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November 23, 2020by Yanhong Hu

A threshold issue for the Patent Trial and Appeal Board (“Board”) to resolve is often claim interpretation.  It is well-settled that claims must be “given their broadest reasonable interpretation consistent with the specification” during patent examination.  In Ex parte Awad (Appeal 2019-005866), the Board reversed the Examiner’s obviousness rejection because the Board found the rejection was based on an unreasonably broad claim interpretation when the relevant claim language was read in light of the specification.

Claim 1 was illustrative and was drawn to a flexible solar panel, which contained a polymer matrix and a plant extract completely incorporated in the polymer matrix and “being a green-colored extract of B. vulgaris subsp. cicla, wherein the extract includes chloroplasts.”

The Examiner rejected the claimed solar panel as obvious over Ochiai in view of Pavokovic and Yang.  In particular, the Examiner found Ochiai taught a solar panel containing a PVA matrix and a plant extract completely incorporated in the polymer matrix wherein the extract included green-colored chloroplasts.  The Examiner admitted Ochiai did not disclose that the plant extract was “a green-colored extract of B. vulgaris subsp. cicla.”  However, the Examiner found Pavokovic taught that betalains, such as those from B. vulgaris subsp. cicla, were useful as “natural pigments” in solar cells and found Yang taught that incorporating chlorophyll-containing plant extracts in a PVA polymer matrix stabilized the extracts against light- and oxygen-induced damage.

In response to Appellant’s arguments that betalains described in Pavokovic were “classified in two groups: red-violet betacyanins and yellow betaxanthins” and that Pavokovic did not teach “the usage of a green, chloroplast-containing extract of B. vulgaris subsp. [cicla] in a [dye-sensitized solar cell],” the Examiner argued he did not rely on Pavokovic “for teaching the entirety of the claimed plant extract,” instead, he relied on Pavokovic “only to teach that betalain extracts of B. vulgaris subsp. cicla are useful as natural pigments in solar cells to convert radiant energy into electric energy.”  The Examiner argued “Ochiai teaches a plant extract that is green and includes chloroplasts” and further argued “even if the betalains of B. vulgaris subsp. cicla are colors other than green, the final product created from the combination of the prior art references still contains a plant extract comprising the green-colored chlorophyll chloroplasts taught by Ochiai because these betalains are added to Ochiai’s plant-extract composition.”

Therefore, as noted by the Board, the Examiner interpreted the claim limitation of the plant extract “being a green-colored extract of B. vulgaris subsp. cicla, wherein the extract includes chloroplasts” to encompass any combination of plant extracts “as long as the final combination (a) is green-colored, (b) includes a B. vulgaris subsp. cicla extract, and (c) includes chloroplasts.”

The Board found such interpretation was broader than what was reasonable when the claim language was read in light of the specification.  Specifically, the Board noted that the specification stated that the field of the invention related “particularly to a flexible solar panel including an extract of chard (B. vulgaris subsp. cicla)” and that at no point did the specification discuss extracts from any plant other than B. vulgaris subsp. cicla.  The Board further found the specification specifically taught “a green colored extract of B. vulgaris subsp. cicla” and each of the working examples used an extract from B. vulgaris subsp. cicla, not from any other plant and not mixed with any other plant extract.

The Board thus concluded that, when the claim language was interpreted in light of the specification, the broadest reasonable interpretation of the claim limitation required “an extract from B. vulgaris subsp. cicla that itself is green-colored and also contains chloroplasts; i.e., the chloroplasts are derived from B. vulgaris subsp. cicla.”  The Board further explained “‘being’ in the quoted limitation is construed to mean ‘consisting of’: the plant extract consists of a green-colored extract of B. vulgaris subsp. cicla, wherein the extract includes chloroplasts.”  The Board explicitly pointed out that “[to] interpret the quoted limitation to encompass a mixture of plant extracts would be inconsistent with the specification’s disclosure.”

With the correct claim interpretation, the Board further found none of the cited references disclosed a green-colored extract from B. vulgaris subsp. cicla that included chloroplasts as required by the claim limitation.  Because the Board did not find the Examiner had shown the plant extract as required by the claim would have been obvious over the cited references or that the prior art would have provided a reason to use such an extract in the claimed solar panel, the Board reversed the obviousness rejection.

