April 15, 2022by Yanhong Hu

Functional equivalence is a rationale that examiners often rely on in support of an obviousness rejection. However, as discussed in one of our previous blogs, examiners may misapply the rationale by ignoring the different function or purpose of an allegedly equivalent component disclosed in prior art. A recent decision of the Patent Trial and Appeal Board (“Board”) – Ex parte Takasu (Appeal 2021-001290) – is another illustrative case.

Appellant’s claimed invention in Takasu was a substrate of a single crystal of formula RAMO4, where, among other things, R could be Sc, A could be Al, and M could be Mg. The claimed RAMO4 substrate had an epitaxially-grown surface and a satin-finish surface, each having specific surface roughness.

Yoshii, the primary reference relied on by the Examiner, provided a sapphire substrate for epitaxial growth that could be easily polished. The Examiner found that Yoshii as evidenced by Hansen disclosed a sapphire single crystal substrate that allegedly had the claimed roughness on its front and back sides. The Examiner admitted that the sapphire substrate disclosed in Yoshii was not a RAMO4 substrate. However, the Examiner found a secondary reference, Yoshida, which disclosed ScAlMgO4 as one of the material options for a single crystalline substrate as a functional equivalent to sapphire for epitaxial growth. The Examiner thus concluded Appellant’s claimed RAMO4 substrate would have been obvious over Yoshii in view of Yoshida as evidence by Hansen.

Appellant argued that a sapphire substrate and a RAMO4 substrate were not equivalent to each other in terms of surface polishing properties.

The Board agreed with Appellant and emphasized that, as stated by the Examiner herself, Yoshida merely disclosed ScAlMgO4 as “a functional equivalent to sapphire for epitaxial growth, but … not for surface polishing properties.”

Because a sapphire substrate is not functionally equivalent to a RAMO4 substrate in terms of surface polishing properties, the Board found that the Examiner’s reliance upon Yoshida was misplaced and reversed the obviousness rejection.

Takeaway:  As cautioned in MPEP § 2144.06 II, the equivalency of a proper substituting equivalent must be recognized in the prior art for the same purpose and cannot be based on applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents. Thus, arguments rebutting an examiner’s obviousness rejection relying on functional equivalence may be successfully advanced by carefully analyzing the function and purpose of substituted and substituting components disclosed in prior art.

Judges:  J. T. Smith, B. A. Franklin, and J. R. Snay


March 11, 2022by Yanhong Hu

Applicants can traverse rejections by submitting evidence in the form of a declaration under 37 CFR 1.132. While factual evidence, such as additional experimental data, is preferable, opinion testimony, which is often brushed off by examiners, is entitled to consideration as long as the opinion is not on the ultimate legal conclusion. A recent decision of the Patent Trial and Appeal Board (“Board”) – Ex parte Zhu (Appeal 2021-001375) – illustrates a situation where an expert’s opinion testimony provided evidence that successfully traversed the Examiner’s obviousness rejection.

Appellant’s claimed invention in Zhu was directed to an electrochemical test sensor containing a base, a lid, multiple electrodes, and a dried reagent. The dispositive issue before the Board was whether the evidence of record supported the Examiner’s finding that the primary reference (Bateson) described or suggested an electrochemical test sensor having a dried reagent that “has a uniformity in which the ratio of the thinnest point to the thickest point is greater than about 0.2” as claimed.

The Examiner admitted that Bateson did not explicitly disclose the feature but provided a hypothetical calculation based on Bateson’s disclosure, including the drawings, and obtained a ratio of 0.64 between the thinnest and thickest points.

Appellant responded with declaratory evidence from Mr. Brown (an employee of the assignee’s subsidiary company) explaining why the Examiner’s hypothetical calculation was erroneous. Mr. Brown stated that when a dry reagent was obtained from a wet reagent, “[t]he exact percentage of the reduction in the thickness would depend on the drying conditions and the crystalline or molecular structure of the dissolved solid materials in the wet reagent.” Mr. Brown further stated that “details like the contour of the dried reagent” must be considered when the ratio was calculated because the surface of the dried reagent was not smooth, citing a figure in Appellant’s application as a proof and noting that a skilled artisan would expect the dried reagent in Bateson to exhibit the “coffee ring” effect upon drying, which represented a non-uniform reagent surface.

