103‎ > ‎

2144

2144 **Supporting a Rejection Under 35 U.S.C. 103 [R-6]

>I. < RATIONALE MAY BE IN A REFERENCE, OR REASONED FROM COMMON KNOWLEDGE IN THE ART, SCIENTIFIC PRINCIPLES, ART-RECOGNIZED EQUIVALENTS, OR LEGAL PRECEDENT

Clapp

To support a conclusion that a claim is directed to obvious subject matter, prior art references must suggest expressly or impliedly the claimed invention or an Examiner must present a “convincing line of reasoning’ as to why one of ordinary skill in the art would have found the claimed invention to have been obvious. Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985). When determining whether a rejection based on design choice is appropriate, the Examiner must review the Specification and ascertain if the limitation in question is disclosed as serving any advantage or particular purpose, or whether it solves a stated problem. The Examiner also should explain the reasoning used to determine that the prior art would have performed equally as well as the claimed invention. These two steps help present the aforementioned “convincing line of reasoning.” Ex parte Clapp, 227 USPQ at 973.

Fine

In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988).

Jones

cf., e.g., In re Jones, 958 F.2d 347, 349-51 (Fed. Cir. 1992) (“Conspicuously missing from this record is any evidence, other than the PTO’s speculation (if it be called evidence) that one of ordinary skill in the herbicidal art would have been motivated to make the modifications of the prior art salts necessary to arrive at the claimed . . . salt.”).


>II. < THE EXPECTATION OF SOME ADVANTAGE IS THE STRONGEST RATIONALE FOR COMBINING REFERENCES

DyStar

The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and whether there would have been a reasonable expectation of success." DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006).
[A]n implicit motivation to combine exists not only when a suggestion may be
gleaned from the prior art as a whole, but when the “improvement” is
technology-independent and the combination of references results in a product or
process that is more desirable, for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient. Because the
desire to enhance commercial opportunities by improving a product or process is
universal - and even common-sensical - we have held that there exists in these
situations a motivation to combine prior art references even absent any hint of
suggestion in the references themselves. In such situations, the proper question
is whether the ordinary artisan possesses knowledge and skills rendering him
capable of combining the prior art references.

Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).


>III. < LEGAL PRECEDENT CAN PROVIDE THE RATIONALE SUPPORTING OBVIOUSNESS ONLY IF THE FACTS IN THE CASE ARE SUFFICIENTLY SIMILAR TO THOSE IN THE APPLICATION

>IV. < RATIONALE DIFFERENT FROM APPLICANT'S IS PERMISSIBLE

CROSS

In other words, "[o]ne of ordinary skill in the art need not see the identical problem addressed in a prior art reference" in order to apply its teachings. Cross Medical Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005).
 
This is because one of ordinary skill in the art need not see an applicant's identical problem addressed in a prior art reference to be motivated to apply its teachings. Cross Med. Prods., Inc., v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005).

Dillon

It is well settled that the prior art need not disclose the same purpose for a claimed method in order to establish its obviousness under 35 U.S.C. § 103.In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990).

Lintner

A prima facie case of obviousness is made by presenting evidence that the "reference teachings would appear to be sufficient for one of ordinary skill in the relevant art having the references before him to make the proposed substitution, combination or other modification." In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972).

2144.01 Implicit Disclosure
 
PREDA

In evaluating the prior art references for obviousness, it is proper to take into account not only the specific teachings of the references, but also any inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826, (CCPA 1968).

LAMBERTI

[A] reference disclosure is not limited only to its preferred embodiments, but is available for all that it discloses and suggests to one of ordinary skill in the art. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).

2144.02 Reliance on Scientific Theory [R-6]

2144.03 Reliance on Common Knowledge in the Art or "Well Known" Prior Art [R-6]

AHLERT

The Examiner may take official notice of facts “beyond the record which, while not generally notorious, are capable of such instant and unquestionable demonstration as to defy dispute.” In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (citation omitted). However,

[a]ssertions of technical facts in areas of esoteric technology must always be supported by citation to some reference work recognized as standard in the pertinent art and the appellant given, in the Patent Office, the opportunity to challenge the correctness of the assertion or the notoriety or repute of the cited reference.

Id. (citation omitted).

The Examiner may take notice of facts or common knowledge in the art which are capable of such instant and unquestionable demonstration as to defy dispute. In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970). 

