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May 28, 2021by Matthew Barnet1

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.

In other situations, however, examiners apply a result-effective variable rationale to a claimed property that is not disclosed in the applied prior art. This is illustrated in the recent Patent Trial and Appeal Board (“Board”) case of Ex parte Horiuchi (Appeal No. 2020-000126).

In Horiuchi, independent claim 1 recited:

A covering material for an electric wire, the covering material having a composition containing a polyvinyl chloride,

wherein the composition of the covering material comprises a characteristic such that a change curve of a loss modulus with respect to temperature for the composition of the covering material containing the polyvinyl chloride has no peak within a temperature range of -30°C to 60°C, which is a temperature range in a usage environment for the electric wire, and

wherein the composition of the covering material comprises more than or equal to 35 parts by weight and less than or equal to 50 parts by weight of a plasticizer and 2 to 20 parts by weight of a flexible resin with a melt flow rate of 1.0 g/10 min or less, the plasticizer and the flexible resin combined with respect to 100 parts by weight of the polyvinyl chloride such that the composition comprises the characteristic.

The examiner rejected claim 1 as obvious. The examiner acknowledged that the applied prior art did not disclose the claimed property of a change curve of loss modulus having no peak within a temperature range of -30°C to 60°C. However, the examiner took the position that the

change curve of loss modulus with respect to temperature is a result effective variable. As the change curve of loss modulus with respect to temperature peaks the material undergoes a decrease in flexibility. Thus, it would have been obvious to…have a covering material that has a change curve of loss modulus with respect to temperature which shows no peak within a temperature range in a usage environment for the electric wire motivated by the expectation of maintaining flexibility over the usage environment for the electric wire, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art.

In response, the applicant argued that the claimed property of having no peak within a certain temperature range of the change curve of loss modulus was not itself a result-effective variable known in the prior art. Instead, the applicant explained that this claimed property depended on at least five other variables: the amount of plasticizer, the amount of flexible resin, the melt flow rate of the flexible resin, the relative proportions of components, and temperature. The applicant argued that a skilled artisan would understand that “such a complex combination of material concentrations along with melt flow rates could not be summarily characterized as one ‘variable’ in the form of a simple graph of loss modulus v. temperature, that could be routinely manipulated.” Thus, the applicant argued that it would not have been obvious to achieve the claimed property from the applied prior art.

The Board agreed with the applicant, and reversed the obviousness rejection. The Board did not explain its reasoning regarding the examiner’s result-effective variable rationale, other than mentioning that it adopted the reasoning provided by the applicant. However, the Board emphasized that the amount of plasticizer in the claims (35 to 50 parts by weight with respect to 100 parts PVC) was higher than the upper limit in the applied prior art (30 parts by weight with respect to 100 parts PVC). The Board noted that the applied prior art taught away from using an amount of plasticizer higher than 30 parts by weight, since doing so could cause the covering material to have an insufficient damage-resistance property. The Board concluded that “the Examiner does not explain adequately how one skilled in the art would arrive at the claimed covering material from the [applied prior art].”

Takeaway: Whenever an examiner takes the position that a claimed property 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 property. If, as in Ex parte Horiuchi, the claimed property is distinguishable from variables in the prior art, then this distinction can help overcome an examiner’s obviousness rejection. If the claimed property is related to certain claimed variables (such as concentration of a component), but the claimed values of these variables do not overlap the corresponding values in the prior art, this approach can be particularly useful.

Judges: Smith, Cashion Jr., Inglese


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April 23, 2021by Matthew Barnet

In an anticipation rejection, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. However, “it is not enough that the prior art reference . . . includes multiple, distinct teachings that [an ordinary] artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Instead, the reference must “clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” Id. (quoting In re Arkley, 455 F.2d 586, 587 (C.C.P.A. 1972)). Although “[s]uch picking and choosing may be entirely proper in the making of a 103, obviousness rejection . . . it has no place in the making of a 102, anticipation rejection.” Arkley, 455 F.2d at 587-88.

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

Independent claim 16 recited a multilayer pressure-sensitive adhesive assembly comprising a propylheptyl acrylate adhesive copolymer layer and a second acrylate pressure-sensitive adhesive foam layer. The propylheptyl acrylate adhesive copolymer layer comprised (a) 50 to 99.5 weight percent of 2-propylheptyl acrylate as a first monomer, (b) 1.0 to 50 weight percent of a second non-polar monomer, (c) 0.1 to 15 weight percent of a third polar acrylate monomer, and (d) a tackifying resin in an amount of 3 to 100 parts per 100 parts of the copolymer. Independent claims 37 and 38 recited similar multilayer pressure-sensitive assemblies, but with somewhat different components (d), and different scope of components (a), (b) and (c).

