Case Studies – Hidden Gems for Applicants Regarding Obviousness and Anticipation

March 21, 2018
News | Patents | USPTO

The Federal Circuit is holding the USPTO to its burden of establishing anticipation and obviousness, and requiring it to support such rejections by adequate reasoned explanation even in cases where the prior art is very close to the claims. Two such exemplary decisions are In re Hodges (Fed. Cir. February 2018) and In re Stepan Co. (Fed. Cir. August 2017).

In re Stepan concerns the obviousness of a claim directed to a surfactant system having three components and having a cloud point above at least 70ºC. A single prior art reference taught all three components of the surfactant system as possible components and also had examples, at least one of which contained two of the three components of the surfactant system and at least one other example that contained the third component of the surfactant system with one of the components from the first example. The reference also generally taught that the “surfactant component comprises any combination of surfactants” and “teaches the ideal cloud point should be above 60ºC.” Despite the above general teachings and examples teaching various components of the composition, the Federal Circuit held that “The Board failed to explain why it would have been “routine optimization” to select and adjust the claimed surfactants and achieve a cloud point above at least 70ºC.” There needs to be an adequate articulation by the USPTO in its reasoning by providing “some rational underpinning explaining why a person of ordinary skill in the art would have arrived at the claimed invention through routine optimization.” The USPTO also failed to explain why a skilled artisan would have had a reasonable expectation of success in selecting the claimed combination of surfactants. Noteworthy also is that the Federal Circuit holds the explicitly articulated position that “Whether a rejection is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination.”

In re Hodges is a decision concerning both anticipation and obviousness. The application was directed to a valve assembly and the issue centered on whether a valve is an internal part of or contained within the valve assembly’s body. While the Examiner and the Board held that an unlabeled valve placed above the valve assembly’s outer casing in a prior art figure met the requirement of being part of the valve assembly’s body, the Federal Circuit saw otherwise. The valve in the figure was immediately above the housing that contained the other components of the valve. As such, the valve according to the Federal Circuit could not be considered an internal part of and contained within the prior art valve assembly, but is rather external to it. The Federal Circuit cited the standard for anticipation as requiring that the four corners of the cited reference having to “describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” However, the Board did not provide the requisite explanation regarding how the positioning of the valve from the figure enabled a skilled artisan to practice the invention without undue experimentation. Regarding obviousness, the Board concluded in a single paragraph that the claims are obvious because the valve in the figure could be made part of the valve assembly’s body such that it would be an internal part and contained therein. However, there was no explanation how the drain assembly could be so modified, which is thus a deficient rejection, and was reversed.

Thus, in situations where the USPTO is not adequately supporting its prior art rejection by an adequate explanation in support of the rejection, patent applicants are in a strong position to counter the rejection as inadequately supported by a reasoned explanation, which is a clear requisite under the above recent decisions.


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