oxidized cellulose from the oxidized cellulose solution and forming the gel.

As explained in the Tramontano specification, the claimed gel may be used as an adhesive to seal tissue and/or to provide for the delivery of bioactive agents ([0274]).

During prosecution, the Examiner concluded that it would have been obvious to a person of ordinary skill in the art to substitute the cellulose ether used as the polymer in the cross-linked gels taught by Gehrke, with oxidized cellulose as taught by Blaskovich, at a tissue treatment site, as taught by Hubbard. In their Appeal Brief Appellants argued, among other things, that none of the cited references disclosed their claimed “precipitating composition” and, in response to a statement made by the Examiner in the Advisory Action (“it is not clear what the precipitation composition ….comprises”) argued to the Board that the lack of a 35 U.S.C. 112 rejection meant that the claim term “precipitation composition” was definite. Appellants further provided the Board with a legal framework for determining the meaning of a claim term, and argued that the references did not disclose the use of a “precipitating composition” as properly understood under their framework.

In affirming the rejection the Board first felt “obliged to make several initial points,” constituting over four full pages of their nine page analysis, the first of which was to correct Appellants’ legal framework for determining the meaning of a claim term, and the second of which was to apply the correct standard and find that the Blaskovich reference did indeed disclose the use of a “precipitating composition.” In coming to this conclusion and affirming the rejection, the Board characterized Appellants’ arguments regarding definiteness as “largely irrelevant” in view of the acknowledged fact that no 35 U.S.C. 112, second paragraph, rejection was at issue.

In Tramontano, the Board was clearly distracted (and perhaps irritated) by Appellants’ unnecessary arguments regarding definiteness to the point that Appellants’ other, stronger, arguments were ignored. In this regard, one of the applied references, Hubbard, was cited as teaching the delivery of oxidized cellulose, in gel form, to a tissue site. However, while Appellants argued that the combined references failed to suggest contacting an oxidized cellulose solution and a precipitating composition at a tissue treatment site, thereby forming the gel at the treatment site as claimed, this argument was not specifically addressed by the Board. Instead, the Board emphasized the presence of a “precipitating composition” and “oxidized cellulose solution” in the Gehrke and Blaskovich references.

Takeaways: The Tramontano case illustrates the importance of leading with the best arguments and focusing the Appeal Brief on issues of clear error in the rejections of record. In addition, the Tramontano case provides us with a reminder to review claims for the presence of unnecessary steps, such as the “forming” steps in Claim 25 above. Such unnecessary steps can provide infringers with the possible defense of “divided infringement” if third parties perform certain steps within a claimed method.

25. (Amended) A process for forming a gel comprising:

forming an oxidized cellulose solution;

forming a precipitating composition; and

contacting the an oxidized cellulose solution and the a precipitating composition at a tissue treatment site thereby precipitating oxidized cellulose from the oxidized cellulose solution and forming the gel.

Judges: Prats, Katz, New

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