Patent claims often recite structural limitations in combination with one or more properties. For example, a product claim might recite a composition comprising three components, where one of the components is specified as having certain physical properties. In such cases, U.S. patent examiners often reject the claims as either anticipated or obvious based on prior art describing the structural limitations but not describing the properties.
Ex parte Smith is a 2012 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 Smith is indicated by the PTAB to be informative as to “Anticipation – 35 U.S.C. § 102… picking and choosing.”
On August 7, 2020, the Patent Trial and Appeal Board issued a decision in Ex parte Koseoglu (Appeal 2019-002720) and reversed an obviousness rejection of a catalyst composition. Implicit in the Board’s decision was the determination that one of the catalyst components, having only an upper limit on its amount, was present in the catalyst composition.
In determining “prior art” under 35 U.S.C. § 102, a reference is a “printed publication” if it is accessible to the public. As explained in the Manual of Patent Examining Procedure, “[a] reference is proven to be a ‘printed publication’ ‘upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” M.P.E.P § 2128, para. I (quoting In re Wyer, 655 F.2d 221, 210 U.S.P.Q. 790 (CCPA 1981)) (emphasis added).
In addition to the indefiniteness rejection, the Patent Trial and Appeal Board (“Board”) in Ex parte Castellana (Appeal No. 2019-006605, July 20, 2020) (previously discussed here) considered and reversed the Examiner’s obviousness rejection.
A product-by-process claim is a product claim that defines the claimed product in terms of the process by which it is made. A product-by-process claim is proper and should not be rejected under 35 U.S.C. § 112(b) or pre-AIA 35 U.S.C. § 112, second paragraph, as indefinite, as long as it is clear that the claim is directed to a product.
On July 30, 2020, the Patent Trial and Appeal Board (“Board”) reversed the Examiner’s obviousness rejection in Ex parte Lundberg. At issue was the meaning of the claim term “highly refined cellulose.”
Ex parte Maeda is a 2009 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 Maeda is indicated by the PTAB to be informative as to “proof properties are not inherent.”
In assessing the obviousness of chemical species when prior art teaches an encompassing genus, Section 2144.08 of the MPEP advises us to consider any teaching or suggestion in the reference of a preferred species or subgenus that is significantly different in structure from the claimed species or subgenus—because such a teaching may weigh against selecting the claimed species or subgenus. See M.P.E.P. § 2144.08, para. II.A.4(c).
On July 1, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Allen reversing an Examiner’s obviousness rejection for failing to provide sufficient reason based on rational underpinning to combine the teachings of the prior art. See Decision on Appeal, Appeal No. 2018-008208, at 6 (P.T.A.B. Jul. 1, 2020) (non-precedential).
Allen represents a common scenario encountered during prosecution; namely, where an Examiner relies on a secondary reference to teach elements missing from the primary reference based on an illusory or non-existent problem in the primary reference.
The independent claim in Allen recited a method for introducing a cable into a conduit by attaching a pliant material to the cable with an adhesive and then introducing the cable/pliant material into the conduit, where the pliant material exhibited less friction than the cable. See id. at 2 (claim 5).
The Examiner rejected the claims over a combination that included Conti (US 5,027,864), which disclosed a method of introducing a cable into a conduit but lacked the pliant material attached to the cable with adhesive, and Holland (US 2002/0170728), which disclosed attaching a pliant material to a cable with an adhesive “to mak[e] a cable abrasion-resistant … when being moved or pulled.” Id. at 4 (emphasis added). According to the Examiner, it would have been obvious to modify Conti to include the pliant material and adhesive of Holland for the purpose of making the cable abrasion resistant.
The Appellant disagreed because Conti already recognized the friction problem when inserting the cable into the conduit and solved it by applying a lubricant to the cable. Nevertheless, the Examiner speculated that “in practice[,] lubricated systems are not always perfectly lubricated due to inhibited lubricant flow and/or improper maintenance of the fluid within the passage/channel” and, in that scenario, the skilled artisan would “look to supplemental means for protecting the cable within the tube/duct.” Id. at 6.
Rejecting the Examiner’s rationale, the Board highlighted Conti’s teaching that “[t]he presence of lubricant on the cable greatly reduces friction and thus the pulling force required to install the cable.” Id. at 4. Given Conti’s teaching to continuously feed the lubricant to reduce friction and the pulling force required to install the cable, the Board failed to see why it would have been obvious to combine Conti’s lubricated cable to include a pliant material from Holland’s unlubricated system or how such a combination would resolve the speculative problems alleged by the Examiner (i.e., to make Conti’s cables more friction resistant and/or further protect Conti’s cable within the conduit).
Takeaway: Examiners often formulate a problem in the primary reference that can be solved by a secondary reference, thereby providing the motivation for combining the references to arrive at the claimed invention. However, when the problem is already solved by the primary reference, there may be no motivation to combine the references, even when the Examiner resorts to allegations that secondary reference can “further improve” upon the primary reference (e.g., to make Conti’s cable more friction resistant). Allen provides a good illustration of this scenario and the importance of assessing problem/solution motivations to determine whether the alleged problem is illusory or non-existent.
Judges: C. Greenhut, A. Reimers, S. Mitchell