The examiner rejected independent claims 16, 37 and 38 as anticipated by a single reference, Bartholomew. In response, the applicant argued that “[t]he cited reference provides a great multiplicity of possible combinations and no direction that would lead one of skill in the art to the claimed invention.” For component (a), the applicant explained that Bartholomew listed “2-propylheptyl acrylate as one of 10 options.” For the specific components (b) and (c) recited in claims 37 and 38, the applicant explained that component (b) was one of eight options listed in Bartholomew, and component (c) was one of ten listed options. For component (d), Bartholomew described a tackifying resin as optional. Based on this, the applicant argued that “the number of possible combinations presented by these passages in Bartholomew is 10 x 8 x 10 x 2 = 1600.” The applicant argued against anticipation because “one of ordinary skill in the art would be required to pick items from at least 1600 types of polymer to arrive at the claimed invention.”

The Board agreed with the applicant, finding that the anticipation rejections “rely upon picking and choosing from various lists in Bartholomew,” and that “[a] preponderance of the evidence supports Appellant’s position that Bartholomew’s disclosure is insufficient to establish anticipation of the compositional components of independent claims 16, 37, and 38.”

Additionally, the Board noted that although the ranges of amounts of components (a), (b) and (c) in Bartholomew overlapped the claimed ranges, “the Examiner has not adequately explained how Bartholomew anticipates the claims” in view of Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985).

Accordingly, the Board reversed the anticipation rejections. However, the Board entered a new ground of rejection, finding the claims obvious over Bartholomew. Specifically, the Board found that the selection of the claimed components, in the claimed amounts, would have been obvious from Bartholomew. The Board was not persuaded by the applicant’s argument of unexpected results, particularly with respect to a showing of criticality and whether the unexpected results were commensurate in scope with the claims.

Takeaway: When an examiner rejects a claim as anticipated based on several selections from lists disclosed in a prior art reference, a strong case can be made against anticipation. After overcoming the anticipation rejection, however, the question of obviousness usually remains. To rebut the case of obviousness, strong evidence of unexpected results often is necessary.

Judges: Gaudette, Hastings, Ren


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March 19, 2021by Matthew Barnet

Chemical compounds in patent claims often include variables representing different possible substituent groups. For example, a chemical formula may include a variable R1 representing a hydrogen atom or an alkyl group, a variable R2 representing an alkenyl group, and a variable X representing a halogen atom. This notation allows for a compact representation of many different specific compounds (species) within a generic formula (genus).

When evaluating a genus of chemical compounds for obviousness, U.S. examiners often find a disclosed genus of chemical compounds sharing species with the claimed genus. The question then is whether the disclosed genus of chemical compounds is sufficient to render obvious the claimed genus of compounds. This issue is illustrated in the recent Patent Trial and Appeal Board (“Board”) case of Ex parte Alig.

Independent claim 1 recited a method for controlling animal pests with an N-arylamidine substituted trifluoroethyl sulfoxide derivative of formula (I):

where:

n represents the number 1,

X represents fluorine, chlorine, bromine, or iodine,

Y represents (C1-C4)-alkyl or (C1-C4)-haloalkyl,

R2 represents hydrogen, (C1-C4)-alkyl or (C1-C4)-haloalkyl, and

R1 and R3 together with the atoms to which they are attached represent the group

where the arrow points to the remainder of the molecule.

The examiner rejected claim 1 on the ground of non-statutory obviousness-type double patenting over claims 1-20 of U.S. Patent No. 9,642,363 (“the ‘363 patent”) in view of WO 2007/131680. As articulated by the Board, “[t]he Examiner’s position, essentially, [was] that the pending claims would have been obvious over the reference claims because the reference claims disclose a genus of compounds that encompasses the compounds recited in the pending claims.”

The applicant explained that to arrive at the compounds in the pending claims, a person of ordinary skill in the art would need to make several specific choices to narrow the genus recited in the reference claims. For example, the person would need to choose the specific ring structure formed by R1 and R3 in pending claim 1 from among 14 ring systems recited in claim 1 of the ‘363 patent and 16 groups recited in claim 8 of the ‘363 patent. Additionally, the person would need to choose fluorine, chlorine, bromine, or iodine for the variable X in pending claim 1, from among 41 substituents (many of which could contain further substitutions) in the claims of the ‘363 patent. The person also would need to choose (C1-C4)-alkyl or (C1-C4)-haloalkyl for the variable Y in pending claim 1, from among 41 substituents (many of which could contain further substitutions) in the claims of the ‘363 patent. The applicant argued that pending claim 1 was not obvious because the “claims of the ‘363 patent provide no teaching whatsoever that would suggest the specific choices that would lead to the claimed compounds.”