Takeaway:  U.S. examiners are required to give claims their broadest reasonable interpretation in light of the specification.  However, in practice, they sometimes fail to consider whether their “broadest” interpretation of the claim language is “reasonable in light of the specification.”  Therefore, it is advisable to scrutinize an Examiner’s claim interpretation especially when there is a complicated claim limitation that includes multiple sub-features.  As illustrated by Awad, examiners sometimes fail to recognize that sub-features are related, instead treating them separately. This approach can lead to unreasonably broad interpretations.

JudgesE. B. Grimes, L. M. Gaudette, and L. Ren


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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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November 13, 2020by Richard Treanor

On November 9, 2020, the Patent Trial and Appeal Board issued a decision in Ex parte Tramontano et al. (Appeal 2020-002413) in which a misplaced claim interpretation/35 U.S.C. 112 argument distracted the Board from finding clear error in the Examiner’s obviousness rejection.

In Tramontano Claim 25, relating to the formation of a gel at a tissue treatment site, was the representative claim:

25. A process for forming a gel comprising:

forming an oxidized cellulose solution;

forming a precipitating composition; and

contacting the oxidized cellulose solution and the precipitating composition at a tissue treatment site thereby precipitating oxidized cellulose from the oxidized cellulose solution and forming the gel.

As explained in the Tramontano specification, the claimed gel may be used as an adhesive to seal tissue and/or to provide for the delivery of bioactive agents ([0274]).

During prosecution, the Examiner concluded that it would have been obvious to a person of ordinary skill in the art to substitute the cellulose ether used as the polymer in the cross-linked gels taught by Gehrke, with oxidized cellulose as taught by Blaskovich, at a tissue treatment site, as taught by Hubbard. In their Appeal Brief Appellants argued, among other things, that none of the cited references disclosed their claimed “precipitating composition” and, in response to a statement made by the Examiner in the Advisory Action (“it is not clear what the precipitation composition ….comprises”) argued to the Board that the lack of a 35 U.S.C. 112 rejection meant that the claim term “precipitation composition” was definite. Appellants further provided the Board with a legal framework for determining the meaning of a claim term, and argued that the references did not disclose the use of a “precipitating composition” as properly understood under their framework.

In affirming the rejection the Board first felt “obliged to make several initial points,” constituting over four full pages of their nine page analysis, the first of which was to correct Appellants’ legal framework for determining the meaning of a claim term, and the second of which was to apply the correct standard and find that the Blaskovich reference did indeed disclose the use of a “precipitating composition.” In coming to this conclusion and affirming the rejection, the Board characterized Appellants’ arguments regarding definiteness as “largely irrelevant” in view of the acknowledged fact that no 35 U.S.C. 112, second paragraph, rejection was at issue.

In Tramontano, the Board was clearly distracted (and perhaps irritated) by Appellants’ unnecessary arguments regarding definiteness to the point that Appellants’ other, stronger, arguments were ignored. In this regard, one of the applied references, Hubbard, was cited as teaching the delivery of oxidized cellulose, in gel form, to a tissue site. However, while Appellants argued that the combined references failed to suggest contacting an oxidized cellulose solution and a precipitating composition at a tissue treatment site, thereby forming the gel at the treatment site as claimed, this argument was not specifically addressed by the Board. Instead, the Board emphasized the presence of a “precipitating composition” and “oxidized cellulose solution” in the Gehrke and Blaskovich references.

Takeaways:  The Tramontano case illustrates the importance of leading with the best arguments and focusing the Appeal Brief on issues of clear error in the rejections of record. In addition, the Tramontano case provides us with a reminder to review claims for the presence of unnecessary steps, such as the “forming” steps in Claim 25 above. Such unnecessary steps can provide infringers with the possible defense of “divided infringement” if third parties perform certain steps within a claimed method.

25. (Amended) A process for forming a gel comprising:

forming an oxidized cellulose solution;

forming a precipitating composition; and

contacting the an oxidized cellulose solution and the a precipitating composition at a tissue treatment site thereby precipitating oxidized cellulose from the oxidized cellulose solution and forming the gel.

Judges: Prats, Katz, New


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November 10, 2020by Christopher Bayne

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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


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November 6, 2020by Beau Burton

On September 30, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Drozdenko (Appeal No. 2020-001293) reversing an Examiner’s obviousness rejection for its erroneous applications of In re Rose, 220 F.2d 459 (CCPA 1955) and “design choice.”