GARTSIDE

The presence or absence of a reason "to combine references in an obviousness determination is a pure question of fact."
In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000) (citing In re Dembiczak, 175 F.3d 994, 1000 (Fed. Cir. 1999)).

KNAPP-MONARCH

To challenge the Examiner's notice, Appellants must present evidence to the contrary. In re Knapp-Monarch Co., 296 F.2d 230, 232 (CCPA 1961) (considering challenge to the taking of judicial notice by Trademark Trial and Appeal Board).

Chevenard

Soli

See MPEP § 2144.03(B) (“[t]he examiner must provide specific factual findings predicated on sound technical and scientific reasoning to support his or her conclusion of common knowledge.”) (citing In re Soli, 317 F.2d 941, 946 (CCPA 1963) and In re Chevenard, 139 F.2d 711, 713 (CCPA 1943)).

To adequately traverse the Examiner's finding of Official Notice, Appellants' traversal must contain information or argument that is adequate to create, on its face, a reasonable doubt as to the circumstances justifying the Examiner's notice. See In re Boon, 439 F.2d 724, 728 (CCPA 1971). Appellants must specifically point out the supposed errors in the Examiner's action, which would include stating why the noticed fact is not considered to be common knowledge or well known in the art. See 37 C.F.R. § 1.111(b); see also MPEP § 2144.03.
See In re Chevenard, 139 F.2d 711, 712-13 (CCPA 1943) (declining to consider the belated challenge by an appellant to an examiner’s assertion as to “common knowledge” in the art “in the absence of any demand by appellant for the examiner to produce authority for his statement”); In re Boon, 439 F.2d 724, 728 (CCPA 1971) (requiring “a challenge to judicial notice … contain adequate information or argument so that on its face it creates a reasonable doubt regarding the circumstances justifying the judicial notice”).
ZURKO

The question of obviousness is "based on underlying factual determinations including . . . what th[e] prior art teaches explicitly and inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citations omitted).


Compare Ex parte Hilton, 148 USPQ 356, 356-57 (Bd. App. 1965) (claims were directed to fried potato chips with a specified moisture and fat content, whereas the prior art was directed to french fries having a higher moisture content. While recognizing that in some cases the particular shape of a product is of no patentable significance, the Board held in this case the shape (chips) is important because it results in a product which is distinct from the reference product (french fries)).

SEID

see also In re Seid, 161 F.2d 229, 231 (CCPA 1947) (differences in ornamentation are entitled to little weight in determining the obviousness of a claim to a structure).

II. ELIMINATION OF A STEP OR AN ELEMENT AND ITS FUNCTION

A. Omission of an Element and Its Function Is Obvious if the Function of the Element Is Not Desired
B.    Omission of an Element with Retention of the Element"s Function Is an Indicia of Unobviousness

The Examiner appears to be relying on the Manual of Patent Examining Procedure (MPEP) § 2144.04 II B, which states that “the omission of an element and retention of its function is an indicia of (un)obviousness.[sic]” See In re Edge, 359 F.2d 896 (CCPA 1966).
 
III.    AUTOMATING A MANUAL ACTIVITY

VENNER

In In re Venner, the court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art. In re Venner, 262 F.2d 91, 95 (CCPA 1958).
 
In re Rundell, 18 CCPA 1290, 48 F.2d 958, 9 USPQ 220[, 221] [“Appellant argues that his rejected claims rest upon an automatic mechanism. The mere statement that a device is to be operated automatically instead of by hand, without a claim specifying any particular automatic mechanism, is not the statement of an invention. Marchand v. Emken, 132 U. S. 195; In re Gill, 17 C. C. P. A. (Patents) 700, 36 F. (2d) 128.”]” In re Venner, 120 USPQ 192, 194 (CCPA 1958).
 
IV. CHANGES IN SIZE, SHAPE, OR SEQUENCE OF ADDING INGREDIENTS

A. Changes in Size/Proportion

GARDNER

However, it is well settled that it is an obvious matter of design choice to change the general shape or size of a known element in the absence of a disclosed non-obvious advantage associated with the change. Gardner vs. TEC Systems Inc., 725 F.2d 1338, 1349-50 (Fed. Cir. 1984); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975); In re Dailey, 357 F.2d 669, 672 (CCPA 1966).

