October 13, 2021by Beau Burton

Equivalence is a common tool used by Examiners to demonstrate the obviousness of a claimed component that is known to be interchangeable with a component in the prior art. However, Ex parte Breder illustrates that the interchangeability alone is insufficient for obviousness – the context of the equivalence is key. Appeal No. 2021-002289 (PTAB Oct. 5, 2021) (non-precedential).

In Breder, the claims were directed to a method of antagonizing 5-HT7 and 5-HT1B receptor activity in a patient suffering from ADHD by administering viloxazine. The primary reference relied on by the Examiner taught a method of treating ADHD with a norepinephrine reuptake inhibitor reboxetine. The primary reference emphasized the high selectivity of reboxetine for norepinephrine processing and its efficacy for treating ADHD, but said nothing whatsoever about viloxazine.

Attempting to present a prima facie case of obviousness for the treatment of ADHD with viloxazine, the Examiner found a secondary reference that disclosed reboxetine and viloxazine as norepinephrine reuptake inhibitors and alleged that a skilled artisan “would have been motivated to substitute the norepinephrine reuptake inhibitor, viloxazine, … with the norepinephrine reuptake inhibitor, reboxetine, in the method of treating ADHD.” Despite this apparent equivalence, the Board did not agree.

From the Board’s perspective, any functional equivalence between viloxazine and reboxetine as norepinephrine reuptake inhibitors was outweighed by the secondary reference had nothing to do with ADHD. In fact, the secondary reference was directed to a topical composition for the transdermal delivery of active agents for ailments such as muscle pain and muscle cramps, which could optionally include norepinephrine reuptake inhibitors. According to the Board, the “sole nexus between the teaching of [the prior art]” is “that reboxetine and viloxazine are norepinephrine reuptake inhibitors,” and this was not enough.

Simply put, the Board did not agree that an optional ingredient in a topical composition for treating muscle pain provided sufficient motivation for a skilled artisan to replace the reboxetine with viloxazine in a complexly different method for treating ADHD, with a reasonable expectation of success. The primary reference’s emphasis on the high selectivity and efficacy of reboxetine bolstered this conclusion.

Takeaway: Context is key. Functional equivalence can be essential for a prima facie case when the primary reference lacks a claimed component but includes a component known to be interchangeable with it. But as shown by Breder, this functional equivalence will not carry the day when the references being combined have nothing in common. Therefore, it is important to thoroughly assess the purpose and end use of each of the references being combined when an Examiner relies on a theory of functional equivalence for the obviousness of a claimed component.

Judges: R. Lebovitz, J. New, D. Cotta


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


October 1, 2021by Matthew Barnet

Process (or method) claims recite one or more actions or steps to be performed. For example: a process for producing NaCl, comprising steps A, B and C. In contrast, product-by-process claims recite a product that is produced by a certain process. For example: NaCl, produced by a process comprising steps A, B and C.

In determining whether a process claim is obvious, a U.S. examiner compares the claimed process to the prior art, and asks whether the prior art suggests all the limitations (i.e., all actions or steps) recited in the process claim. In the example above, the examiner would assess the prior art for a suggestion of steps A, B and C.

The inquiry is somewhat different for a product-by-process claim. For infringement purposes, a product defined by a product-by-process claim is limited by the process. However, the patentability of the product does not depend on the process but on the product itself. In the example above (NaCl, produced by a process comprising steps A, B and C), the examiner would assess the prior art for a suggestion of the product (NaCl) not for a suggestion of the process (steps A, B and C). If the examiner could provide a rationale tending to show that the product appeared to be the same as or similar to that of the prior art, although produced by a different process, the burden would shift to the applicant to provide evidence establishing a nonobvious difference between the claimed product and the prior art product.

This important difference between process claims and product-by-process claims is illustrated in the recent Patent Trial and Appeal Board (“Board”) case of Ex parte Liu (Appeal No. 2020-006403).

Independent claim 1 recited:

A pot furnace low-temperature calcination method comprising:

providing a pot;

providing a flame path proximate to the pot such that heat from the flame path heats the pot;

controlling a flame path temperature and discharge rate of the pot furnace such that petroleum coke is calcined in the pot at a temperature range from 1150°C to 1220°C, the discharge rate of the pot being controlled to be 110 – 120 kg/hr; and

reducing an amount of desulfurization of the petroleum coke during calcination so that true density of the calcined coke is between 2.05 and 2.07 g/cm3;

wherein the flame path temperature is controlled to be less than 1250°C.