Claim 1 at issue in Drozdenko is representative and stated:

A blade comprising:

an airfoil … including a body formed of an aluminum containing material;

a sheath … with a sandwich … including an outer adhesive layer adjacent the sheath, an intermediate [fabric] layer and an inner adhesive layer adjacent the body;

wherein said fabric layer is a woven fabric layer; and

wherein said woven fabric layer has holes that are less than .001 inch on average.

Decision on Appeal, Appeal No. 2020-001293, at 2 (P.T.A.B. Sept. 30, 2020) (non-precedential) (emphasis added).

Although the Examiner admitted that the prior art failed to disclose a fabric layer with holes less than 0.001 inch on average, the Examiner argued that “it would have been an obvious matter of design choice … to have [the] hole size claimed … such a modification would have involved a mere change in size of a component. A change in size is generally recognized as within the level of ordinary skill in the art.” Final Rej., at 4 (citing In re Rose) (emphasis added).

The Examiner’s rejection suffered two critical deficiencies. First, a finding of obvious design choice is precluded when the claimed structure and the function it performs are different from the prior art. See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992). And in this case, the Appellant’s specification differentiated its woven fabric from the prior art scrim having larger holes.

Second, In re Rose applies to a change in the overall size of an article rather than the size of an individual component as explained by the Board below:

In Rose, the appellant argued that the claimed “lumber package” was large and required a lift truck for handling; whereas, the prior art packages (a package of relatively small pieces of lumber and a package of window screen frames) could be lifted by hand. The court held that “this limitation [(i.e., size and weight of the package)] is [not] patentably significant since it at most relates to the size of the article under consideration which is not ordinarily a matter of invention.

Here, in contrast, the Examiner does not propose a change in the overall size of the article under consideration (i.e., a blade (claim 1); an engine (claim 11)). Instead, the Examiner proposes changing the structure of Parker’s woven fabric (a scrim) to that of a tightly woven fabric having holes less than .001 inch on average, even though the Specification describes the tightly woven fabric as performing differently from a scrim.

Decision, at 3. Having failed to provide any other reason to substitute a woven fabric having holes that are less than 0.001 inch on average for the scrim described in the prior art, the Board declined to sustain the Examiner’s obviousness rejection.

Takeaways: The court in Rose did not address a modification in which the size of a particular component of an article is modified without a respective size change in the remaining components. Nevertheless, Rose is routinely misapplied to argue the obviousness of changing the size of a particular component analogous to Drozdenko. Thus, when Rose is applied in a rejection, the first step is to determine whether the resizing in question is for the entire article or only a component thereof. If it is the latter, then the Examiner’s reliance on Rose is misplaced.

Finally, to the extent that “design choice” may apply, the specification should be consulted to determine whether the change in size results in a difference in performance or function. A more detailed example of the “design choice” doctrine can be found here.

Judges: P. Kauffman, A. Reimers, T. Hutchings


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November 5, 2020by Mamoru Kakuda

侵害が主張されていないクレームを含むクレームについて、被告が無効の反訴をした場合、IPRがinstituteされうるか、という問題について判断した特許庁審判部の命令 (Order) が2020年9月2日に出ています (AMP Plus, Inc. (dba ELCO Lighting) v. DMF, Inc., Case IPR2019-01094)。


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November 2, 2020by Yanhong Hu

An examiner sometimes raises an obviousness rejection under the “design choice” doctrine, alleging a claimed feature, such as a certain dimension, shape, or arrangement, is merely a “design choice” that would have been obvious to a person of ordinary skill in the art.  In Ex parte Elliott, the Patent Trial and Appeal Board (“Board”) considered the Examiner’s obviousness rejection based on “design choice” and reversed the rejection because the Board found the Examiner did not provide evidence or reasoning adequate to support such a determination and Appellant’s specification, on the other hand, presented evidence that the recited structure solved a stated problem.

Claim 1 was illustrative of the claims on appeal in Elliott and was directed to an edible animal chew that had a particular structure, including “an internal support structure comprising inner walls and at least three struts.”