Further, it is also well established that where the difference between the prior art and the claims are a recitation of relative dimension of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. See, e.g., Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1346 (Fed. Cir. 1984); 
 
B. Changes in Shape

DAILEY

However, it is well settled that it is an obvious matter of design choice to change the general shape or size of a known element in the absence of a disclosed non-obvious advantage associated with the change. Gardner vs. TEC Systems Inc., 725 F.2d 1338, 1349-50 (Fed. Cir. 1984); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975); In re Dailey, 357 F.2d 669, 672 (CCPA 1966). 

In re Dailey, 357 F.2d 669, 676 (CCPA 1966) (configuration of a claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent pervasive evidence that the particular configuration of the claimed container was significant).

C. Changes in Sequence of Adding Ingredients
 
V. MAKING PORTABLE, INTEGRAL, SEPARABLE, ADJUSTABLE, OR CONTINUOUS
A. Making Portable
B. Making Integral
LARSON

In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (A claim to a fluid transporting vehicle was rejected as obvious over a prior art reference which differed from the prior art in claiming a brake drum integral with a clamping means, whereas the brake disc and clamp of the prior art comprise several parts rigidly secured together as a single unit. The court affirmed the rejection holding, among other reasons, "that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.")

C. Making Separable

The Examiner sets forth an alternative rationale: that the separation of elements is a design consideration within the skill of the art. Ans. 9 (citing In re Dulberg, 289 F.2d 522 (CCPA 1961)). However, as Appellants point out (Reply Br. 3-4), in Dulberg it was held obvious to make a press fit cap removable because there was a particular reason to make the cap removable: to gain access to the end of the tube upon which the cap was secured. See Dulberg, 289 F.2d at 523. In this case, however, the Examiner has not identified a valid reason to make the first sub-assembly separable from the second. Accordingly, the Examiner’s alternative reasoning is not based on a rational underpinning.

D. Making Adjustable

E. Making Continuous
 
VI. REVERSAL, DUPLICATION, OR REAR­RANGEMENT OF PARTS 
 
A. Reversal of Parts

GAZDA

The Examiner’s stated rationale for concluding that the subject matter of claims 10-17 would have been obvious resembles the holding of In re Gazda, 219 F.2d 449, 452 (CCPA 1955) (cited in MANUAL OF PATENT EXAMINING PROCEDURE § 2144.04(VI)(A)). Despite this resemblance, the Examiner has not made sufficient findings to show that Gazda supports the conclusion that the subject matter would have been obvious.

B. Duplication of Parts

HARZA

Cf. In re Harza, 274 F.2d 669, 774 (CCPA 1960) ("It is well settled that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced".)

C. Rearrangement of Parts

JAPIKSE

(citing In re Japikse, 181 F.2d 1019 (CCPA 1954). In Japikse, the court held that moving a starter switch to a location different from the prior art was an obvious variation because the operation of the device would not be modified. In re Japikse, 181 F.2d at 1023. [however,] See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious design choice precluded when claimed structure and the function it performs are different from the prior art).
 
KUHLE
 
However, it is well settled that it is an obvious matter of design choice to change the general shape or size of a known element in the absence of a disclosed non-obvious advantage associated with the change. Gardner vs. TEC Systems Inc., 725 F.2d 1338, 1349-50 (Fed. Cir. 1984); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975); In re Dailey, 357 F.2d 669, 672 (CCPA 1966). 
 
See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (“The manner in which electrical contact is made for Smith’s battery would be an obvious matter of design choice within the skill of the art…. As the board pointed out, use of a spring-loaded contact in the manner claimed is well known with the common flashlight.”).

In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (“deletion of the switch member (and other elements) found in Smith and Sherrard, thereby deleting their function, was an obvious expedient”).
 
VII. PURIFYING AN OLD PRODUCT 
 
COFER

In the context of preparing alternative forms of prior art compounds, however, the court in In re Cofer, 354 F.2d 664 (CCPA 1966), reversed an obviousness rejection where the Examiner had concluded that the claims were merely directed to a crystalline form of an old compound. See id. at 666.

2144.05 Obviousness of Ranges [R-5]

Aller

"[I]t is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955).
 
Optimization of a known result-effective variable, such as concentration here, is generally obvious. Aller, 220 F.2d at 456.

According to In re Aller, 220 F.2d 454, 456 (CCPA 1955): [W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.

ANTONIE

Optimization of a parameter not recognized as being result-effective is not prima facie obvious. Application of Antonie, 559 F.2d 618, 620 (CCPA 1977).

Baird

“What a reference teaches is a question of fact.” In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994); In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992).