The Examiner gave little or no weight to Mr. Brown’s statements. While noting that Bateson did not disclose the “coffee ring” effect or details pertaining to the surface contour of the wet or dried reagent, the Examiner argued that “it would be improper to read into the disclosure of Bateson to give the surface of the reagent any particular contour without some teaching, suggestion and/or evidence to do so.”

The Board, however, found that Brown’s testimony was valid evidence showing that a skilled artisan would have expected a calculation of the ratio to require details such as the contour of the surface of the reagent. Because, as acknowledged by the Examiner, Bateson did not disclose any noteworthy details regarding the surface contour of the reagent, the Board found that the record before it supported Appellant’s position that the Examiner failed to make a sufficient showing that Bateson disclosed or suggested the recited ratio.

Takeaway:  It is known to patent practitioners that arguments of counsel are not evidence and must be supported by an appropriate affidavit or declaration from an expert. The expert can be an outside expert or someone from inside the company as in Zhu as long as they have appropriate expertise. While an opinion affidavit or declaration which states only conclusions may have little probative value, weight and deference should be given to factually supported statements and, particularly, to the underlying factual basis, as illustrated by Zhu.

Judges:  M. N. Ankenbrand, B. D. Range, and L. Ren


February 11, 2022by Yanhong Hu

A typical Markush group is structured as “selected from the group consisting of A, B, and C.” The language is closed in nature due to the closed transitional phrase “consisting of.” However, it is not uncommon for an open-ended claim to recite a Markush group in patents or patent applications related to chemical arts. An issue that often arises , therefore, is whether unrecited members of the “closed” Markush group are allowed in open-ended claims. In Ex parte Kapitan (Appeal 2021-001272), the Patent Trial and Appeal Board (“Board”) addressed such an issue.

Appellant’s claimed invention in Kapitan was directed to a process for making a methylfluoroacrylate “comprising” steps A-D, wherein “the solvent in at least steps C and D … is an alkane selected from a group consisting of pentane and hexane.”

The Examiner rejected the claimed process as obvious over a combination of several prior art references. The Examiner admitted that the primary reference did not disclose using pentane or hexane as the solvent in making methylfluoroacrylate; and relied on a secondary reference, Sedlak ‘967, for the admitted deficiency. In particular, the Examiner found Sedlak ‘967 used inert solvent, including petroleum ether, which, according to the Examiner, “consists of pentane and hexane hydrocarbons.” However, as noted by the Board, the Examiner did not provide evidence establishing that petroleum ether was either pentane or hexane.

Appellant, on the other hand, provided several prior art references during prosecution showing that petroleum ether was not a single composition but a mixture of aliphatic hydrocarbons, such as a mixture of C5 to C13 paraffins that might contain a small amount of aromatic hydrocarbons.

The Board thus agreed with Appellant that petroleum ether had numerous variations of petroleum ether components that were not limited to pentane or hexane. The Board noted that by using the open-ended transitional phrase “comprising,” the claimed process allowed for additional steps. However, the Board further noted “that additional steps may be allowed does not mean that the solvent for use in the reaction step C as modified by the wherein clause, i.e., the alkane solvent [] being ‘selected from a group consisting of pentane and hexane,’ can be something other than pentane or hexane.” Citing Amgen, Inc. v. Amneal Pharms. LLC, 945 F.3d 1368, 1377–78 (Fed. Cir. 2020), which discussed in detail Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350 (Fed. Cir. 2016), the Board concluded that, just as was the case in Multilayer, the suitable solvent required to be used in step C in Appellant’s claimed process was restricted to the listed solvents by the use of the closed Markush transition phrase “selected from the group consisting of.”

Because Sedlak ‘967’s teaching of using “petroleum ether” in its reaction scheme as an inert solvent did not indicate that pentane or hexane alone was a suitable inert solvent, the Examiner’s application of the prior art references was not sustainable.

TakeawayKapitan, like Multilayer, illustrates that without other language altering the meaning of a Markush clause, other unrecited members or mixtures of the recited members are not allowed even in an open-ended claim. Amgen illustrates a different situation. Specifically, the Amgen Court held that additional unrecited members of a Markush group and mixtures of the recited members were allowed if the Markush clause included qualifying language such as “at least one” as in “at least one selected from the group consisting of A, B, and C” and was preceded by an open-ended transitional phrase such as “comprising.” Indeed, the result would have been different if Appellant in Kapitan had recited “the solvent in at least steps C and D … comprises an alkane selected from the group consisting of pentane and hexane.”

