PTAB Archives - Page 4 of 13

In Ex parte Kano (Appeal No. 2021-004640), the Patent Trial and Appeal Board (“Board”) rejected an Examiner’s finding of obviousness that was premised on a nonoverlapping range being “sufficiently close.”

The independent claim on appeal was directed to a non-oriented steel having a chemical composition defined by various ranges of elements (e.g., C, Si, Mn, Al, P, S, N, etc.) and exhibiting, among other things, an X-ray diffraction (XRD) intensity ratio, I{100}/I{111}, between 0.50 and 1.18.

The primary reference relied on by the Examiner disclosed a non-oriented electrical steel sheet having a chemical composition that included each of the chemical elements in overlapping amounts, but failed to describe the intensity ratio. To remedy this deficiency, the Examiner relied on a secondary reference; however, its intensity ratio was greater than or equal to 1.20.

Notwithstanding the absence of an overlapping intensity ratio, the Examiner maintained obviousness on the basis that a steel sheet constructed from the prior art with an intensity ratio of 1.20 was sufficiently close to the claimed 1.18 ratio that one of ordinary skill in the art would expect them to have the same properties. The Board did not agree.

In particular, the applicant’s specification showed that the claimed intensity ratio resulted from a combination of the claimed composition and holding the composition at 550–700°C for 10–300 seconds (an intermediate holding step). The primary and secondary references relied on by the Examiner performed annealing processes at 950°C and 860°C, respectively, but did not include an intermediate holding step. Thus, the Board held that a skilled artisan would not have expected the steel composition from the Examiner’s hypothetical construct to have an intensity ratio within the claimed range and reversed the Examiner’s rejection.

Takeaway: While a prima facie case of obviousness may be established where the claimed range and the prior art range do not overlap, it is essential that there be an expectation that the properties would be the same. This expectation may be rebutted by information in the applicant’s own specification as in Kano or with additional experimental evidence. Another great source of rebuttal evidence is the prior art itself because a lot of times the prior art will associate its nonoverlapping range with a particular property and describe values outside that range (likely values within the claimed range) as inferior or different in some way such that a skilled artisan would not expect the properties to be the same.

Judges: J. Housel, W. Wilson, J. Gupta

In Ex parte Scheich (Appeal No. 2021-003495), the examiner rejected the claims as obvious over a combination of two references. The PTAB reversed.

Independent claim 1 recited:

A diffuser material of pore-containing quartz glass with

a chemical purity of at least 99.9% SiO₂,

a cristobalite content of not more than 1%, and

a density in the range of 2.0 to 2.18 g/cm³,

whereby at least 80% of the pores have a maximum pore dimension of less than 20 μm,

wherein the quartz glass is produced synthetically,

has a hydroxyl group content in the range of more than 200 wt. ppm, and

contains hydrogen in a concentration in the range of 10¹⁷ molecules/cm³ to 10¹⁹ molecules/cm³.

The examiner found that the primary reference (Moritz) satisfied each limitation of claim 1, except for being silent about a hydrogen concentration. The examiner cited a secondary reference (Ohama) describing a similar quartz glass. The quartz glass in Ohama was made from a silica powder having a hydrogen concentration overlapping the range recited in claim 1.

The examiner took the position that it would have been obvious to use Ohama’s silica starting material to prepare the quartz glass of Moritz. The examiner found that the hydrogen concentration of the finished product would be expected to be the same as that of the starting material because “[n]o evidence is given” to the contrary, and “Ohama provides no teaching or suggestion that the hydrogen is removed from the powder prior to or during formation of the inventive quartz material.”

In contrast, the applicant argued that the finished product in Ohama would not be expected to have the same hydrogen content as the starting material. In particular, the applicant argued that the sintering process in Ohama would be expected to reduce or remove molecular hydrogen from the starting material in forming Ohama’s finished product. As evidence, the applicant cited a portion of Ohama describing that the hydrogen in the starting material “react[s] with free oxygen to form OH groups, and the OH groups are fixed in the glass to suppress pore expansion from occurring.”

