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May 2, 2008

Finite Genus Killer

Xerox filed a patent related to electrophotography. The examiner piled on §103(a) combos. Appeal before the BPAI, arguing against 'obvious to try.' The issue was whether a "claimed species is obvious over prior art which discloses a genus containing the species." Obvious if the genus is defined by a "finite number" of possibilities, and the prior art does not teach away. KSR strikes again.

Min-Hong Fu, Colleen A. Helbig, Kent J. Evans, Kathleen M. Carmichael and David M. Skinner, for Xerox (BPAI 2008-0601) 10/320,809

The KSR case law rundown used by the appeals board -

"Section 103 forbids issuance of a patent when the 'differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains.' " KSR Int 'I Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1734 (2007). KSR reaffirms the analytical framework set out in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), which mandates that an objective obviousness analysis includes: (1) determining the scope and content of the prior art; (2) ascertaining the differences between the prior art and the claims at issue; and (3) resolving the level of ordinary skill in the pertinent art. KSR, 127 S. Ct. at 1734. Secondary considerations such as commercial success, long felt but unsolved needs, or failure of others "'might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented."' Id. (quoting Graham, 383 U.S. at 17-18.).

KSR states:

Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.

KSR, 127 S. Ct. at 1740-41.

KSR further instructs "that when a patent claims a structure already known in the prior art that is altered by mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." KSR, 127 S. Ct. at 1740.

In expressly rejecting the "obvious to try" argument in support of patentability, KSR states:

The same constricted analysis led the Court of Appeals to conclude, in error, that a patent claim cannot be proved obvious by merely showing that the combination of elements was "obvious to try." ...When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103.

KSR, 127 S. Ct. at 1742.

The lead reference, Yamamoto, had disclosed a broad genus of relevant surfactants, yet "it nevertheless consists of only a finite number of known" surfactants that solves the problem as claimed.

Accordingly, a person having ordinary skill in the art would have had "good reason to pursue" the use of GF-300, the claimed surfactant species.

Not only does the Examiner's analysis satisfy an "obvious to try" standard, it passes muster even under a more rigorous teaching, suggestion, or motivation test.

The appellants had relied upon In re Baird, 16 F.3d 380. But Baird had been a case of unlimited possibilities, and taught away from the claimed formulation.

The court instructed: "A disclosure of millions of compounds does not render obvious a claim to three compounds, particularly when that disclosure indicates a preference leading away from the claimed compounds." Id. at 383.

We expressly reject the notion that a claim reciting a species is per se patentable when the prior art discloses a genus encompassing a broad but finite number of known options which include the claimed species. We hold that such a per se approach would be contrary to the clear command of our reviewing court.2 That is not to say, however, that an applicant would never be entitled to a patent in a situation as here. For example, KSR and Graham, as well as a myriad of precedents of our reviewing court, teach that secondary considerations such as unexpected results may confer patentability. Also, for example, patentability may be shown if the prior art teaches away from the species within the genus. But here, Appellants did not rely on any such persuasive evidence in support of nonobviousness.

2 Cf In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995)("[R]eliance on per se rules of obviousness is legally incorrect and must cease.").

Fu had not rebutted "the Examiner's prima facie case of obviousness," arguing only case law application.

Hat tip of thanks to Hal Wegner.

Posted by Patent Hawk at May 2, 2008 9:03 PM | Prior Art


I don't understand why the Board decided to label this one particular decision as precedential.

That said, this case is no different than the myriad of other Board decisions where "29.Appellants do not rely on any secondary considerations of nonobviousness, such as evidence of unexpected results" or where "But here, Appellants did not rely on any such persuasive evidence in support of nonobviousness."

In other words, Appellant's attorneys never put any witnesses for the defense on the stand. They never submitted "evidence". So what do they expect? A finding of facts in their favor?

A little more troubling in the current decision is the Board's reading that "Corkill further relied on declaration evidence asserting that it cannot be predicted how any candidate will work in a detergent composition and that testing was necessary. Id. Our reviewing court rejected these arguments by stating that the arguments did not
"overcome Corey's teaching that hydrated zeolites will work." Id." It doesn't make sense how evidence of unpredictability can be dismissed so summarily --hmmm, will have to look more closely at In re Corkill, 771 F.2d 1496 (Fed. Cir. 1985)

Posted by: step back at May 3, 2008 1:32 AM


I missed that last point you made about Fu arguing only case law application. I don't see a statement to that effect in the opinion, and it looks to me like Fu argued that its species was doing a job not previously known to be done by that species.

IN addition to the points you made, this case is also noteworthy as an example of a 1-reference Section 103 rejection. The Examiner didn't see Yamamoto as standing alone for the 103, but the BPAI did.

My understanding of a 1-reference 103 is that the reference teachs all of the claimed elements but does not rise to a 102 reference because it does not not teach all of the claimed limitations. The missing claimed limitations can be supplied by the examiner as being obvious.

I also note that the BPAI turns Fu's main case In re Baird against Fu with a subtle but nasty twist. Baird was cited for saying that if the claimed genus has a million spp, a later applicant can patent one of those spp. if that spp. was not disclosed in the reference PARTICULARLY if the reference teaches away from the spp.

OK, that seems to fit the facts. Yamamoto taught a large genus, and completely ignored the spp at issue. Having ignored the spp, it of course didn't teach away, but teaching away is not mandatory according to Baird.

The BPAI turns the teaching away modifier into a required criterion, with the non-sequitor: "Here by contrast the prior art teachings would not have taught away from the Applicants' claimed species."

Barid clearly stands for the proposition that the art doesn't HAVE TO teach away from a spp., but if it does, that's gravy for the applicant. The BPAI is making the teaching away mandatory in order to claim 1 spp. taken from a large genus.

I don't know the chemistry so I can't give a worthwhile guess on the facts, but on the law, my money is on reversal.

Posted by: Babel Boy at May 3, 2008 1:47 AM

p.s. Found a copy of In re Corkill here:

It states:

"Although Uytterhoeven declared that it cannot be predicted how any [one zeolite] candidate will work in a detergent composition, but that it must be tested, this does not overcome Corey's teaching that [**] hydrated [**] zeolites will work.

We have admonished against weighing each piece of rebuttal evidence piecemeal against the solid mass of a prima facie case. Id. at 1472-73, 223 USPQ at 788. We have thus considered the totality of appellant's evidence. We are mindful of the "hindsight syndrome wherein that which only the inventor taught is used against its teacher". W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312 (Fed.Cir.1983), cert. denied, --- U.S. ----, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984).

Appellant's submissions did not persuade the Board that Corkill's claims met the requirements of section 103. Upon review of all the evidence and argument on both sides of the issue, we affirm the correctness of this determination. The rejection under section 103 of the '266 claims that relate to zeolite-containing detergent compositions that are not restricted to requiring the presence of an auxiliary builder, is affirmed.1"

It was not a total loss for Corkill though.
Later in the decision, the CAFC found:

We reverse the rejection under 35 U.S.C. Sec. 103 of those claims directed to combinations of the zeolites with auxiliary builders: in Serial No. 450,266 claims 5, 21, 27, 65, 74, and claims dependent thereon; in Serial No. 036,615 claims 5, 21, 27, and claims dependent thereon.


Posted by: step back at May 3, 2008 1:52 AM