BOESCH

In this regard, while it is generally a matter of obviousness for the skilled artisan to determine the optimum value within a disclosed range, In re Boesch, 617 F.2d 272, 276 (CCPA 1980), it may not have been obvious for one of ordinary skill in the art to find an optimum value that is significantly outside the range taught by the prior art. See In re Sebek, 465 F.2d 904, 907 (CCPA 1972).

Geisler

Mere lawyer's arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re GEISLER, 116 F.3d 1465, 1470 (Fed. Cir. 1997);

see also In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997) (“When an applicant seeks to overcome a prima facie case of obviousness by showing improved performance in a range that is within or overlaps with a range disclosed in the prior art, the applicant must ‘show that the [claimed] range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”) (quoting In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990)).
 
"Only if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
 
HARRIS

The evidence must show that the unexpected results extend throughout the claimed subject matter but do not extend into the prior art teachings that fall outside of the claimed subject matter, i.e., that the claimed ranges are critical for obtaining the unexpected result. See, e.g., In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively Harris needed to narrow the claims.")
 
Whether a reference teaches away from a claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005).
 
In re Harris, 409 F.3d 1339, 1343 (Fed. Cir. 2005) (use of "about" in a claim shows that the applicant does not intend to limit the claimed ranges to their exact end-points).
 
Jones

The Federal Circuit flatly rejected such an analysis in the context of obviousness in In re Jones, 958 F.2d 347, 350 (Fed. Cir. 1992) (“We decline to extract from Merck the rule that the Solicitor appears to suggest—that regardless of how broad, a disclosure of a chemical genus renders obvious any species that happens to fall within it.”). A reference that does not adequately support obviousness will not suffice to support a demonstration of anticipation. It is not unusual for improved properties to be discovered within a previously disclosed range of a composition.


cf., e.g., In re Jones, 958 F.2d 347, 349-51 (Fed. Cir. 1992) (“Conspicuously missing from this record is any evidence, other than the PTO’s speculation (if it be called evidence) that one of ordinary skill in the herbicidal art would have been motivated to make the modifications of the prior art salts necessary to arrive at the claimed . . . salt.”).

Kulling

Evidence must be reasonably commensurate in scope with the claimed invention. See, e.g., In re Kulling, 897 F.2d 1147, 1149 (Fed. Cir. 1990);

Peterson

As stated in In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003), referring to Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir.1985): We have also held that a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties.
 
The rationale for determining the optimal parameters for prior art result-effective variables “flows from the ‘normal desire of scientists or artisans to improve upon what is already generally known.’” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007) (quoting In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003)).
 
See In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (an applicant may overcome a prima facie case of obviousness by showing that the claimed range achieves unexpected results relative to the prior art range throughout the entire claimed range); In re Hill, 284 F.2d 955, 958-59 (CCPA 1960) (The showing must also present enough data points within the prior art range, but outside the claimed range, to establish that the unexpected property does not occur outside the claimed range); and In re Baxter Travenol Labs, 952 F.2d 388, 392 (Fed. Cir. 1991) (The "difference in results" must be established as being between the claimed subject matter and the closest prior art.).
Woodruff

“It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).

2144.06 Art Recognized Equivalence for the Same Purpose [R-6]

>I. < COMBINING EQUIVALENTS KNOWN FOR THE SAME PURPOSE
Crocket

Kerkhoven

It is a matter of obviousness for one of ordinary skill in the art to combine two or more materials, such as the known antioxidants disclosed by Kosbab, when each is taught by the prior art to be useful for the same purpose. Kerkhoven, 626 F.2d at 850; In re Crocket, 279 F.2d 274, 276-77 (CCPA 1960).

In Kerkhoven, the CCPA found: “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose.” In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). Thus, Kerkhoven requires that the prior art recognize that each of two different compositions are useful for the same purpose.


>II. < SUBSTITUTING EQUIVALENTS KNOWN FOR THE SAME PURPOSE
FOUT
 
"The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." [KSR] at 416. Moreover, an "[e]xpress suggestion to substitute one equivalent for another need not be present to render such substitution obvious." In re Fout, 675 F.2d 297, 301 (CCPA 1982).
 