The Board agreed with the applicant. The Board explained that “[t]he fact that the pending claims recite compounds encompassed within the genus disclosed in the prior art is not, by itself, sufficient to establish a prima facie case of obviousness” (citing In re Baird, 16 F.3d 380 (Fed. Cir. 1994) and In re Jones, 958 F.2d 347 (Fed. Cir. 1992)). The Board noted that “[i]n both Baird and Jones, our reviewing court reversed rejections similar to the present rejection, in which the rejected compounds were encompassed by large genera that included millions of compounds, but the prior art did not suggest selecting from those genera the particular compound, or subgenus of compounds, recited in the claims at issue.”

The Board found that the examiner did not “provid[e] a sufficient evidentiary basis explaining why, out of the enormous number of possibilities encompassed within the genus described in the ‘363 patent, a skilled artisan would have made the particular set of selections and modifications that would be required to arrive at the compounds recited in the pending claims.” The Board concluded that “[t]he mere fact that one might arrive at Appellant’s claimed compounds by a hindsight-guided selection of appropriate substituents from the large genus disclosed in the reference claims does not persuade us that the pending claims would have been obvious to a skilled artisan.” Thus, the Board reversed the double patenting rejection.

Takeaway: When claims recite a sub-genus of chemical compounds, and the examiner rejects the claims as obvious over a broader genus of compounds, it is important to analyze the selections necessary to arrive at the sub-genus. If the applied references do not provide guidance for making such selections, then a strong argument can be made against obviousness.

Judges: Fredman, Cotta, Hardman


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February 12, 2021by Matthew Barnet

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 (2014)) and Mayo (566 U.S. 66 (2012)) 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.

When a claim recites a mathematical formula, examiners sometimes take the position that the claim is directed to an abstract idea, i.e., the mathematical formula itself. It has long been held that mathematical formulas, by themselves, cannot be patented (see, e.g., Gottschalk v. Benson, 409 U.S. 63 (1972)). Instead, to be patent eligible under § 101, such a claim must integrate the mathematical formula into a practical application.

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

Independent claim 3 recited (in part):

A method for liquid chromatography,

…the method comprising the steps of:

…calculating elution time “trc” based on Equation (1), the elution time “trc” being from a start of flow-in of the sample into the column to elution of a component “c” which is one of the components from the column;

(1)

selecting the column based on the calculated elution time “trc”; and

conducting the liquid chromatography using the selected column…

The examiner rejected claim 3 under section 101. Since this claim related to a method, it satisfied step 1 of the Alice/Mayo framework. At step 2A, however, the examiner took the position that claim 3 was “directed to an abstract idea,” specifically “equations for calculating mobility” which were “not integrated into a practical application because the additional steps do not add a meaningful limitation to the method as they are insignificant extra-solution activity.”

In contrast, the applicant contended that claim 3 recited a method using “new equations to control the physical components of the liquid chromatography process.” In particular, the applicant contended that claim 3 was not directed to a mathematical formula, but an improved liquid chromatography method that used “more accurate estimates to control the physical parameters” of the process “to yield more accurate results.”

The Board agreed with the applicant. The Board acknowledged that claim 3 recited a mathematical formula, and thus recited an abstract idea. However, the Board found that the claim was “not ‘directed to’ an abstract idea because…the abstract idea is integrated into a practical application under Step 2A.” The Board found that “[t]he claimed process…requires generating an eluent by mixing two solvents, selecting the chromatography column based on the calculated elution time, and conducting the liquid chromatography.” The Board concluded that this “combination of steps…adds significantly more than the abstract idea the claims are alleged to be directed to so as to transform the abstract idea into an inventive concept.”

Additionally, the Board found that claim 3 “reflects a specific asserted improvement in technology, rooted in computer technology, over that which was available in the prior art. Accordingly, we find the Appellant’s arguments persuasive that the claimed subject matter is not directed to merely performing mathematical processes but to a technical improvement.” Thus, the Board reversed the rejection under section 101.