Judges: D. E. Adams, T. Chang, and R. H. Townsend


December 29, 2021by Yanhong Hu

In Ex parte Price (Appeal 2021-003888), the Patent Trial and Appeal Board (“Board”) reversed the Examiner’s obviousness rejection because of Appellant’s successful showing of unexpected results.

Claim 1 was illustrative and read:

A ballistic material, comprising:

a first woven para-aramid ballistic fabric having a fiber denier in a range of 50 d to 5000 d; and

a hydroentangled nonwoven fiber component consisting essentially of ballistic grade para aramid fibers having a denier in a range of about 0.5 d to about 2.5 d and a density of about 10 gsm to about 200 gsm; wherein

the hydroentangled nonwoven component is needlepunched with the woven ballistic fabric to form a consolidated material.

The Examiner rejected claim 1 as obvious over Price in view of Van der Loo. Price taught a similar consolidated material but was silent on its non-woven component being “hydroentangled.” Instead, Price’s nonwoven was manufactured, for example, by dry laid carding and mechanical needling. The Examiner thus turned to Van der Loo and found that Van der Loo provided suggestion of using hydroentangling instead of needling to form a nonwoven.

The Board did not find that the Examiner’s combination of Price and Van der Loo was unreasonable. However, the Board found that the Examiner failed to give proper weight to Appellant’s evidence of unexpected results presented by Declarant Brahms.

The Board noted that Appellant first provided evidence regarding the expectation of the ordinary artisan. In particular, according to Appellant, “[t]he expectation in the art is that an identical stack of woven para-aramid layers reinforced with the same weight of nonwoven para-aramid fibers of the same denier would yield the same ballistic performance.” Appellant supported this statement with evidence showing linearity of the correlation between weight and ballistic performance measured as V-50.

Appellant then provided declaratory evidence that their results were significantly different from those of the closest prior art. In particular, after comparing the V-50 performance of shoot packs formed of ballistic materials made with identical materials and by identical processes except for the use of a non-woven that was hydroentangled versus needled, Brahms declared the observed difference was not merely random as verified by statistical analysis.

Finally, Brahms declared that the result was unexpected. In particular, according to Brahms, “[w]hen we first substituted spunlace material, we had hoped for some processing advantages and some reduction in weight for the final ballistic product. We did not expect an improvement in ballistic properties.” Brahms further declared that “[s]pecifically, an amount of fiber material, incorporated as spunlace, produced unexpected advantages in terms of the ballistic performance as compared to the same amount of fiber material incorporated from a needled batting. We now believe that the improvement in ballistic performance is due to the availability of the fibers of the spunlace material.”

The Board dismissed the Examiner’s determination that Appellant’s results were expected, because the Examiner improperly discounted Brahms’s specific statements that the difference was unexpected in that it was surprising that lower weight products would achieve V-50 ballistic performance improvements above the normal linear correlation seen in other known products.

Takeaway:  Any differences between a claimed invention and prior art may be expected to result in some differences in properties. What matters is whether the differences in properties are of a magnitude that really would have been unexpected. Ex parte Price illustrates a scenario where applicant can prove unexpected results by showing results that are “greater than” what is normally expected.

Judges:  A. L. Hanlon, C. Q. Timm, and N. W. Wilson


November 19, 2021by Yanhong Hu

In Ex parte Easson (Appeal 2020-001129), the Patent Trial and Appeal Board (“Board”) reversed the Examiner’s obviousness rejection because the Examiner failed to show the prior art composition with the required components necessarily had the claimed properties.

Claim 21 was illustrative and read:

A directly compressible tableting composition, comprising 50-85% by weight of anhydrous calcium hydrogenphosphate, 10-40% by weight of mannitol and 5-20% by weight of sorbitol, wherein said composition has a flow angle in the range of 29 to 33.4° and a bulk density in the range of 0.56 to 0.77 g/ml with a tapped density in the range of 0.73 to 0.92 g/ml.

The Examiner rejected claim 21 as obvious over Yokoi in view of Ranchhordas and Reiff. In particular, the Examiner found that Yokoi taught a powdered composition for tablets that had the same components in overlapping amounts. The Examiner contended that the claimed flow angle range was an inherent property of the claimed composition and thus the composition described in Yokoi must have the same flow angle. The Examiner found that Ranchhordas and Reiff described bulk densities of anhydrous calcium hydrogen phosphate and sorbitol, respectively, both of which overlapped with the claimed bulk density range. The Examiner thus concluded the mixture of the two had the claimed bulk density. Regarding the tapped density range, although the Examiner admitted that the references did not teach the property, he reasoned that “[because] all other properties are overlapping[,] the tapped density would be expected to overlap as well.”