The Examiner found the primary reference, Nie, disclosed an extruded animal chew and the secondary references, Heyman and Tintle, taught edible food products (such as ice cream cones and pasta) that included internal walls and struts.  The Examiner thus concluded it would have been obvious to provide Nie’s extruded animal chew with internal walls and struts as taught in Heyman and Tintle “as a manufacturing choice for the design of the pet chew.”

The Board, however, agreed with the Appellant that “there is no teaching or suggestion in [Heyman or Tintle] that it would be desirable to provide the support structures disclosed therein in a dog chew.”

Citing In re Kuhle, in which the court found the use of a claimed feature would be an obvious matter of design choice when it “solves no stated problem” and “presents no novel or unexpected result” over the disclosed alternatives, the Board noted that “[d]esign choice may serve as a basis for obviousness where alternative elements or configurations in the prior art perform the same function as the claimed aspects with no unexpected results.”  The Board further emphasized “[i]n the context of a rejection based on design choice, the relevant issue is whether the alleged differences between the claimed invention and the prior art ‘result in a difference in function or give unexpected results.’”

The Board found Appellant’s specification taught that the recited internal support structure had certain functions, such as increased chewing time and reduced calorie content, in that the specification explicitly described that the internal support structure within the edible chew “provides longer lasting time per gram of product.”  Therefore, the Board found Appellant’s specification presented evidence that the recited structure solved a stated problem.  By contrast, as noted by the Board, the Examiner failed to identify evidence or provide sufficient reasoning supporting his determination that the difference between Nie’s animal chew having no internal structure and Appellant’s claimed animal chew having the specified internal walls and struts would have been an obvious design choice.

Because Appellant’s specification presented evidence showing the claimed feature solved a stated problem while the Examiner merely presented a conclusory finding, the Board reversed the Examiner’s obviousness rejection based on “design choice.”

Takeaway:  A critical issue in addressing an obviousness rejection based on “design choice” is whether a claimed feature and the function it performs solve a stated problem or are otherwise different from the prior art.  As illustrated by Elliott, a disclosure in the specification of the benefits or results provided by a claimed feature of purported design choice could weigh against obviousness.  Therefore, when drafting a patent application, an applicant should consider including possible results, advantages, and benefits of every inventive feature, when applicable, to address a potential obviousness rejection based on “design choice.”

Judges:  D. M. Praiss, C. C. Kennedy, and J. R. Snay


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October 30, 2020by Matthew Barnet

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 27, 2020by Jacob Doughty

Ex parte Chuang is a 2008 decision of the Board of Patent Appeals and Interferences (BPAI) that is listed among the Patent Trial and Appeal Board’s (PTAB) informative decisions. Ex parte Chuang is indicated by the PTAB to be informative as to “Anticipation – 35 U.S.C. § 102… cDNA.”

According to the PTAB’s Standard Operating Procedure, “[i]nformative decisions set forth Board norms that should be followed in most cases, absent justification, although an informative decision is not binding authority on the Board.”

In Ex parte Chuang, the BPAI considered whether a claim reciting an isolated polypeptide was properly rejected as anticipated by prior art disclosing a cDNA encoding the recited polypeptide.

Independent claim 4 was at issue:

An isolated polypeptide, comprising the amino acid sequence of SEQ ID NO: 1.

In rejecting the claim, the examiner relied on prior art that disclosed isolation of a polynucleotide that encoded a polypeptide having 100% homology to SEQ ID NO: 1. While applicant conceded that, in the prior art, “[o]ne of the myriad cDNAs encodes an amino acid sequence identical to SEQ ID NO: 1,” it was undisputed that the claimed proteins were not physically created in the prior art. Relying on a prior BPAI decision (Lee v. Dryja, 79 U.S.P.Q.2d 1614 (B.P.A.I. 2005)), applicant asserted that disclosure of the cDNA at best rendered its encoded protein obvious – “the fact that a novel product can be readily made does not render the product not novel.”

The BPAI disagreed, stating that an invention need not have been actually made in the prior art for disclosure of such invention to be enabling. The BPAI noted that applicant did not dispute that the prior art was enabling for expression of the claimed polypeptide, and further distinguished over its prior decision in Lee v. Dryja. The BPAI pointed out that, in Lee v. Dryja, the issue was whether a party was in possession of a single enabled embodiment and, further, there was evidence in Lee v. Dryja that the disclosed nucleotide sequence did not, in fact, express the protein at issue.