RUFF
 
Appellants also argue that a conclusion of obviousness cannot be based on equivalence known only to an applicant (Reply Br. 3 (citing In re Ruff, 256 F.2d 590, 598 (CCPA 1958)).
An examiner’s reliance on equivalents as a rationale supporting an obviousness rejection is inappropriate without evidence that the equivalency was recognized in the prior art. See In re Ruff, 256 F.2d 590, 599 (CCPA 1958) ("The equivalence must be disclosed in the prior art").

2144.07 Art Recognized Suitability for an Intended Purpose
 
LESHIN
 
In Leshin, the container-dispenser at issue was of a type made of plastics prior to the invention. Thus, the selection of a known plastic to replace the plastic of a prior art container-dispenser was considered to be obvious since it is well within the skill of an ordinary skilled artisan to replace one plastic with another plastic depending upon the application. See id. at 199. However, the present case is distinguishable from Leshin because here the Examiner has not established that it is known to make rotors of plastics so that the Examiner would be merely replacing the plastics of a known plastic rotor with another known plastic suitable for a particular application.

2144.08 Obviousness of Species When Prior Art Teaches Genus [R-6]

I. ** EXAMINATION OF CLAIMS DIRECTED TO SPECIES OF CHEMICAL COMPOSITIONS BASED UPON A SINGLE PRIOR ART REFERENCE

II. DETERMINE WHETHER THE CLAIMED SPECIES OR SUBGENUS WOULD HAVE BEEN OBVIOUS TO ONE OF ORDINARY SKILL IN THE PERTINENT ART AT THE TIME THE INVENTION WAS MADE

OCHIAI

As has often been pointed out, there are no per se rules in the law of obviousness. In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (“reliance on per se rules of obviousness is legally incorrect and must cease.”)

>A. Establishing a Prima Facie Case of Obviousness<

1. Determine the Scope and Content of the Prior Art

2. Ascertain the Differences Between the Closest Disclosed Prior Art Species or Subgenus of Record and the Claimed Species or Subgenus

3. Determine the Level of Skill in the Art

UNIROYAL

See, e.g., Uniroyal, Inc., v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052 (Fed. Cir. 1988) (Even when the applied prior art references were combined as proposed, no obviousness can be established if the claimed subject matter would not result from the proposed combination.)

4. Determine Whether One of Ordinary Skill in the Art Would Have Been Motivated To Select the Claimed Species or Subgenus


(a) Consider the Size of the Genus

(b) Consider the Express Teachings

(c) Consider the Teachings of Structural Similarity
 
HOCH

Furthermore, we must note where a reference is relied on to support a rejection, whether or not in a “minor capacity,” there would appear to be no excuse for not positively including the reference in the statement of the rejection. In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970).

(d) Consider the Teachings of Similar Properties or Uses

(e) Consider the Predictability of the Technology

(f) Consider Any Other Teaching To Support the Selection of the Species or Subgenus

5. Make Express Fact-Findings and Determine Whether They Support a Prima Facie Case of Obviousness

Beattie

“What a reference teaches is a question of fact.” In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994); In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992).

Bell

"'A prima facie case of obviousness is established when the teachings from the prior art itself would appear to have suggested the claimed subject matter to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783 (Fed. Cir. 1993)

Graham

A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning. See Graham, 383 U.S., at 36, 86 S.Ct 684 (warning against a "temptation to read into the prior art the teachings of the invention in issue" and instructing courts to " ‘guard against slipping into the use of hindsight’ " (quoting Monroe Auto Equipment Co. v. Heckethorn Mfg. & Supply Co., 332 F.2d 406, 412 (C.A.6 1964))). Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.

Jones

cf., e.g., In re Jones, 958 F.2d 347, 349-51 (Fed. Cir. 1992) (“Conspicuously missing from this record is any evidence, other than the PTO’s speculation (if it be called evidence) that one of ordinary skill in the herbicidal art would have been motivated to make the modifications of the prior art salts necessary to arrive at the claimed . . . salt.”).

Lintner

A prima facie case of obviousness is made by presenting evidence that the "reference teachings would appear to be sufficient for one of ordinary skill in the relevant art having the references before him to make the proposed substitution, combination or other modification." In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972).

Ochiai

“The test of obviousness vel non is statutory. It requires that one compare the claim’s ‘subject matter as a whole’ with the prior art ‘to which said subject matter pertains.’” In re Ochiai, 71 F.3d 1565, 1569 (Fed. Cir. 1995) (quoting 35 U.S.C. § 103). Section 103 requires “a searching comparison of the claimed invention – including all its limitations – with the teaching of the prior art.” Id. at 1572.