Appellant argued that the Examiner misapplied the law of inherency and that the recited properties were additional limiting requirements of the claimed invention that would not be necessarily possessed by any composition with the recited components. The Board agreed.

In particular, regarding the bulk density, the Board noted that the claimed composition was a mixture of three components and that there was no evidence in the record disclosing the bulk density of mannitol, which was a component other than anhydrous calcium hydrogenphosphate and sorbitol. Also, the Board pointed out that claim 21 encompassed a composition containing as little as 50 wt% of anhydrous calcium hydrogenphosphate, 10 wt% of mannitol, and 5 wt% of sorbitol; that is, the claimed composition could contain as much as 35 wt% of unspecified ingredients with unknown bulk densities. The Board thus concluded that it was not necessarily true that any composition encompassed by claim 21 would have the claimed bulk density.

The Board further found evidence of record that contradicted the Examiner’s inherency conclusion. Specifically, the Board found Appellant’s specification described five compositions containing proportions of anhydrous calcium hydrogenphosphate, mannitol, and sorbitol within the recited ranges; however, two of these compositions had bulk densities and tapped densities that were too high to fall within the specified ranges.

Takeaway:  When faced with a composition claim containing property limitations, examiners often assert the properties are inherent if they find a prior art composition satisfying the claimed composition limitations. However, that a property may occur or be present in the prior art is not sufficient to establish inherency. To rely on a theory of inherency, an examiner “must provide a basis in fact and/or technical rationale to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 U.S.P.Q. 2d 1461, 1464 (B.P.A.I. 1990). As illustrated by Easson, an inherency argument lacking such reasoning does not establish a prima facie case of anticipation and/or obviousness, particularly when there is counter evidence showing the properties are additional distinguishing requirements that are not merely results of the composition limitations.

Judges:  D. E. Adams, E. B. Grimes, and J. N. Fredman


October 8, 2021by Yanhong Hu

“A picture is worth a thousand words.” This is also true, and sometimes may be even more so, in patent applications. However, one should be careful about what a figure in a patent application does and does not say. A recent decision of the Patent Trial and Appeal Board (“Board”) in Ex parte Hogard (Appeal 2020-006394) illustrates this point.

Appellant in Hogard claimed a method of controlling a fluid level in a venous drip chamber of a dialysis system having a blood pump and an air pump. The claimed method required operation of the blood pump in first and second modes that resulted in the fluid (i.e., either blood or saline) moving both forwards and backwards through the tubing set.

The Examiner rejected the claimed method as obvious over Heyes in view of Folden. The Examiner admitted that Heyes did not disclose the claimed priming sequence. However, the Examiner cited Folden, which taught bi-directional flow, as making up for the deficiency of Heyes.

Relying on Heyes’ Figure 7 (viewable here), Appellant argued that Heyes’ fluid path was meant to be unidirectional only and the Examiner’s proposed modification would have rendered Heyes’ device inoperable. In particular, noting that Figure 7 illustrated aperture 30 of bubble trap 34 being above level sensor 44, Appellant argued that if saline flowed in the reverse direction through the bubble trap, due to the position of inlet lip 36 (which was the entry point to aperture 30), the saline level would have to be higher than level sensor 44. Appellant argued that having no control of the fluid level within the chamber would have caused the hydrophilic membrane covering the vent in bubble trap 34 to become wetted and non-useful. Therefore, Appellant argued that the Examiner’s proposed modification of Heyes by Folden to have priming fluid flow in the reverse direction during priming would have caused Heyes’ bubble trap 34 inoperable due to a wetted hydrophilic membrane.

The Examiner raised two counter arguments in his answer. First, the Examiner argued Appellant’s arguments regarding the location of aperture 30 were moot because the drawings of Heyes were not to scale. Second, the Examiner argued even if aperture 30 was above level sensor 44, it would have been obvious to configure Heyes’ bubble trap 34 so that the level sensor prevented saline from contacting the hydrophilic membrane.