The examiner rejected claim 1 as obvious. In response, the applicant argued that the applied prior art did not suggest the process limitation of a discharge rate of 110 to 120 kg/hr. On appeal, the examiner seemed to apply a product-by-process interpretation to the claimed discharge rate: “It is not necessary for the reference to make or recognize the same mental correlation or relationship as appellant, nor to heat for the same reasons, as long as the product made is the same or essentially the same” (emphasis added).

The Board agreed with the applicant. The Board noted that “the claim is a method claim and not a product-by-process claim. Thus, it is the method step recitations that cannot be skipped in making an obviousness determination.” Accordingly, the Board reversed the obviousness rejection.

Takeaway: It is important to keep in mind the difference between process claims and product-by-process claims. If an examiner refuses to give patentable weight to a process limitation because he considers it to be a product-by-process limitation, this can form the basis of a successful appeal.

Judges: Franklin, Gupta, Inglese


September 24, 2021by Jacob Doughty

Ex parte Slark, is a recent decision of the Patent Trial and Appeal Board (PTAB) addressing whether the changes to a prior art composition that would result from an examiner’s proposed modification were sufficiently dramatic to negate obviousness.

In Ex parte Slark, the claim at issue was directed to a hot melt adhesive composition. The relevant claim recited:

A non-reactive hot melt adhesive composition comprising two thermoplastic polyurethane copolymers (A) and (B), wherein

the thermoplastic polyurethane copolymer (A) comprises a reaction product of at least one polyester polyol, and at least one polyisocyanate, and has a number average molecular weight (Mn) of at least 25,000 g/mol;

the thermoplastic polyurethane copolymer (B) comprises a reaction product of at least one polyester polyol, and at least one polyisocyanate, and has a number average molecular weight (Mn) of less than 25,000 g/mol; and

wherein the hot melt adhesive composition has a melt viscosity of 1,000 to 100,000 mPas at 160 °C and

wherein both thermoplastic polyurethane copolymers (A) and (B) are essentially free of NCO groups.

The examiner cited a primary reference that disclosed a solvent-free hot melt adhesive composition including two thermoplastic polyurethane copolymers, each copolymer being a reaction product of at least one polyester polyol and at least one polyisocyanate. The examiner acknowledged that the primary reference failed to disclose that the hot melt adhesive was non-reactive or that the polyurethane copolymers were essentially free of NCO groups. The examiner noted particularly that the preferred ratio of NCO groups to OH groups in the copolymers of the primary reference (>1) would not result in a “non-reactive” composition in which the copolymers were “essentially free of NCO groups.”

To address this deficiency, the examiner turned to a secondary reference. The secondary reference disclosed a solvent-free hot melt adhesive composition including a polyurethane obtained from a polyester polyol and an isocyanate, in which the ratio of NCO groups to OH groups in the polyurethane (~1) resulted in a “non-reactive” composition in which the polyurethane was “essentially free of NCO groups.” The examiner asserted that it would have been obvious to modify the polyurethanes of the primary reference to have the NCO:OH ratio of the polyurethane of the secondary reference, because the secondary reference disclosed that the ratio was suitable for reacting a polyester polyol with a polyisocyanate such that the resulting hot melt adhesive would be essentially free of NCO groups and nonreactive.

Applicant argued over the rejection by relying on two non-obviousness arguments that are explicitly identified in the MPEP: (1) modifying the composition of the primary reference as proposed by the examiner would render the composition “unsatisfactory for its intended purpose” (MPEP 2143.01.V); and (2) modifying the composition of the primary reference as proposed by the examiner would “change the principle of operation” of the composition (MPEP 2143.01.VI).

With respect to (1), applicant argued that the primary reference was directed to a reactive thermoset hot melt adhesive composition – not a non-reactive thermoplastic composition as required by the claims. Applicant noted that the purpose of the primary reference was to provide a moisture reactive polyurethane hot melt adhesive having a particular cured strength and excellent adhesion to metals. Applicant argued that the examiner’s proposed modification would eliminate essentially all of the isocyanate moieties in the prepolymers, rendering them non-reactive and unsatisfactory for the intended purpose of the primary reference. With respect to (2), applicant similarly argued that, because the examiner’s proposed modification involved eliminating the isocyanate groups from the prepolymers, the principle of operation of the composition of the primary reference would be different – the composition would no longer be a reactive, moisture-curable thermosetting polyurethane adhesive composition.

