PTAB Archives - Page 11 of 13

On September 15, 2020, the Patent Trial and Appeal Board (PTAB) issued a decision in Ex parte Lebovich reversing the Examiner’s rejection of claims directed to a packaged food assembly that allows the consumer to see the package contents from all angles while still permitting substantial labeling of the package. While the Board found that the Examiner’s rejection did present a prima facie case of obviousness, it further determined that Appellant’s objective evidence of nonobviousness was sufficient to rebut the Examiner’s prima facie case.

Perhaps the most interesting aspects of the Lebovich case are Appellant’s successful presentation of several types of secondary considerations not often encountered in typical prosecution (i.e., commercial success, industry praise and recognition, and solving a long-felt, unmet need), and their successful assertion that the development of brand loyalty beyond what is typical for a staple food, and particularly for meat, attributable to their food assembly qualified as an “unexpected result.”

Takeaway: This “out of the box” thinking in Lebovich serves to remind us of the essentially limitless contours of the unexpected results analysis, and should encourage us to consider all aspects of a claimed invention – how it is used, stored, transported, etc. – during prosecution in order to increase our level of advocacy.

Judges: J. Smith, G. Best, J. Snay

米国特許庁審判部は、特許適格性に関する2019年改訂版審査ガイダンス（2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)）に基づいて判断した審決 (Ex parte Hannun (Appeal 2019-003323)) を昨年(2019年)12月11日に、informativeに指定しています。

The term “comprising,” when used in the preamble of a claim, permits the inclusion of other elements or materials in addition to those specified in the claim. However, “‘comprising’ is not a weasel word with which to abrogate claim limitations.” Dippin’ Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed.Cir.2007).

Ex parte Martino involved a claim that required “[a] hand held olfactory tester comprising … a single odorant chamber.” Decision on Appeal, Appeal No. 2020-001003, at 2 (P.T.A.B. Sept. 11, 2020) (non-precedential).

In rejecting the claim, the Examiner only presented prior art having a tester with a plurality of chambers. Yet, the Examiner argued that the claim was obvious because “the plurality of containers shown [in the prior art] also include a single container.” Id. at 6. According to the Examiner, the claims needed to recite that the tester consists of only a single chamber because the term “comprising” allowed for additional, unrecited elements.

The Applicant disagreed, because the claim explicitly required a single chamber. The Board sided with the Applicant.

The Board noted that “[t]he presumption raised by the term ‘comprising’ does not reach into each of the [elements] to render every word and phrase therein open-ended,” and must be read in view of the specification. Id. at 4. The Board then applied a two-step analysis. First, the Board found that the ordinary and customary meaning of the term “single” is “one and only one.” Next, the Board confirmed that the specification was consistent with this meaning. Here, the Board highlighted, among other things, that the specification differentiated prior art testers having a number of odorant chambers, described a housing with “an odorant chamber,” and depicted a device with only one chamber. Consequently, the Board found that the term “comprising” in the preamble did not negate the meaning of “single” as understood by one in the art.

Without any prior art disclosing or otherwise suggesting a tester comprising a single chamber, the Board reversed the Examiner’s obviousness rejection.

Takeaway: The scenario in Martino is quite common because of the presumption to construe the term “comprising” to be nonexclusive and the tendency for some examiners to play wordsmith. Martino also shows that even when there is no ambiguity in the claim language, the Board may still consult the specification for consistency with the ordinary and customary meaning of a term like “single.” So, what other options are available if you want to claim a limited number (e.g., one) of an element but the specification permits a plurality? One option is to add a wherein clause that states, “wherein the [device, article, composition, etc.] comprises no more than one element.”

Judges: A. Fetting, U. Jenks, A. Shah

A prima facie obviousness rejection combining multiple disclosures requires a reason to modify or combine the prior art to achieve the claimed invention with a reasonable expectation of success. In Ex parte Liu (Appeal No. 2018-001645), the Patent Trial and Appeal Board (“Board”) reversed the Examiner’s obviousness rejections because the Board found teachings in the prior art references to be inconsistent such that there would not have been a reason to modify or combine the prior art in the manner as set forth in Appellant’s claims.

For a prior art reference to be properly used in an obviousness rejection, the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). MPEP 2141.01(a), citing Bigio.

Ex parte Hicks 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 Hicks is indicated by the PTAB to be informative as to “Specification and claim requirements – 35 U.S.C. § 112… Enablement… Indefiniteness… scope.”

