Posts Tagged: "Inherent Obviousness"

Federal Circuit Affirms PTAB Finding that Claims for Blood Pressure Treatment are Obvious

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled in a precedential decision Wednesday that the Patent Trial and Appeal Board (PTAB) was correct to affirm a United States Patent and Trademark Office (USPTO) examiner’s finding that the claims of U.S. Patent Application 15/131,442 were obvious in view of the prior art. The patent application was filed by John Couvaras and covers a method of reducing high blood pressure. The examiner rejected the claims as “not patentable because they naturally flowed from the claimed administration of the known antihypertensive agents,” specifically, a GABA-a agonist and an Angiotensin II Receptor Blocker (ARB). Couvaras conceded during prosecution that Couvaras that GABA-a agonists and ARBs “have been known as essential hypertension treatments for many, many decades” but appealed to the PTAB on the ground that the prostacyclin—a naturally occurring compound in the body that acts as an anticoagulant and vasodilator—increase was unexpected. Couvaras also argued that objective indicia overcame any existing prima facie case of obviousness.

Federal Circuit Treatment of Inherency Arguments Aimed at Method of Treatment Patent Claims

This article examines Federal Circuit case law analyzing validity challenges to method of treatment patent claims where the claims at issue are alleged to recite an inherent property of a method or molecule taught in the prior art. While Federal Circuit case law challenging method of treatment claims on inherent anticipation grounds is generally globally consistent and reasonably straightforward, the court’s inherent obviousness case law is less so.

Inherency Rejections: Combating Inherent Obviousness

An inherency rejection, whether it be inherent anticipation or inherent obviousness, can be extremely difficult to overcome. Indeed, at many times it seems there is a great deal of subjectivity weaved into an inherency rejection… Inherency was initially a doctrine rooted in anticipation, but has long since been applied to become applicable to obviousness rejections as well. What this means is this: Inherency may supply a missing claim limitation in either an obviousness rejection. See Par Pharmaceutical, Inc. v. TWi Pharmaceuticals, Inc., 773 F.3d 1186 (2014). However, the Federal Circuit has always been mindful that inherency in the context of an obviousness rejection must be carefully limited. There is “a high standard in order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis…” Id.

Inquiry into Unexpectedness is Essential Even for Determining Obviousness in Inherency

The Federal Circuit reversed. Indeed, it found that the Board committed legal error by improperly relying on inherency to find obviousness and in its analysis of motivation to combine the references. The court found that the Board erred in relying on inherency to dismiss evidence showing unpredictability in the art in rejecting Honeywell’s argument that a skilled artisan would not have been motivated to combine the references with a reasonable expectation of success. It referred to an earlier opinion [citations omitted] to state that “the use of inherency in the context of obviousness must be carefully circumscribed because “[t]hat which may be inherent is not necessarily known” and that which is unknown cannot be obvious.”

Board’s analysis internally inconsistent, Federal Circuit vacates inter partes reexam

At the Federal Circuit, Honeywell argued that the Board erred in (1) finding a motivation to combine the references with a reasonable expectation of success, (2) rejecting Honeywell’s objective evidence of patentability, and (3) relying on a new ground of rejection (Omure), without giving Honeywell notice and opportunity to respond. The Court found that the Board improperly relied on inherency to find the claims obvious and in its analysis of motivation to combine. First, the Board’s analysis was internally inconsistent. While finding that “the claimed combination’s stability/miscibility is an inherent property of HFO-123yf and cannot confer patentability, the Board also acknowledged that inherent properties must be considered if they demonstrate unexpected and nonobvious results.