The PTAB agreed with applicant. The PTAB indicated that the “intended purpose” and “principle of operation” of the adhesive composition of the primary reference were intertwined. The examiner attempted to broadly characterize the composition of the primary reference as involving adhesion – an intended purpose and principle of operation that would be preserved even if the examiner’s proposed modification was made. However, the PTAB indicated that the examiner should have considered the contribution of the primary reference to the art when identifying the intended purpose and principle of operation. The PTAB noted that the primary reference expressly stated that mixtures of isocyanate-terminated polyurethanes provide good adhesion to metal substrates by achieving an initial bond strength upon cooling on a substrate and eventually achieving an ultimate bond strength when cured with ambient moisture. The PTAB agreed with applicant that the examiner’s proposed modification would render the composition of the primary reference unsatisfactory for its intended purpose and would change the principle of operation.

Takeaway: When facing obviousness rejections of chemical compositions, it can be difficult to persuade an examiner that he or she has failed to make a prima facie case. Absent a plain oversight by the examiner regarding the scope of the claims or prior art, it is often necessary to significantly narrow the scope of the claims and/or rely on experimental evidence of unexpected results. However, there are legal arguments that can be effective in overcoming obviousness arguments without amendments or experimental results – and the MPEP remains a great source for identifying compelling reasoning for arguing over obviousness rejections.

Judges: Hanlon, Housel, Inglese


September 17, 2021by Richard Treanor

In a decision helpful to companies involved in the formulation of generally known ingredients (e.g., lubricants, glass, shampoos, cosmetics, etc.), the PTAB in Ex parte DeGeorge recently overturned an Examiner’s “kitchen sink” rejection based on the combination of two references, one of which listed six of Applicant’s required seven claimed components, all of them optional.

In DeGeorge the Examiner made a typical “kitchen sink” rejection by applying a reference from Applicant’s same general field that listed almost all of Applicant’s claimed components. Arguing that the claimed components were old, well-known, and used by Applicant for their intended purpose, the Examiner found the claim to be obvious by metaphorically throwing everything from the reference – except the kitchen sink (hence the name for such rejections) – into the composition.

In overturning the rejection, the Board found that because the Examiner “failed to identify a reason that would have prompted a person of ordinary skill in the art to combine the claimed components as the new invention does,” and because the Examiner had not “identified a reason to select and combine these independently listed components, absent Appellant’s disclosure” the Examiner failed to satisfy the requirement set out in KSR that an Examiner must provide some “articulated reasoning with some rational underpinning to support a legal conclusion of obviousness.”

Further, and in a statement particularly helpful to applicants fighting such “kitchen sink” rejections, the Board held that “[w]ithout a reason to combine the claimed components apart from their known uses, the Examiner’s reasoning relies on ‘hindsight reconstruction to pick and choose among isolated disclosures in the prior art.’” This requirement for more than just known utility to justify the selecting and combining of multiple known components in an obviousness rejection provides applicants with many options for rebuttal, as references typically used in “kitchen sink” rejections often simply list the claimed components with little or no description of their individual properties. Because Examiners very rarely provide supplemental references describing a particular component’s properties and behavior, “kitchen sink” rejections such as the one in DeGeorge may now be easier to rebut at the PTAB in view of this decision.

Judges: D. Katz, J. New, R. Pollock


September 10, 2021by Beau Burton1

In Ex parte Johnson, the Patent Trial and Appeal Board (“Board”) rejected an Examiner’s construction of a claim term because it conflicted with the meaning given in other patents from analogous art. 

The claims on appeal in Johnson were drawn to a prosthetic heart valve including, inter alia, a “cloth-covered undulating rod-like wireform.” Appellant’s specification defined the term “wireform” as “an elongated rod-like structure formed into a continuous shape defining a circumference around a flow orifice for supporting flexible leaflets in the various prosthetic valves herein.”  See US 2017/0239044, ¶ [0041]. 

In rejecting the claims as anticipated by US 5,928,281 (“Huynh”), the Examiner relied on element 99 of Huynh, which is shown below and linked here for convenience: 

Applying the broadest, reasonable interpretation and relying on a dictionary published in 2020, the Examiner found that element 99 of Huynh was a rod-like wireform because it had “an elongated structure with a shape similar to a stick, wand, staff, or the like.”  