When considering the obviousness of ranges, it is a fundamental principle of U.S. patent law that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). Consequently, modifications to readily optimized parameters such as temperatures and concentrations disclosed in the prior art will generally not be patentable under Section 103. Aller, 220 F.2d at 456. Furthermore, a presumption of obviousness exists when ranges disclosed in the prior art overlap with the ranges of a claimed invention. See, e.g., E.I. du Pont de Nemours & Company v. Synvina C.V., 904 F.3d 996, 1006 (Fed. Cir. 2018).

On July 14, 2020, the Patent Trial and Appeal Board issued a decision in Ex parte Park (Appeal 2019-006050) in which a rejection over an overlapping prior art genus was determined to be insufficient to establish a prima facie case of obviousness under both a lead compound analysis and an obvious equivalents/overlapping genus analysis. In addition, the Examiner’s initial rejection of subject matter beyond the elected specie was determined to be a withdrawal of the election requirement.

On August 19, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Boutillier (Appeal No. 2020-000348) reversing an Examiner’s obviousness rejection for failing to establish that the prior art inherently taught a claimed property.

The independent claim in Boutillier required a composition that included an elastomeric phase formed of a block copolymer, where the block copolymer had “a water solubility of less than 0.5 g/l.”

The prior art cited by the Examiner disclosed water soluble block copolymers that could be formed from the same monomers and in the same proportions recited in the Applicant’s dependent claims (e.g., acrylic and/or methacrylic monomers). Although the prior art did not disclose the water solubility of the block copolymer, the Examiner reasoned that “[the] instantly claimed water solubility can be made from the disclosure of [the prior art]” because the copolymer of the prior art “can include the same monomers as instantly claimed, within the same weight ranges as instantly claimed.”

The Applicant disagreed with the Examiner’s reasoning because the block copolymers of the prior art were characterized as being water soluble, and thus, would not be expected to have a water solubility less than 0.5 g/l.

The Board sided with the Applicant. The Board found that even though it was undisputed that the prior art taught block copolymers that could be prepared from the same monomers claimed by the Applicant, the prior art expressly taught its block copolymers were water soluble. The mere fact that it might be possible to prepare a block copolymer with a water solubility of less than 0.5 g/l with the monomers disclosed in the prior art was insufficient to establish the inherency of this feature.

The Board emphasized that the “very essence of inherency is that one of ordinary skill in the art would recognize that a reference unavoidably teaches the property in question.” Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009). And, in this case, the water solubility of less than 0.5 g/l was not “unavoidable or the natural result following [the prior art’s] teaching.”

Takeaway: Examiners often rely on the rationale that “if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” In re Spada 911 F.2d 705 (Fed. Cir. 1990). However, this rationale breaks down in two situations. The first is where there is a broader teaching in the prior art, as in this case, that suggests the property would not necessarily be present despite similarities in the chemical structures. The second is where there is a generic disclosure in the prior art that encompasses–but does not specifically teach–the identical structure claimed. In this situation, a presumption of inherency can be rebutted by showing that one or more species falling within the generic disclosure do not exhibit the claimed property.

Judges: E. Grimes, F. Prats, L. Ren

On July 31, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Marco (Appeal No. 2020-000873) reversing an Examiner’s rejection for failure to comply with the written description requirement.

The written description controversy in Marco centered on a requirement in claim 2 for a hat having an opposing pair of under-chin straps that were “at least about one inch in width.” According to the Applicant, the width of “at least about one inch” was supported by the original specification, particularly the embodiments illustrated Figures 5 and 7 (shown below):

Achieving “Brand Loyalty” Found to Be a Surprising Result

Achieving “Brand Loyalty” Found to Be a Surprising Result

2019 審査ガイダンスに基づいて特許適格性を判断した審決

Comprising is Not a Weasel Word

Inconsistent Teachings Weigh Against a Reason to Modify or Combine Prior Art References

PTAB Reverses Examiner Due to Non-Analogous Art

Enablement and Definiteness of Broad, Generic Chemical Formulae – Past “Informative” PTAB Decisions

Claimed Parameter is Not a “Result-Effective” Variable Unless the Prior Art Recognizes a Clear Nexus Between the Parameter and the Relevant Property or Result

Board Finds Rejection Based on Overlapping Prior Art Genus Insufficient; Election Requirement Withdrawn by Broadened Initial Search

Inherency Requires Reference Unavoidably Teach Claimed Property

Examiner’s Written Description Rejection Comes Up Short

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

USPTO Further Delays Non-DOCX Fee Until June 30, 2023