Failure to prove obviousness revives patent application

February 27, 2018
Patterson Thuente IP

A patent applicant’s first round of appeals is to the Patent Trial and Appeal Board (PTAB). But if a patent applicant receives a negative ruling from the PTAB, it isn’t necessarily the end of the road. The Federal Circuit Court of Appeals made that clear in a case where it faulted the Board for failing to adequately lay out just why an invention was obvious and therefore unpatentable.

The seeds of the case

The Stepan Company applied for a patent for a type of herbicidal concentrate consisting of water, a glyphosate salt in an aqueous solution and a surfactant, where the concentrate had a cloud point above at least 70 degrees Celsius. The patent examiner rejected the application for obviousness. The examiner cited an earlier patent application as showing that achieving a composition with a cloud point of at least 70 degrees would have been a matter of routine optimization.

The PTAB affirmed the examiner’s rejection. The applicant then turned to the Federal Circuit Court of Appeals for relief.

Down in the weeds

Inventions are unpatentable due to obviousness if someone in the relevant field (a “skilled artisan”) is motivated to combine existing inventions and he or she has a reasonable expectation of success. In this case, the PTAB agreed with the patent examiner that it would have been routine optimization for a skilled artisan to select and adjust the surfactants Stepan used to achieve the desired cloud point.

The Federal Circuit faulted the Board for not explaining 1) why it would have been “routine optimization” to select and adjust those particular surfactants and arrive at the claimed invention and 2) why a skilled artisan would have had a reasonable expectation of success. The court further found that the PTAB had erred by requiring Stepan to prove the patentability of its invention. Instead, the Federal Circuit said, the U.S. Patent and Trademark Office first had to establish the elements of obviousness. Only then was Stepan required to rebut that evidence by proving its invention was indeed patentable.

Another bite at the apple

In the wake of its criticisms of the PTAB’s approach to its review of the examiner’s findings, the Federal Circuit vacated the Board’s decision and sent the case back for further proceedings. The PTAB will first have to explain why a skilled artisan would have been motivated and likely to succeed at achieving Stepan’s invention. Only if it does so will Stepan have to prove patentability. 

In re Stepan Co., No. 16-1811, Aug. 25, 2017, Fed. Cir.


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