The PTAB agreed with the applicant. The PTAB found that “Ohama discloses that the hydrogen in Ohama’s starting material reacts with oxygen in a way that would consume Ohama’s hydrogen, such that Ohama’s final quartz glass product would not have the same hydrogen concentration as its silica powder starting material.” In a footnote, the PTAB acknowledged that the broad range of hydrogen concentration in Ohama’s starting material might allow for significant removal of hydrogen while still satisfying the claimed range for the finished product. However, since the examiner made no findings as to an expected magnitude of the decrease of hydrogen, the PTAB reversed the obviousness rejection.

Takeaway: U.S. examiners often make inferences beyond the explicit teachings of prior art references. These inferences usually are phrased in terms of what would have been expected based on the technical knowledge of a person of ordinary skill in the art. Sometimes applicants can rebut such inferences with evidence of their own. This evidence can be provided in the form of a Rule 132 Declaration, or, as in Ex parte Scheich, by reference to portions of the applied art.

Judges: Best, Kennedy, Cashion Jr.

Ex parte Myers is a recent decision of the Patent Trial and Appeal Board (PTAB) addressing enablement and written description of a claim amended to recite a range during prosecution.

The claim at issue recited:

A composition comprising oolitic aragonite particles, wherein the oolitic aragonite particles have an average particle size of between 100 nm to 1 mm, and a median (D50) particle size distribution (PSD) of between 2.0 to 3.5 μm, and a Hunter brightness level greater than 90.

The Hunter brightness feature was added during prosecution to distinguish over prior art. Applicant asserted that the following disclosure in the specification enabled and supported the newly added feature:

[T]he size of (milled) aragonite will also have a substantial effect on brightness of the material. For example, when milled to a fine particle size of 2 to 8 micron, the Hunter brightness level is approximately 94, which is very bright white. Thus, by selecting a suitable particle size, brightness of the milled aragonite can be adjusted.

The foregoing was the only disclosure of any Hunter brightness level – only a single value and no disclosure of any range.

The examiner acknowledged the disclosure of a single value of 94 for Hunter brightness level but asserted that such disclosure did not reasonably provide enablement for, or demonstrate possession of, the entire range of “greater than 90.”

As to enablement, the PTAB disagreed with the examiner, finding that the examiner had failed to establish that undue experimentation would be required for a skilled artisan to make and use the claimed composition. The PTAB appeared to find plausible applicant’s contention that disclosure of a single Hunter brightness level paired with disclosure that milling or otherwise adjusting particle size affects Hunter brightness would be enabling.

However, as to written description, the PTAB affirmed the examiner’s rejection. Applicant asserted that the particles described in the specification inherently have Hunter brightness values between 90 and 100. The PTAB noted that, while the specification indicated that particle size related to Hunter brightness, there was nothing in the record to indicate that the particles sizes in the specification necessarily resulted in Hunter brightness values greater than 90. The PTAB further noted that the specification indicated that parameters other than particle size influence Hunter brightness, concluding that the specification did not reasonably convey that applicant was in possession of the recited range of Hunter brightness levels.

Takeaway: US practice is much more flexible than other jurisdictions with respect to the degree of specification disclosure required to support claim amendments made during prosecution. This is especially true when amending ranges to include new endpoints from subranges and/or individual examples in the specification (but keep an eye on the Federal Circuit link, link). However, even under US practice, it will be difficult to create a claimed range from a single data point. If a parameter is important enough to identify in a patent application, it is worth the small additional effort to identify ranges of values that encompass the described invention.

Judges: Hanlon, Gupta, Inglese

In Ex parte Watabe, No. 2020-005979 (P.T.A.B. Sep. 28, 2021), the Patent Trial and Appeal Board (PTAB) reversed an Examiner’s rejection of claims directed to a solar cell assembly comprising a recess having a particular flatness. The issue in the case, both on appeal and at the examiner level, was whether the applied prior art inherently possessed the necessary flatness.

During prosecution, the Examiner presented several technical reasons explaining why the claimed flatness was inherent in the prior art, including a detailed comparison of the process used in the prior art with that of the inventors and, citing MPEP 2112.01, invited Applicant to provide evidence showing that the prior art did not necessarily possess the claimed flatness feature. Applicant responded to both the first and final rejection with a detailed analysis of their own, only to be denied in favor of the Examiner’s analysis, necessitating appeal.