When determining whether a claim is obvious, an Examiner must make “a searching comparison of the claimed invention – including all its limitations – with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (emphasis added).

O'Farrell

We conclude that the improvement was not simply the result of routine experimentation. While O'Farrell states that “[o]bviousness does not require absolute predictability of success”, O'Farrell identifies two kinds of error.

In some cases, what would have been “obvious to try” would have been to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful. . . . In others, what was “obvious to try” was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.

In re O'Farrell, 853 F.2d 894, 903 (Fed.Cir.1988). The instant situation fits O'Farrell’s first kind of error, since the prior art of Wershofen does not identify the addition of terminator as a critical parameter and provides no direction which suggests multiple additions of the same terminator.

The evidence of record is insufficient to show obviousness if it merely suggests “to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.” In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988).

2144.09 Close Structural Similarity Between Chemical Compounds (Homologs, Analogues, Isomers) [R-6]

>
I. < REJECTION BASED ON CLOSE STRUCTURAL SIMILARITY IS FOUNDED ON THE EXPECTATION THAT COMPOUNDS SIMILAR IN STRUCTURE WILL HAVE SIMILAR PROPERTIES
 
DILLON
 
In order to make a prima facie case of obviousness based on the structural similarity between the claimed compound and the compound disclosed by the prior art, not only must the structural similarity exist, but the prior art must also provide reason or motivation to make the claimed compound. See In re Dillon, 919 F. 2d 688, 692 (Fed. Cir. 1990) (en banc), In re Mayne, 104 F. 3d 1339, 1341 (Fed. Cir. 1997); In re Payne, 606 F.2d 303, 313 (CCPA 1979)

[I]t is not necessary in order to establish a prima facie case of obviousness that both a structural similarity between a claimed and prior art compound . . . be shown and that there be a suggestion in or expectation from the prior art that the claimed compound . . . will have the same or a similar utility as one newly discovered by applicant.

In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990). “A prima facie case has been established” where “[t]he art provide[s] the motivation to make the claimed compositions in the expectation that they would have similar properties.” Id. “[T]he burden (and opportunity) then falls on applicant to rebut that prima facie case.” Id. at 692.

Such rebuttal or argument can consist of a comparison of test data showing that the claimed compositions possess unexpectedly improved properties or properties that the prior art does not have. . . . There is no question that all evidence of the properties of the claimed composition and the prior art must be considered in determining the ultimate question of patentability, but it is also clear that the discovery that a claimed compound or composition possesses a property not disclosed for the prior art subject matter, does not by itself defeat a prima facie case.

Id. at 692-693 (internal citations omitted).

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II. < HOMOLOGY AND ISOMERISM ARE FACTS WHICH MUST BE CONSIDERED WITH ALL OTHER RELEVANT FACTS IN DETERMINING OBVIOUSNESS
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III. < PRESENCE OF A TRUE HOMOLOGOUS OR ISOMERIC RELATIONSHIP IS NOT CONTROLLING
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IV. < PRESENCE OR ABSENCE OF PRIOR ART SUGGESTION OF METHOD OF MAKING A CLAIMED COMPOUND MAY BE RELEVANT IN DETERMINING PRIMA FACIE OBVIOUSNESS
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V. < PRESUMPTION OF OBVIOUSNESS BASED ON STRUCTURAL SIMILARITY IS OVERCOME WHERE THERE IS NO REASONABLE EXPECTATION OF SIMILAR PROPERTIES
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VI. < IF PRIOR ART COMPOUNDS HAVE NO UTILITY, OR UTILITY ONLY AS INTERMEDIATES, CLAIMED STRUCTURALLY SIMILAR COMPOUNDS MAY NOT BE PRIMA FACIE OBVIOUS OVER THE PRIOR ART
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VII. < PRIMA FACIE CASE REBUTTABLE BY EVIDENCE OF SUPERIOR OR UNEXPECTED RESULTS


Dillon

It is well settled that the prior art need not disclose the same purpose for a claimed method in order to establish its obviousness under 35 U.S.C. § 103.In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990).

Wiechert

In re Wiechert, 370 F.2d 927, 936 (CCPA 1967) ("This court has uniformly followed the sound rule that an issue raised below which is not argued in this court, even if it has been properly brought here by a reason of appeal, is regarded as abandoned and will not be considered. It is our function as a court to decide disputed issues, not to create them.")
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