Appellant agreed Heyes did not indicate that its figures were drawn to scale. However, citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir 1991), Appellant argued that the drawings could be used to establish “relative sizes and relationship between the various components which are clearly depicted in those drawings.” Specifically, Appellant argued that the relative positions of aperture 30, level sensor 44, and the hydrophilic membrane of bubble trap 34 depicted in Heyes’ Figure 7 made it clear that Heyes’ bubble trap 34 was designed only for unidirectional flow. In response to the Examiner’s second counter argument, Appellant argued modification of Heyes’ bubble trap 34 to operate bi-directionally amounted to a significant change in the function of Heyes’ device.

The Board was persuaded by Appellant’s arguments. The Board agreed with Appellant’s interpretation of Heyes’ Figure 7 and pointed out that “[p]atent drawings may not be disregarded for items that they clearly show.” The Board also sided with Appellant’s position regarding the change in function and emphasized that “[i]f the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious.” The Board further noted the well-settled law that “which is within the capabilities of one skilled in the art is not synonymous with obviousness” and that “[t]he mere fact that the prior art may be modified in the manner suggested by the Examiner does not make the modification obvious unless the prior art suggested the desirability of the modification.”

Because the Board concluded that there was no suggestion in the applied art to modify Heyes’ system for unidirectional flow by Folden’s method of priming a dialysis system using bi-directional flow, the Board reversed the Examiner’s obviousness rejection.

Takeaway:  If a reference does not disclose that the drawings therein are to scale and is silent as to dimensions, arguments based on measurements of features in the drawings are of little value. However, an examiner can rely on features of drawings that are not explicitly described in a reference, if the meaning or intent of such features would be apparent to one of ordinary skill in the art viewing the reference. Ex parte Hogard illustrates a situation where an applicant was similarly able to rely on the manner in which a skilled artisan would have understood the drawings to rebut a rejection.

JudgesB. A. Franklin, J. B. Roberstson, and C. C. Kennedy


September 3, 2021by Yanhong Hu

In Ex parte Sharma (Appeal 2020-004468), the Patent Trial and Appeal Board (“Board”) considered the Examiner’s obviousness rejection of Appellant’s claimed method of treating once-through steam generator (OTSG) blowdown water for reuse based on “equivalents” allegedly described in a secondary reference.

Claim 1 was representative and the claimed method included, among other steps, a step of “settling precipitants out of said OTSG blowdown water for at least 12 hours to produce an acid clarified blowdown water having more than 50% of the acid insoluble organics removed.”

The Examiner found that Bansal, the primary reference, described a method of treating OTSG blowdown water by separating the solids from the liquid via a centrifuge and admitted that Bansal did not teach that solids and precipitants were settled out for at least 12 hours as claimed. However, the Examiner alleged that Cote, the secondary reference, described various equivalent separation devices, including settling ponds and centrifuges. The Examiner thus alleged claim 1 would have been obvious over Bansal in view of Cote.

Appellant countered that Cote did not teach that pond settling was “equivalent” to Bansal’s high speed centrifuging and particularly pointed out that the high pressure centrifuges described in Bansal exerted 3000-3500 times the force exerted in a settling pond.

The Board noted Cote disclosed that solids generated during wastewater processing of a phosphogypsum pond processes “may be removed by one or more suitable solids separation devices such as a clarifier, settling pond, lamella clarifier, upflow sludge blanket clarifier, disk filter, centrifuge, vacuum filter, dissolved air floatation device or the like.” According to the Board, Cote’s statement that “one or more” of these separation devices could be used only indicated that settling and centrifuges were both solids separation devices, but “not that they are equivalent.” Instead, as the Board continued, “the suggestion is that settling and centrifugation are complementary approaches that may be used in combination.”

Further, as the Board noted, Bansal disclosed that the smaller size and relative softness of the solids described therein limited the ability to separate liquid and solid phases by conventional centrifuging or hydrocycles and that the oily organics further limited ability to utilize filtering since the particles tended to stick together agglomerating and clogging filter media. Therefore, the Board found Bansal indicated that settling would not work in its process.

Citing In re Ruff, the Board emphasized “[t]hat two things are actually equivalents, in the sense that they will both perform the same function, is not enough to bring into play the rule that when one of them is in the prior art the use of the other is obvious and cannot give rise to patentable invention” and “[t]o rely on equivalence as a rationale supporting an obviousness rejection, the equivalency must be recognized in the prior art, and cannot be based on an applicant’s disclosure or the mere fact that the components at issue are functional or mechanical equivalents.”

Because the Examiner erred by finding that the prior art recognized settling and centrifugation as equivalents, the Board concluded one of ordinary skill in the art would not be expected to substitute settling for Bansal’s high pressure centrifugation and reversed the Examiner’s obviousness rejection.