In its Appeal Brief, Applicant expanded (from 3 pages to 5 pages) its analysis, and expanded it even further in its Reply Brief (to 7 pages in length). In reversing the rejection, the PTAB accepted Applicant’s analysis as showing a difference in methodologies between the specification and the applied reference, and found this persuasive on the issue whether the reference necessarily possessed the claimed flatness (note that the PTAB often makes the opposite decision).

Takeaway: While Applicant eventually prevailed in this case, it was a close call – the PTAB accepted “attorney argument” as persuasive on inherency, seemingly focusing on methods of preparation rather than final products. Wouldn’t it have been easier to file a Declaration in response to the first rejection, making it clear that the reference did not possess the required flatness, thereby providing evidence that the Examiner could rely on (and had asked for)? In this case there was an interview, two responses, an Appeal Brief, and a Reply Brief. While ultimately successful, it seems as though prosecution could have been short-circuited very early in the process with the right Declaration.

Judges: B. Franklin, B. Range, D. Dennett

In Ex parte Zhang (Appeal No. 2021-005022), the Patent Trial and Appeal Board (“Board”) rejected an Examiner’s finding of obviousness that was premised on an unappreciated ratio being a result-effective variable.

The independent claim on appeal read:

1. A sinterable conductive composition comprising:

a metal component having an average particle diameter of greater than about 150 nm to about 100 μm…;

a sintering agent; and

an emulsion comprising water, and

at least one particulate polymer having an average particle diameter

wherein a ratio of average metal component particle diameter to average particulate polymer particle diameter is between 1:1 and 10:1.

The Examiner rejected claim 1 over a primary reference that disclosed a metal component having an overlapping average particle diameter and a secondary reference disclosing metal particles, a sintering promoter, and an emulsion containing resin fine particles. Equating “fine particles” with nano-sized particles, the Examiner found the claimed ratio obvious (i.e., using the overlapping metal component diameter from the primary reference and the nano-sized particulate polymer diameter from the secondary reference).

In the alternative, the Examiner argued it would have been obvious to optimize the “fine particle” size to sufficiently disperse the polymer particles in the emulsion.

The Board rejected both of the Examiner’s positions. The Board first emphasized that claim 1 required a specific ratio particle size of the metal component and the polymer particle, and “not merely a size range for the polymer particle.” The primary reference did not disclose a particulate polymer so it could not possibly recognize a relationship between the metal component and the polymer particle.

As for the secondary reference, the diameter of the polymer relied on by the Examiner was for a precursor – not the final product – and nowhere did it suggest a relationship between the polymer particle size and metal particle size.

In the Board’s own words:

Missing from the record is any evidence of an interdependent relationship between the diameter sizes of the metal component and the polymer particle. In addition, nothing in the combined references suggests or recognizes that the claimed ratio relationship is a result effective variable.

…

We cannot accept general conclusions about what is ‘basic knowledge’ or ‘common sense’ as a replacement for documentary evidence for core factual findings in a determination of patentability.

Takeaway: Sometimes patentability resides in a relationship between properties that are seemingly obvious when considered individually. As shown in In re Zhang, when a reference relied on by the Examiner is missing the claimed property, it cannot possibly recognize a relationship involving that property. And even where a reference has the individual properties needed to arrive at the claimed relationship, the relationship will not obvious unless there is an overlap or a recognition of an interdependent relationship between the properties involved in the relationship.

Judges: C. Timm, D. Dennett, M. Cashion, Jr.

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

In Ex parte Ruvolo (Appeal No. 2021-001708), the examiner rejected nucleotide claims as anticipated under § 102. The PTAB reversed.

Independent claim 12 recited (in part):

A composition of matter comprising:

a first population of oligonucleotides comprising a top strand sequence having the following formula:

V₁-B-3’; and

a second population of oligonucleotides comprising a bottom strand sequence having the following formula:

V₂‘-B’-3’;…

Claim 12 further specified (in part) that (i) the nucleotide sequences of B and B’ are complementary and at least 15 nucleotides in length, (ii) the first and second population of oligonucleotides are capable of hybridizing to each other to produce a population of duplexes, and (iii) V₁ and V₂’ hybridize to different sites in a reference genome.