Takeaway: If an examiner rejects a claim under section 101 for reciting a mathematical formula, it is important to emphasize that the claim is not directed to the mathematical formula, but that the claim integrates the mathematical formula into a practical application. It also can be helpful to emphasize how using the mathematical formula leads to an improvement in the underlying technology. In this way, Ex parte Okura is reminiscent of Diamond v. Diehr, 450 U.S. 175 (1981), where a claim for curing synthetic rubber recited the Arrhenius equation to improve an otherwise conventional method, and was found to be eligible under section 101.

Judges: Hastings, Wilson, McManus


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January 8, 2021by Matthew Barnet1

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 Mn+1AXn, 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.


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December 11, 2020by Matthew Barnet

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


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November 20, 2020by Matthew Barnet

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


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October 30, 2020by Matthew Barnet1

U.S. patent examiners sometimes rely on the theory of inherency to fill gaps in the prior art. This usually occurs when patent claims recite structural limitations in combination with one or more properties. 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.

Under U.S. law, however, the mere possibility that the prior art possesses the claimed properties is insufficient to establish inherent anticipation or obviousness. Instead, to establish inherency, the examiner must provide a rationale that the claimed properties are necessarily present in the prior art.

This issue is illustrated in the recent Patent Trial and Appeal Board (“Board”) case of Ex parte Liu. The claims at issue recited:

A polymer composite composition comprising:

an eggshell component, wherein the eggshell component possesses a lipid-protein structure substantially similar to that of the eggshell from which the eggshell component is derived, and wherein the eggshell component is substantially free of eggshell inner membrane material; and

a polymer component.

The inventors discovered that an improved polymer composite could be produced by using an eggshell component possessing its original lipid-protein structure and being free of the inner membrane of the original eggshell. The original lipid-protein structure was thought to maintain the hydrophobicity of the eggshell component when dispersing the eggshell component as a powder into the polymer component.

The examiner rejected the claims as obvious over a combination of references. The primary reference (“New”) described separating pulverized eggshells from their attached membranes using airflow. A secondary reference (“Minagoshi”) described combining eggshell powders in polymeric rubber compositions. The examiner took the position that it would have been obvious to use the pulverized eggshells from New as the powder in Minagoshi, to obtain the claimed polymer composite composition.

The references did not specifically describe that the eggshell component possessed a lipid-protein structure substantially similar to that of the eggshell from which the eggshell component was derived, as recited in the claims. To fill this gap in the prior art, the examiner took the position that the eggshell powder produced in New would inherently retain the original lipid-protein structure. This position was based on New allegedly “using airflow without harsh chemicals or high temperatures” to separate the membrane from the eggshells. Since the reference was silent with respect to its processing temperature, the examiner took the position that it was performed at room temperature.

The applicant provided a declaration explaining that “[e]ggshell can be denatured at a relatively low temperature” and “temperatures above 41°C will break the interactions of many proteins and denature them.” The applicant acknowledged that New did not specifically disclose the temperature used in its process, but argued that the high-speed airflow in this process would result in a temperature above 41°C. Such a temperature would denature the eggshell, such that it would not possess the lipid-protein structure recited in the claim.

Thus, the examiner argued that New used a temperature below 41°C (resulting in a product meeting the claimed limitation), whereas the applicant argued that New used a temperature above 41°C (resulting in a product not meeting the claimed limitation).

Considering these conflicting arguments and evidence, the Board found the examiner’s inherency position untenable. The Board found that “it is uncertain what temperature New’s process suggests. The preponderance of the evidence of record, therefore, does not support a finding that New’s process inherently takes place at a temperature of less than 41°C.” The Board concluded that “[t]he evidence, therefore, also does not support a finding that New’s process necessarily results in an eggshell composition which possesses a lipid-protein structure substantially similar to that of the eggshell from which the eggshell component is derived,” as recited in the claims. Accordingly, the Board reversed the obviousness rejections.

To be clear, the Board did not find that New’s process was inherently performed at a temperature above 41°C, as applicant argued. Instead, the Board found that the evidence was inconclusive as to what temperature the process occurred. This uncertainty in temperature was the key to the Board’s decision on inherency. As the Board noted, “[i]nherency…may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient” (citing In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)). Even though it was possible that New’s process was performed at a temperature below 41°C, as alleged by the examiner, this possibility was insufficient to establish that the temperature inherently was below 41°C.

Takeaway: Inherency requires necessity, not merely possibility. That is, just because it might be possible for the prior art to satisfy a claimed property, that does not mean that the prior art necessarily satisfies the property. If the prior art does not necessarily satisfy the claimed property, then inherency has not been established. When there is conflicting evidence, some in support of a claimed property being present and some in support of a claimed property being absent, this conflict itself can support an argument against inherency.