Takeaway: As noted in Mat Barnet’s prior blog on interchangeable equivalents, for a component missing from a primary reference, U.S. patent examiners usually cite a secondary reference disclosing the missing component and resort to the rationale of simple substitution by alleging that the substituting component disclosed in the secondary reference is equivalent to one of the components in the primary reference (i.e., the substituted component). One justification for the substitution the examiners often rely on is that the secondary reference describes various components, including both the substituting and substituted components, by using terms such as “include,” “one or more,” and “at least one.” As illustrated by Sharma, such description alone cannot justify the substitution rationale. Instead, the equivalency must be described in the prior art references so that it is recognized by one of ordinary skill in the art in light of the prior art description.

Judges: G. C. Best, D. M. Praiss, D. L. Dennett


July 30, 2021by Yanhong Hu1

What does “up to at least 150 volts” mean? Does it mean 150 volts is a maximum voltage due to the use of the words “up to” or a minimum voltage due to the use of the words “at least”? This was the problem the Patent Trial and Appeal Board (“Board”) in Ex parte Bagehorn (Appeal 2020-004760) had to solve.

Claim 1 was the sole independent claim on appeal and was directed to a method for the electrolytic polishing of a metallic substrate. The claimed method included a step of “applying a current at a voltage of 270 to 315 volts.”

The Examiner rejected claim 1 as obvious over Clasquin in view of Kodera. Regarding the claimed voltage of “270 to 315 volts,” the Examiner believed Clasquin described an overlapping voltage range based on Clasquin’s disclosure in ¶ 49 that “it has been found that higher voltage up to at least 150 volts can be used.” The Examiner interpreted the phrase “up to at least 150 volts” as teaching a range of “at least 150 volts” and pointed to Clasquin’s disclosure in ¶ 63 that “[c]urrent densities as high as at least 225,000 A/m2 can be used at applied voltages of 150 volts or more” for “nickel based alloy 718” as a support.

Appellant argued the Examiner’s interpretation of the phrase indicated that he ignored the preceding words “up to” and failed to read Clasquin’s disclosure in ¶¶ 49 and 63 in the context of Clasquin as a whole. In particular, Appellant argued “up to at least 150 volts” implied a ceiling of 150V, while the words “at least” provided some flexibility to that ceiling so that Clasquin suggested a maximum voltage that is slightly higher than 150V, but not as high as the lower boundary of 270V recited by claim 1. Appellant further argued that the disclosure in ¶ 49 served as an umbrella disclosure and that Clasquin’s specific working examples, including ¶ 63, would be understood by a skilled artisan as falling within that umbrella. In addition, Appellant noted Table 5 of Clasquin, which disclosed more than two dozen examples, used a maximum voltage of 150V.

The Board sided with the Appellant. The Board agreed that the Examiner’s interpretation of the phrase did not adequately account for the words “up to,” which, by their plain meaning, suggested a maximum, not a minimum. The Board noted Clasquin disclosed in ¶ 49 that for certain metals, polishing with voltages above 40V was undesirable because voltages above 40V resulted in loss of luster; however, certain other metals did not demonstrate the same problem and it was for those metals that “higher voltages up to at least 150 volts can be used.” Therefore, the Board held that, in context, the words “at least” did not wholly negate the preceding words “up to” but rather suggested the ceiling indicated by the words “up to” may be somewhat higher than 150V. The Board agreed with the Appellant that this interpretation was supported by the examples disclosed in Table 5 of Clasquin and was consistent with Clasquin’s other disclosures in, for example, ¶¶ 57 and 95.

Regarding Clasquin’s disclosure in ¶ 63, the Board noted “150 volts or more” – in isolation – was consistent with the Examiner’s understanding of Clasquin. However, the Board found that when it was read in view of Clasquin’s other disclosures, a skilled artisan would not have understood ¶ 63 as suggesting that any voltage above 150V could be used even for nickel 718, as evidenced by the dozen nickel 718 based compositions disclosed in Table 5, for which voltages only ranged from 9.7V to 150V.

Therefore, the Board agreed with the Appellant and found Clasquin as a whole as suggesting a voltage ceiling of approximately 150V, with some flexibility. Because 270V, the recited lower boundary of the voltage range, was 80% greater than the 150V suggested by Clasquin and because the Examiner did not establish a person of ordinary skill in the art would have understood Clasquin as teaching or suggesting voltages as high as those of claim 1, the Board reversed the Examiner’s obviousness rejection.