The examiner cited as anticipatory a reference (Koroulis) disclosing an oligonucleotide array. The reference included the general statement that the array could “contain all possible oligonucleotides of a given length n.” The examiner took the position that “[g]iven that the composition/array of Koroulis et al., encompasses all possible oligonucleotides of a length n, such must encompass the very oligonucleotides present in the claimed composition and kit, including that represented by the formulae of V₁-B-3’; and V₂‘-B’-3’.”

The appellant argued that the general statement in Koroulis was insufficient for anticipation, and that “[t]he Office Action makes no attempt to identify where Koroulis discloses the particular claim elements recited by the rejected claims.”

The PTAB sided with the appellant. It found that “[t]he bare statement that an array can include all possible nucleotides having an undefined length is not a disclosure of the two populations of oligonucleotides – having segments meeting specified structural requirements, arranged in a specified way – that are recited in Appellant’s claims.” Accordingly, the PTAB reversed the anticipation rejection.

The examiner also rejected the claims as patent ineligible under § 101, as allegedly directed to a natural phenomenon (“the claims are to oligonucleotides, the nucleotide sequence of which can occur in nature”). The PTAB also reversed this rejection, as a straightforward application of the U.S. Supreme Court’s Myriad decision.

In particular, the PTAB found the claimed oligonucleotides to be analogous to the cDNA found patent eligible in Myriad: “[t]he V₁ and V₂’ segments recited in Appellants’ claims might have the same sequence of nucleotides as found in a naturally occurring genome (since they hybridize to a reference genome) but the Examiner has not shown that a population of such segments – having variable sequences – are naturally found next to a common B or B’ sequence in their natural state.” Accordingly, the PTAB reversed the eligibility rejection.

Takeaway: Anticipation requires that a reference discloses “all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Ex parte Ruvolo shows that an overly general disclosure is insufficient to establish anticipation if the disclosure does not address specific limitations in the claims. By emphasizing the specific limitations in the claims, the Appellant in Ex parte Ruvolo overcame the anticipation rejection, as well as the § 101 rejection.

Judges: Grimes, Hulse, Townsend

In Ex parte Talamoni (Appeal No. 2020-006553), the Patent Trial and Appeal Board (“Board”) rejected an Examiner’s claim construction overriding the phrase “derived from the reaction product of” with “comprising.”

The independent claim on appeal read:

A composition comprising an acrylic adhesive derived from the reaction product of

(a) an acrylic ester of monohydric alcohol having an alkyl group of the 5 to 10 carbon atoms; and

(b) a nonpolar acrylic monomer having a solubility of less than 9.2 as measured by the Fedors method using a homopolymer of the nonpolar acrylic monomer,

wherein the reaction product has a side chain crystallinity.

The Examiner rejected the claim as anticipated by or, in the alternative, obvious in view of a reference that disclosed a terpolymer produced from monomers (a) and (b) and 0.5–5 wt% of a monomer (c) (a monoolefinically unsaturated ketone). The Examiner argued the “side chain crystallinity” although not disclosed would be present in view of In re Spada (i.e., “[w]hen the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not”). The Board disagreed.

At the outset, the Board found that the phrase “derived from the reaction product of” monomers (a) and (b) would be understood by those of skill in the art to exclude the terpolymer of the prior art derived from monomers (a), (b), and (c). The Board did agree that the use of “comprising” in the preamble opened the claim up to additional unrecited ingredients such as tackifiers but it did not override or expand the requirement for a reaction product obtained from the two monomers (a) and (b). Accordingly, the Board reversed the anticipation rejection.

As for obviousness, the Board found that the prior art taught away from omitting monomer (c) since it taught the monomer (c) provided the terpolymer with stability and stated, “if the amount of monomer (c) is less than 0.5 mass %, an insufficient effect is produced by the addition.” With no reason for why a person of ordinary skill in the art would have been motivated to omit monomer (c) from the prior art, the Board reversed the obviousness rejection.

Finally, the Board emphasized that the Examiner was not entitled to rely on the presumption from Spada because Appellant’s claim did not cover a reaction mixture containing monomer (c) and the breadth of monomer (c) in terms of the amount and potential species was too broad to conclude that the prior art’s terpolymer was substantially identical to the claimed copolymer of monomers (a) and (b).