Appellant disagreed with the Examiner’s construction, arguing element 99 of Huynh referred to a cloth top edge of a stent assembly rather than an “undulating rod-like wireform formed into a continuous shape having alternating cusps and commissures around a periphery.” Appellant’s argument was supported by Huynh’s description of element 99 as an “upper surface 99 (see FIG. 1) of [the] stent” and Huynh’s use of the term “wireform” elsewhere to refer to a “wire” or “wire-like” structure. Appellant’s construction was also consistent with the description of “wireform” in two separate analogous references to mean a bent “wire” structure (US 6,539,984 B2, issued Apr. 1, 2003) and a bent, machined, or molded “wire-like” structure (US 7,871,435 B2, issued Jan. 18, 2011).  

Rejecting the Examiner’s construction as unreasonably broad, the Board noted: 

It is well settled that prior art references may be indicative of what all those skilled in the art generally believe a certain term means . . . [and] can often help to demonstrate how a disputed term is used by those skilled in the art. Accordingly, the PTO’s interpretation of claim terms should not be so broad that it conflicts with the meaning given to identical terms in other patents from analogous art. 

Relevant to the Board’s decision were the contemporaneous patents and even the prior art relied on in the rejection, all of which were consistent with Appellant’s specification and construction.  

With Huynh lacking the claimed cloth-covered undulating rod-like wireform, the Board reversed the anticipation rejection.  

Takeaway: While it can be difficult to rebut an Examiner’s unreasonably broad construction of a claim term when the specification does not define, or does not sufficiently define, the claim term in question, valuable rebuttal evidence may be found in contemporaneous publications. As shown in Johnson, the Board found the consistent usage of the claim term in three analogous publications (including the allegedly anticipating reference) trumped the Examiner’s construction based on a generic dictionary definition. This is not to say dictionaries are always a poor source of evidence, but dictionaries typically include multiple definitions and a general definition may not accurately reflect how the claim term is used in the relevant art.  

JudgesS. Staicovici, E. Brown, W. Capp 


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


August 26, 2021by Matthew Barnet

When U.S. patent examiners cannot find all the components of a claim in a single prior art reference, they usually cite a secondary reference for a missing component. In such cases, examiners often take the position that the missing component is equivalent to one of the components in the primary reference, and that it would have been obvious to replace the component in the primary reference with the equivalent component from the secondary reference.

Sometimes, however, the two components are not actually interchangeable equivalents. This issue is illustrated in the recent Patent Trial and Appeal Board (“Board”) case of Ex parte Fei (Appeal No. 2020-006288).

Independent claim 1 recited:

An anyhydrous dentifrice or toothpaste, comprising:

an orally acceptable vehicle, the orally acceptable vehicle comprising propylene glycol;

a thickening system, the thickening system comprising a polymeric thickener, wherein the polymeric thickener is a copolymer of 2-acrylamidomethylpropanesulphonic acid or a salt thereof; and

a peroxide whitening agent.

The examiner rejected claim 1 as obvious over the combination of two references: Golding and Joiner. Golding described a composition for whitening teeth, comprising propylene glycol, a copolymer of 2-acrylamidomethylpropanesulphonic acid, and a phthalocyanine blue pigment as whitening agent. However, Golding did not describe a peroxide whitening agent.

Joiner described whitening agents such as hydrogen peroxide. The examiner took the position that it would have been obvious to replace the pigment whitening agent in Golding with the peroxide whitening agent in Joiner, since both were “used in the prior art as useful for the same purpose…as a tooth whitening agent.”

The applicant argued that such a replacement would not have been obvious. The applicant explained that in Golding, whitening of teeth was performed “without the use of harsh chemicals or components that effect permanent whitening.” Golding used pigments as temporary whitening agents, applied to teeth to directly alter color. In contrast, Joiner used peroxides as permanent whitening agents, applied to teeth to remove existing stain coloring. The applicant argued that these different mechanisms of action meant that pigments and peroxides were not interchangeable equivalents.

The applicant also argued that if the pigment in Golding were replaced with the peroxide in Joiner, there would be no “need for the copolymer, since peroxide whiteners are not dependent upon being maintained on the teeth throughout the day to achieve their effect.”

The Board agreed with the applicant. The Board found that these whitening components were “not simple substitutes but rather operate in different ways. Golding’s pigment needs to remain on the teeth the entire time that a whitening effect is desired…The peroxide of Joiner, meanwhile, may be removed after it chemically reacts with stains in teeth resulting in whiter teeth.” The Board also found that the examiner provided “no persuasive reason why the other components of claim 1 or Golding, added to result in retention of pigment on teeth, would provide any benefit or improvement on the chemical tooth whitening effect of the peroxide compounds used by Joiner.” Accordingly, the Board reversed the obviousness rejection.