Takeaway:  Although the term at issue in Bagehorn is not a claim term but a phrase in a cited reference, the interpretation principle is the same. That is, terms and phrases should be given the interpretation as understood by a person of ordinary skill in the art in light of the disclosure as a whole. Nevertheless, the confusion could have been avoided if a phrase such as “up to around 150 volts” had used instead of “up to at least 150 volts.”

Judges:  J. C. Housel, C. C. Kennedy, and J. E. Inglese


June 16, 2021by Yanhong Hu

Section 101 specifies four patent eligible categories: process, machine, manufacture, and composition of matter.  However, the U.S. Supreme Court has long interpreted § 101 to exclude the so-called “judicial exceptions” as patent eligible subject matter.  Specifically, the judicial exceptions are laws of nature, natural phenomena, and abstract ideas (mathematical formulas, certain methods of organizing human activity such as fundamental economic practices, or mental processes).  Therefore, a claim determined to be directed to a judicial exception is patent ineligible unless it is found that the claim as a whole includes additional elements “that amount to significantly more than the judicial exception.”

The USPTO published a revised guidance on the application of § 101 in January 2019 followed by an update in October 2019.  The Guidance and the Update set forth a step-by-step eligibility analysis, in which Step 2 is the Supreme Court’s Alice/Mayo two-part test to determine whether a claim is patent ineligible because it is directed to a judicial exception.  In particular, Step 2A and Step 2B of the Office’s eligibility analysis correspond to the first and second parts of the Alice/Mayo test, respectively.

Step 2A is a two-prong inquiry.  Under Step 2A Prong 1, an examiner should look to whether a claim recites any judicial exceptions.  If the answer is yes, it does not mean that the claim is “directed to” the judicial exception; instead, the examiner should proceed to Step 2A Prong 2 to look to whether the claim recites additional elements that integrate the judicial exception into a practical application.  If so, the claim is not directed to the judicial exception and thus is patent eligible.  Only when the claim recites a judicial exception and does not integrate that exception into a practical application does the examiner proceed to Step 2B to consider whether the claim recites additional elements that are significantly more than the judicial exception.

Step 2A Prong 2 is similar to Step 2B in that both analyses involve evaluating a set of the same considerations to determine if the claim is still patent eligible due to the recited additional elements.  However, although consideration of whether the additional elements represent well-understood, routine, conventional activity is included under Step 2B, such consideration is specifically excluded under Step 2A Prong 2, because additional elements that represent well-understood, routine, conventional activity may integrate a recited judicial exception into a practical application.

Applying the Office’s eligibility analysis, the Patent Trial and Appeal Board (“Board”) in Ex parte Moritz (Appeal 2020-004626) considered the Examiner’s rejection of Applicant’s claims as being directed to patent-ineligible subject matter.

Claim 1, which was illustrative, was drawn to “[a] multiplexed method to identify proteins to which a test compound binds in a sample containing numerous proteins or for identifying a compound capable of binding to a target protein contained in a sample comprising numerous proteins, including said target protein.”  The method included steps (a)-(c), which, according to the Applicant, described a prior art method for determining interaction of a test compound with a single protein.  However, the Applicant argued the invention itself was directed to “an improvement which permits multiplexing” of the prior art method and the improvement lied in requiring that the sample comprised numerous proteins and that the step (c) of determining the concentration of multiple proteins was performed by SWATH-MS or SRM-MS.

The Board first analyzed whether the claim recited any judicial exceptions under Step 2A Prong 1.  The Board determined that the claim did not recite any method of organizing human activity such as fundamental economic practices or any mathematical concepts.  The Board noted that the Applicant did not dispute the Examiner’s contention that the claim recited metal processes and found it was “arguably conceivable that at least the claimed steps of identifying a protein that binds a test compound could be performed in the mind.”  The Board thus concluded “the claims recite the judicial exception of mental processes, and, thus, abstract ideas” under the broadest reasonable claim interpretation standard and proceeded to analyze the claim under Step 2A Prong 2.

The Board emphasized that under Step 2A Prong 2, the claim elements must be analyzed both individually and as an ordered combination to determine whether the additional elements integrated the recited abstract idea into a practical application, such as an improvement to technology or to a technical field.  To do that, the specification should be evaluated to determine “if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.”  In addition, “the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement.”

