26Oct 2017

Silvia Salvadori - Expectation of Success: Lessons from Examiners’ Rejections {2:10 minutes to read} In the recent case, In re Stepan Co., the Federal Circuit vacated an obviousness rejection that had been affirmed by the USPTO Patent Trial and Appeal Board (PTAB).

The claims were directed to a composition comprising, inter alia, a particular range of surfactants, wherein the formulation had a cloud point above at least 70oC.

The Examiner rejected the claims as obvious over one reference, sustaining the rejection on the basis “that it was routine optimization to select and adjust the claimed range of surfactants, because the cited reference comprised any combination of surfactants.” The Examiner also found that achieving the cloud point would have been a matter of routine optimization, because the reference taught a cloud point above 60oC.

The Board affirmed the USPTO rejection and found that the applicant has failed to provide evidence that it would not have been routine optimization to select and adjust the range of surfactants to arrive at the claimed cloud point, and also found that the patentee has failed to establish the criticality of the claimed range of surfactants.

The Federal Circuit disagreed.

The majority of the Federal Circuit criticized the PTAB, because according to the Court, the PTAB has failed to articulate why a person of ordinary skill in the art would have had a reasonable expectation of success in selecting that particular range and that particular cloud point. Moreover, the burden to show that a cloud point above 70C would have been obvious to one skilled in the art should be the responsibility of the USPTO, not the Applicant.

Too often, the Examiners reject claims on the basis outlined in this decision. Hopefully we can now rebut these kinds of rejections by relying on the Federal Circuit’s arguments. Contact me with questions or comments at silvia@salvadorilaw.com.

Silvia Salvadori, PhD Silvia Salvadori, PhD

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