Judges: Gaudette, Wilson, Range


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October 9, 2020by Matthew Barnet1

U.S. patent claims usually contain the term “comprising.” This term indicates that an item in the claim must include certain specified components, but that the item also may include other, unspecified components. Alternatively, patent claims sometimes contain the term “consisting of.” This term indicates that an item in the claim is closed to unspecified components.

In between the open term “comprising” and the closed term “consisting of” is the term “consisting essentially of.” This semi-closed term indicates that an item in the claim is limited to the components specified in the claim “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. In re Herz, 537 F.2d 549, 551-52 (CCPA 1976) (emphasis in original).

The semi-closed nature of “consisting essentially of” sometimes is attractive during patent prosecution. For example, if the prior art discloses the combination of components A, B and C, it might be difficult to distinguish a patent claim with an item comprising components A and B since the item is open to the unspecified component C by virtue of the open term “comprising.” Amending the claim so that the item consists of components A and B (rather than comprises components A and B) might distinguish the claim from the prior art, if the prior art requires component C. However, such an amended claim might be easy for a competitor to design around, simply by adding component D to components A and B in the competitor’s product. The term “consisting essentially of” can provide a middle ground, allowing a patent applicant to distinguish a claim from prior art without excessively narrowing the scope of the claim.

However, when using the term “consisting essentially of,” the patent applicant often must explain to the examiner what the “basic and novel characteristic(s)” of the claimed invention are, and why they would be “materially affect[ed]” if the claimed invention were to include an additional component from the prior art. This issue is illustrated in the recent Patent Trial and Appeal Board (“Board”) case of Ex parte Nakajima.

Claim 1 in Nakajima recited:

A method of modifying starch, comprising subjecting a powdery mixture consisting essentially of starch and water-soluble hemicellulose at a weight ratio of 95:5 to 80:20 to moist-heat treatment at 100 to 200°C.

The examiner rejected claim 1 as obvious over two references, Yoshino in view of Narimatsu. The examiner relied on Yoshino for a method of subjecting starch to moist-heat treatment. The examiner acknowledged that Yoshino did not disclose water-soluble hemicellulose, and relied on Narimatsu for this component. Narimatsu described mixing water-soluble hemicellulose as a powder with wheat flour and starch. The examiner took the position that it would have been obvious to combine the water-soluble hemicellulose of Narimatsu with the starch of Yoshino, and then to treat the mixture of hemicellulose and starch with moist heat.

The applicant argued that the combination of Yoshino and Narimatsu would require the presence of wheat flour along with water-soluble hemicellulose and starch. Because of this, the applicant argued that the combination of these references would not satisfy the requirement that the powdery mixture consist essentially of starch and water-soluble hemicellulose.

In particular, the applicant argued that the presence of wheat flour would materially affect the basic and novel characteristics of the claimed invention. The applicant identified the basic and novel characteristics of the claimed invention as suppression of swelling or disintegration of starch granules. The applicant explained that including wheat flour with starch and water-soluble hemicellulose would not lead to such suppression. This explanation was supported by experimental data, submitted in a declaration, showing that samples containing wheat flour did not show the same inhibitory effect on swelling and disintegration of starch granules that was observed in samples without wheat flour.

Since the presence of wheat flour would materially affect the basic and novel characteristics of the claimed invention, the applicant argued that wheat flour should be excluded by the “consisting essentially of” phrase.

In response, the examiner contended that it would have been obvious to combine the water-soluble hemicellulose of Narimatsu with the starch of Yoshino, without including the wheat flour of Narimatsu.

The Board sided with the applicant. The Board found that Narimatsu taught adding water-soluble hemicellulose to a mixture of wheat flour and starch, but did not teach or suggest adding water-soluble hemicellulose to starch alone. The Board agreed that the applicant had provided sufficient evidence that including wheat flour in the powdery mixture of claim 1 would materially affect the basic and novel properties of the claimed invention. Accordingly, the Board found wheat flour to be excluded by the “consisting essentially of” phrase, and reversed the obviousness rejection.

Takeaway: The transitional phrase “consisting essentially of” provides a middle-ground between the open “comprising” and the closed “consisting of” phrases. When using the phrase “consisting essentially of,” applicants should be prepared to identify, on the record, what the basic and novel characteristics of the claimed invention are. Applicants also should be prepared to provide a technical argument, possibly supported by experimental data, explaining why the basic and novel characteristics would be materially affected if the claimed invention were to include an additional component from the prior art.

Judges: Franklin, Snay, Ren


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September 18, 2020by Matthew Barnet

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.