The BPAI affirmed the examiner’s anticipation rejections and noted that there is no “generic rule that cDNAs cannot anticipate proteins.”

Takeaway: This case provides insight into how the USPTO has viewed the relationship between nucleotide sequences and the polypeptides they encode in the context of identifying enabling prior art. It is apparent that the BPAI would have required some evidence of obstacles preventing a skilled artisan from navigating from the disclosed cDNA to the claimed isolated polypeptide to reverse the examiner’s rejections. Of course, this case predates the Supreme Court’s recent eligibility jurisprudence, including Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013), which likely would have even further complicated applicant’s quest for enforceable patent rights.

Judges: Grimes, Lebovitz, Fredman


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October 21, 2020by Christopher Bayne

A threshold issue in the context of double patenting is whether the applications/patents in question have (i) at least one common applicant, and/or are (ii) commonly assigned/owned or (iii) non-commonly assigned/owned but subject to a joint research agreement.  See M.P.E.P. § 804.

On September 30, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Bayer CropScience NV reversing nonstatutory obviousness-type double patenting rejections issued against U.S. Patent No. 5,561,236 (“the Leemans `236 patent”), because the Examiner construed the phrase “commonly owned” to include different assignees that are wholly-owned subsidiaries of a common owner.[1]

The Examiner issued two sets of nonstatutory obviousness-type double patenting rejections against the Leemans `236 Patent—(a) double patenting rejections over U.S. Patent No. 5,273,894 (“the Strauch `894 patent”), and (b) double patenting rejections over U.S. Patent No. 5,276,268 (“the Strauch `268 patent”). Throughout the decision, the Board refers to the Strauch `894 patent and the Strauch `268 patent collectively as “the Strauch patents.”

It was undisputed by the parties that the Leemans `236 patent is currently co-assigned to both Bayer CropScience NV and Biogen Idec NA Inc., and that the Strauch patents are currently assigned to Bayer Cropscience AG—as illustrated below. It was also undisputed that the subject matter claimed in the Leemans `236 and Strauch patents is overlapping.

Although the parties agreed that the Leemans `236 and Strauch patents do not have any inventors in common, the Examiner determined that—because Bayer CropScience NV and Bayer CropScience AG are wholly-owned subsidiaries of Bayer AG—Bayer AG is a “common owner” of the Leemans `236 and Strauch patents.

The Board disagreed with the Examiner’s finding that the Leemans `236 and Strauch patents are “commonly owned” and, instead, agreed with the Patent Owners of the Leemans `236 patent that Bayer CropScience NV and Bayer CropScience AG are “two separate and independent companies.”

Citing earlier decisions by the US Supreme Court, the Federal Circuit and several District Courts, the Patent Owners argued that under U.S. law “a parent company does not own or have legal [title] to its subsidiary’s patents even when the subsidiary company is incorporated in a U.S. jurisdiction.”  The Board agreed that the cases cited by the Patent Owners—including cases dealing with “choice of law”—are highly relevant to determining whether the Leemans `236 and Strauch patent are “commonly owned.”

In response to arguments made by the Examiner based on the policy justifications undergirding obviousness-type double patenting, the Board pointed out that the Federal Circuit in a related case found that the policy justifications underlying obviousness-type double patenting alone do not warrant a conclusion that the Leemans `236 and Strauch patent are “commonly owned” by Bayer AG.  As explained by the Board,

Thus, for similar reasons to those relied upon in the Dow arbitration decision, the legal authority and evidence Patent Owners rely on to support their position that an overlap in ownership does not exist between the Leemans ’236 and Strauch patents is more persuasive than the Examiner’s public policy justification. We are not persuaded that Bayer AG’s alleged “beneficial ownership” of the Leemans ’236 and Strauch patents alone is sufficient to render the Leemans ’236 and Strauch patents “commonly owned” for the purposes of obviousness-type double patenting. Nor are we persuaded that the underlying policy justifications for obviousness-type double patenting show common ownership.

Judges:  R.M. LIBOVITZ, R-L.P. GUEST and J.E. INGLESE (Opinion by INGLESE)

[1]     See also related Ex parte Bayer Cropscience NV and Ex parte Bayer Cropscience NV issued by the Board on September 30, 2020.