Takeaway: In re Talamoni is notable for two reasons. First, the Board found the phrase “derived from the reaction product of … (a) … and (b)” to be closed. While savvy US applicants are accustomed to “comprising” and “consisting of,” phrases like this tend to be more common in applications originating outside the US. Accordingly, it is a good practice to replace uncommon transitional phrases with the corresponding US equivalent (e.g., comprising, consisting essentially of, or consisting of) to limit these types of disputes. And second, the Board correctly found that use of the transitional phrase “comprising” in the preamble did not render the following transitional phrase obsolete. Unfortunately, this type of interpretation before an Examiner is not uncommon, but it is promising to see the Board consistently reaching the correct conclusion. See, e.g., https://www.elementiplaw.com/comprising-is-not-a-weasel-word/ (PTAB rejecting an Examiner’s attempt to construe “comprising … a single odorant chamber” to allow for a plurality of chambers).

Judges: G. Best, N. Wilson, M. Cashion, Jr.

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

During patent prosecution in the U.S., claims are given their broadest reasonable interpretation consistent with the specification. Ex parte Adel (Appeal No. 2020-006165) is a recent case in which the Patent Trial and Appeal Board (“Board”) found an examiner’s broad interpretation to be unreasonable.

Independent claim 1 recited (in part):

A process for manufacturing an edible water-in-oil emulsion, comprising the steps of:

a) providing a water-phase;

b) providing a liquid oil;

c) providing a fat powder comprising hardstock fat;

d) providing a hardstock fat in liquid form;

e) mixing the fat powder comprising hardstock fat, the hardstock fat in liquid form, and the liquid oil to form an oil-slurry, wherein the hardstock fat in liquid form is completely liquid before contact with the fat powder; …

The examiner rejected the claims as obvious over a combination of references. In the examiner’s proposed combination, the hardstock fat in liquid form included a portion that had crystallized (i.e., solidified) before contacting the fat powder.

The appellant argued that the existence of the crystallized portion meant that the hardstock fat in liquid form was not completely liquid before contact with the fat powder, contrary to the requirement of claim 1.

The examiner took the position that the hardstock fat containing the crystallized portion nonetheless satisfied the claim limitation of being “completely liquid.” The examiner noted that the primary reference described the hardstock fat as being “pumpable,” and stated that “[i]t is well understood that pumpable refers to the ability to move or transfer fluids or liquids.” The examiner took the position that the hardstock fat containing the crystallized portion “successfully meets the claimed limitation of the hardstock fat in liquid form [being] completely liquid.”

The Board disagreed with the examiner. The Board found it “unreasonable to interpret the term ‘completely liquid’ as encompassing hardstock fats that have already undergone some amount of crystallization. A liquid that has already undergone some amount of crystallization is not ‘completely’ liquid.” The Board found that such an “interpretation renders the word ‘completely’ a nullity, and such interpretations are disfavored.” Accordingly, the Board reversed the obviousness rejection.

Takeaway: U.S. examiners sometimes interpret the claims in a broader way than applicants intend. In such situations, it might be possible to argue that an examiner’s interpretation is unreasonably broad, and thus improper. Since examiners are likely to consider their interpretations to be reasonable, however, such arguments might require a supporting declaration from a skilled artisan, or an appeal to the PTAB.

Judges: Wilson, Kennedy, Gupta

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PTAB Pulls the Plug on Examiner’s “Sufficiently Close” Rationale

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The Perils of Trying to Convert a Single Data Point into a Claimed Range

PTAB Accepts Attorney Argument as Persuasive on Inherency

PTAB Tosses Examiner’s Result Effective Variable Rationale For Unappreciated Ratio

PTAB Finds Appellant’s Showing of Unexpected Results Tips the Scales

PTAB Finds General Disclosure of Nucleotide Array Insufficient for Anticipation

PTAB: “Derived From the Reaction Product of …” Closed to Unrecited Reactants

Obviousness Rejection Reversed Because Property Limitations Are Not Inherent

Broad Interpretation of Claims Must be Reasonable

USPTO Further Delays Non-DOCX Fee Until January 17, 2024

USPTO Further Delays Non-DOCX Fee Until June 30, 2023