PTAB Archives - Page 9 of 13

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

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

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

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

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

Independent claim 3 recited:

A composition comprising:

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

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

wherein said composition has pesticidal or plant growth modulating activity.

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

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

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

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

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

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

Judges: Schneider, Flax, Townsend

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)

ポリヌクレオチドを要素としたマーカッシュクレームについて、要素の選び方が適切であるかどうかについて言及している過去の特許庁審決があります（Ex parte Buyyarapu (Appeal 2018-006665))。

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

In assessing obviousness rejections, a threshold issue is whether the cited reference(s) qualify as prior art. A reference qualifies as prior art for an obviousness determination only when it is “analogous” to the claimed invention. See M.P.E.P. § 2141.01(a).

Two separate tests define the scope of analogous prior art: (1) whether the art is from the same “field of endeavor,” regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is “reasonably pertinent” to the particular problem with which the inventor is involved. M.P.E.P. § 2141.01(a), para. I (citing In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004)).

On October 28, 2020, the Board issued a decision in Ex parte Taskinen reversing obviousness rejections, because the examiner did not establish that a cited secondary reference was analogous to the claimed invention. This case illustrates that care should be taken to ensure that cited references are analogous under at least one of the two applicable tests.

The claimed inventions were drawn to “adjustable massage apparatuses,” and the examiner rejected the claims as being obvious over Taskinen (US 2008/0200778) in view of Khen (WO 2008/063478) and Lockwood (US 2003/0014022).

However, the rejection did not explain why Lockwood—describing “wound treatment apparatuses”—was analogous to the claimed massage apparatuses.

The applicant argued that a person of ordinary skill in the relevant art would not rely upon the teachings of Lockwood to modify the device of the primary reference, because the structure and purpose of the apparatuses in this reference are different with respect to the claimed inventions. As explained in the Reply Brief:

Even though Lockwood describes a device utilizing low pressure suction, the structure and purpose of the Lockwood device are different with respect to the present application.

In this sense, the skilled person would not turn to Lockwood when developing the device according to Taskinen.

Furthermore, the skilled person would not try to combine features of Lockwood to Taskinen because they are not easily, if at all, combinable with Taskinen (or with Taskinen in view of Khen).

Although the examiner argued that Lockwood is in the same “field of endeavor” as the claimed inventions, the examiner did not explain why this reference was “reasonably pertinent” to the particular problem faced by the inventors. As explained in the Examiner’s Answer:

Appellant argues . . . that Lockwood does not appear relevant. Examiner respectfully disagrees. Lockwood is in the same field of endeavor of vacuum treatment devices for a user. Thus, Lockwood is relevant.

The Board disagreed that Lockwood is in the same “field of endeavor” as the claimed inventions, because “massage devices” are not “vacuum treatment devices for a user.”

In rendering its decision, the Board explained that the “field of endeavor” test is not a “subjective call” by the Examiner. Instead, this test requires the examiner to determine the appropriate field of endeavor by reference to explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention. As explained by the Board:

‘[T]he field of endeavor test . . . requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.’ In re Bigio, 381 F.3d at 1325. ‘This test does not make the assessment of the field of endeavor a wholly subjective call for the examiner.’ Id. at 1326. Rather, ‘[t]he examiner and the Board must have a basis in the application and its claimed invention for limiting or expanding the scope of the field of endeavor.’ Id.

The Examiner makes no findings regarding whether Lockwood is analogous art and, instead, simply concludes that ‘Lockwood is in the same field of endeavor of vacuum treatment devices for a user,’ and ‘[t]hus, Lockwood is relevant.’ Ans. 10. We are left with no finding supported by evidence to support this conclusion.

Moreover, we find that Appellant’s field of endeavor is, in fact, not ‘vacuum treatment devices for a user’ generically. Rather, Appellant’s field of endeavor is massage devices. This is evidenced by the characterization of the Application’s technical field, the discussion of the prior art, the description of the invention, the figure, the detailed description, and the claims. Indeed, there is no reference to any application of the purported invention to anything other than a massage device.

Because the Examiner made no assertion regarding the “reasonably pertinent” test, the Board declined to make any findings about whether Lockwood is analogous under the second test.

Judges: J.C. KERINS, J.M. PLENZLER and C.M. DEFRANCO (Opinion by PLENZLER).

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