Applying to the application at hand, the Board noted that the claimed steps recited a method of identifying and quantifying proteins to which a test compound bound in a sample containing numerous proteins, where the interaction between the test compound and proteins was determined using SWATH-MS or SRM-MS.  The Board found that the Specification described the invention as an improvement in the technical field of assays (such as thermal shift assays) that assessed the interaction of a compound with a protein.  The Board also found that the Specification specifically explained that the claimed application of SWATH-MS or SRM-MS to prior art thermal shift assays overcame obstacles associated with using such assays on “complex protein samples.”  The Examiner recognized the claim included additional elements of the sample preparation and separations steps.  However, as held by the Board, the Examiner erred in considering whether the additional elements were “routine and conventional data gathering activity” under Step 2A Prong 2 and also erred in failing to consider the claim as a whole.  The Board agreed with the Applicant that when considered as a whole, the claim was directed to “an improvement in determining test compound interaction with proteins” and the additional elements integrated the recited judicial exception into a practical application.

Accordingly, the Board reversed the Examiner’s rejection, finding that the claimed subject matter was patent eligible.

Takeaway:  Although analysis under Step 2A Prong 2 is similar to the analysis under Step 2B, a critical difference between the two is that the Step 2A Prong 2 analysis, which determines whether a claim is “directed to” a judicial exception, is performed without considering what is well-understood, routine, conventional activity.  Moritz also illustrates that a claim, even if it recites a judicial exception, can be found not to be directed to the judicial exception under Step 2A Prong 2 and thus patent eligible, if the claim elements, when considered as a whole, represent an improvement in a specific technology that is described in sufficient detail in the specification for a skilled artisan to recognize.

Judges:  F. C. Prats, T. Chang, and C. M. Hardman


May 5, 2021by Yanhong Hu1

When faced with a limitation involving an open-ended numerical range, an examiner will not only analyze for definiteness under 35 U.S.C. § 112(b) but also scrutinize whether the limitation satisfies the written description requirement and the enablement requirement under § 112(a).  In Ex parte Qiu (Appeal 2020-001512), the Patent Trial and Appeal Board (“Board”) considered and reversed the Examiner’s rejection of Appellant’s claims for failing to comply with the written description requirement.

Claim 1 was illustrative and read (in part):

A composition comprising a compound wherein the compound consists of end groups R1 and R2 and at least m repeating segments of the following structures:

wherein Y is an anionic group selected from the group consisting of: sulfate, carboxylate, phosphate, phosphonate, and sulfonate, …; wherein the compound comprises substantially no other anionic pendant functional groups, except those selected from the group consisting of: sulfate, carboxylate, phosphate, phosphonate, and sulfonate, wherein the compound has a number average molecular weight of no more than 10,000 grams/mole and an average number of anionic groups of greater than 2.

Noting that the specification disclosed examples wherein the average number of anionic groups ranged from 2.09 to 15, the Examiner rejected claim 1 as failing to meet the written description requirement because the range “greater than 2” did not have an upper limit.  In response to Appellant’s rebuttal arguments citing the Federal Circuit’s decision in Anderson Corp. v. Fiber Composites, LLC, the Examiner alleged Anderson only applied to the question of enablement.

The Board clarified that Anderson applied to both questions of enablement and written description.  As stated in Anderson, “[o]pen-ended claims are not inherently improper” and “[t]hey may be supported if there is an inherent, albeit not precisely known, upper limit and the specification enables one of [ordinary] skill in the art to approach that limit.”  The Board agreed with Appellant that since the claim required an upper limit for the molecular weight of the compound (“no more than 10,000 grams/mole”), the specification as a whole enabled a skilled artisan to determine the inherent upper limit on the number of anionic groups for any particular compound circumscribed by the claimed requirements.  That is, the Board found the specification conveyed with reasonable clarity to those skilled in the art that, as of the filing date sought, Appellant was in possession of the invention.

Accordingly, the Board found the specification supported the claimed subject matter.

Takeaway:  As compared with a numerical range in which both the lower and upper limits are specified, an open-ended range offers a broader scope.  However, an open-ended numerical range often puts an examiner, like the Examiner in Qiu, on alert.  The Anderson decision assures that an open-ended range is supported and enabled if the unspecified limit is inherent and the specification is sufficient to enable one skilled in the art to approach that limit.  As a backup position, an applicant should consider including at least one dependent claim reciting a concrete endpoint to “close” the open range.

Judges:  C. Q. Timm, K. M. Hastings, and J. B. Robertson