August 14, 2020by Yanhong Hu1

In addition to the indefiniteness rejection, the Patent Trial and Appeal Board (“Board”) in Ex parte Castellana (Appeal No. 2019-006605, July 20, 2020) (previously discussed here) considered and reversed the Examiner’s obviousness rejection.

The application at issue related to a product for treating skin or mucous membranes in the medical, aesthetic, and/or cosmetic field.  The Inventor intended to provide a trichloroacetic acid (TCA)-based product that “allows a tissue renewal due to the TCA, but without damaging the surface layers of the epidermis.”  Independent claim 104, as a representative claim on appeal, was drawn to “[a] product for treating the skin and mucous membranes selected from a cream, an ointment, a liquid, a gel, and an aerosol” defined by product-by-process limitations.

The Examiner rejected claim 104 under pre-AIA 35 U.S.C. § 103(a) as obvious over US 5,560,857 (“Sakon”), which related to a solution for cleaning silicon semiconductors and silicon oxides.  The Examiner, taking into account “the inferences and creative steps that a person of ordinary skill in the art would employ,” found the aqueous acidic solution described in Sakon corresponded to the claimed liquid product and concluded “it would have [been] obvious to have selected various combinations of various disclosed ingredients … from within a prior art disclosure, to arrive [at] compositions ‘yielding no more than one would expect from such an arrangement.’”

Appellant argued a person of ordinary skill in the art would have been “a clinical researcher or medical doctor with extensive dermatological expertise,” who would not have sought to modify “[Sakon which is]a reference disclosing an industrial process, e.g., cleaning [] semiconductor surface[s]” to devise a treatment for skin and mucous membranes.”  Appellant further argued the Examiner failed to “provide any motivation other than a generic statement that the elements of the claims existed individually, and that their re-arrangement is obvious.”

The Board noted a prima facie case of obviousness required “a suggestion of all limitations in a claim” and “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new inventions does.”  The Board applied the “analogous arts test,” which governed the question of whether a skilled artisan would have looked to an unrelated prior art reference.  The Board emphasized that, under this test, “[an analogous art] reference is either in the field of the applicant’s endeavor or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on [that] reference as a basis for [obviousness] rejection.”

The Board noted that the claimed invention was in the dermatological field, while Sakon was in a remote field of semiconductor cleaning solutions.  The Board found the Examiner did not establish that Sakon was in the same field of endeavor as Appellant’s invention or that the reference was pertinent to the same problem as faced by Appellant.  The Examiner also failed to explain why a skilled artisan in the art of semiconductor cleaning solutions would have modified the component amounts to arrive at the claimed invention in the dermatological field.  The Board further found the Examiner did not explain why a skilled artisan in the dermatological field would have had a reason “to combine the elements [disclosed in Sakon] in the way the claimed new invention does.”  Accordingly, the Board agreed with Appellant and found the Examiner made a reversible error in the obviousness rejection.

Takeaway:  A proper reference relied on in an obviousness rejection must be analogous art to the claimed invention.  As identified by the Board in this case, there are two prongs under the “analogous arts test” – one is the “same field of endeavor” prong; and the other is the “reasonably pertinent” prong.  Under the “reasonably pertinent” prong, a reference is analogous art even if it is not in the same field of endeavor as the claimed invention as long as the reference is reasonably pertinent to the problem faced by the inventor.  Otherwise, the reference is not proper.

Therefore, when an examiner relies on a reference not in the same field of endeavor as the claimed invention in an obviousness rejection, the rejection can be rebutted (1) if the Examiner does not correctly identify the problem faced by the inventor; or (2) if the Examiner fails to explain why a skilled artisan seeking to solve the identified problem would have looked to the reference to find a solution to the problem; or (3) if the reason provided by the examiner would not be deemed by a skilled artisan as reasonably pertinent to the problem.

Judges:  J. N. Fredman, D. Katz, and J. G. New

by Yanhong Hu

Yanhong (Claire) Hu, Ph.D., is a patent attorney and partner at Element IP. She is active in patent preparation and prosecution, post-grant proceedings, and legal opinions and counseling. Her knowledge and experience in a wide variety of technical fields, combined with her legal expertise, allow her to appreciate various technologies to successfully and efficiently assist her clients.