Takeaway: When an examiner takes the position that certain components are interchangeable equivalents, it is worth analyzing whether they really are equivalent. If there is a technical reason why it would not be obvious to substitute the components for each other (such as a difference in the mechanism of action of the components), then this reason can help overcome an obviousness rejection.

Judges: Adams, Fredman, Jenks


August 19, 2021by Richard Treanor1

Examiners often use U.S. patents in making rejections, and they sometimes cite to the patent’s claims as evidence. In Ex parte Argembeaux the PTAB made it clear that claim scope, in and of itself, could not be used to broaden the overall teachings of a reference.

The claims in Argembeaux were directed to a skin cleansing preparation comprising less than 5% water. The Examiner cited only claim 13 of Franklin, a US patent, as the basis of the rejection – as both anticipating the pending claims and rendering them obvious. Because claim 13 of Franklin did not recite water (but listed all other components of Applicant’s claims) the Examiner found the listed components in Franklin’s claim to be anticipatory, and perhaps hedging his anticipation bet, also rejected the claims as obvious.

The Board reversed both rejections, dismissing the contention that “the absence of any mention of water in Franklin’s claims amounts to an affirmative disclosure that the compositions …. are necessarily water-free” in view of Franklin’s expressly described preference for an aqueous or aqueous-alcoholic carrier and the fact that all of the examples in Franklin used significantly more than 5% water. Based on the totality of Franklin’s disclosure, and finding no explicit disclosure affirmatively stating that water is merely an optional ingredient that may be omitted from the described compositions, the Board held that one of ordinary skill would not immediately envision (anticipation) nor be led to (obviousness) a composition as claimed containing less than 5% water.

The Argembeaux case can thus be useful in rebutting rejections where an Examiner improperly relies on a U.S. patent’s claims as evidence of prior art outside the scope of the specification’s underlying description.

Judges: R. Lebovitz, F. Prats, J. New


August 13, 2021by Beau Burton

In Google LLC v. NavBlazer, LLC, the Patent Trial and Appeal Board (“Board”) declined to institute inter partes review of U.S. Patent No 9,075,136 (“the ’136 patent”). IPR2021-00502, Paper 6 (mailed Aug. 5, 2021).

The ’136 patent is directed to an apparatus that provides a vehicle user with information such as road and traffic conditions. Each of the independent claims of the ’136 patent required an apparatus that “automatically detects a departure of the vehicle from the first travel route, and … identifies a second travel route on which the vehicle can travel to the destination in response to the detected departure of the vehicle from the first travel route.”

The petitioner argued that the claimed dynamic rerouting functionality would have been obvious over the combination of: a primary reference (Behr) that disclosed a base unit that calculated route guidance in response to a query using an up-to-date database located in the base unit and then transmitted the response to a display unit; and a secondary reference (Schreder) that disclosed an automobile equipped with an RF GPS navigation system and RF receivers that monitored updated traffic condition information for dynamic rerouting guidance.

According to the Petitioner, it would have been obvious to include Schreder’s dynamic rerouting functionality within the base unit of Behr so that when the base unit detected a deviation from a specified route, it would identify a new route. The Petitioner further argued that an artisan would have been motivated to make this modification because Behr teaches that guidance systems that are self-contained within a vehicle, such as the system disclosed in Schreder, suffered from many drawbacks, including the need for large data storage capabilities onboard the vehicle.

The Board was not persuaded, stating:

We disagree with Petitioner that reducing vehicle-side processing and data storage justifies modifying Behr’s navigation system to include Schreder’s dynamic rerouting feature. Petitioner’s proffered rationale justifies where a skilled artisan would have located Schreder’s rerouting functionality—in Behr’s central system—but does not address why a skilled artisan would have added that functionality to Behr in the first place. Given this deficiency, we find that Petitioner has not produced the required ‘articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’

Absent an articulated reason for “why” an artisan would have made the modification, the Board found that the Petitioner failed to carry its burden to show a reasonable likelihood of prevailing on any claim, and thus declined to institute inter partes review of the ’136 patent.

Takeaway: In Google v. NavBlazer, the Petitioner arrived at the claimed subject matter but neglected to explain why the modification would have been obvious in the first place. Unlike anticipation, obviousness requires a story, and the most important part of that story is why a skilled artisan would have been motivated to modify the primary reference to arrive at the claimed subject matter. Without “the why” (i.e., a reason), the obviousness rationale collapses into a hindsight-guided combination of elements. Therefore, when challenging the claims of patent for obviousness it is critical to supply the Board with “the why” of the story you are telling.

Judges: K. Turner, G. Baer, A. Moore