The Patent Office should be estopped from raising a § 112 (a) rejection after raising a § 102 or § 103 rejection in an earlier office action.  35 U.S.C. § 112 (a) states:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention

Logically, if the application does not describe an invention in terms that allows one skilled in the art to make and use it, then the Patent Office should not have sufficient information to suggest that the application is not novel or obvious.  In order to determine something is not novel or obvious you first have to know what it is.  I have no objection to the Patent Office putting a 35 U.S.C. § 112 (a) and novelty/obviousness rejection in the same Office Action, where the PTO explains that to the best of their understanding of the invention it would not be novel or obvious for the following reasons.

Last year marked the fifth anniversary of the Supreme Court landmark decision in KSR v. Teleflex (April 30, 2007), when the United States Supreme Court addressed the obviousness of patents under 35 U.S.C. § 103 for the first time since Graham v. John Deere in 1966.

A few trends in the law of obviousness as pertaining to chemical innovations were readily apparent in 2012.  Pharmaceutical patent holders in litigation fared well at the Federal Circuit, while patent holders appealing decisions from the Board of Patent Appeals and Interferences fared poorly, and a third more subtle trend suggests chemical patents in district court litigation may be less susceptible to invalidation for obviousness post-KSR.

In Part I of this article we explored the trends in pharmaceutical litigation during 2012.  In this second and final segment we focus on PTO Board decisions and appeals from non-pharmaceutical litigation relating to chemical patents.

Last year marked the fifth anniversary of the Supreme Court landmark decision in KSR v. Teleflex (April 30, 2007), when our nation’s highest court addressed the obviousness of patents under 35 U.S.C. § 103 for the first time since Graham v. John Deere in 1966.  But the patent-at-issue in KSR was mechanical. Patent holders in the chemical arts were wondering whether (more akin to hoping?) KSR’s loosening of the obviousness analysis might have less impact on chemical / pharmaceutical inventions, as opposed to mechanical inventions, because of inherent unpredictability in the art of the former.  As we enter 2013, we think this is a good time to review Federal Circuit decisions from the last twelve months to discern trends and patterns in the post-KSR obviousness analysis of chemical patents.

A few trends were readily apparent in 2012.  First, pharmaceutical patent holders in litigation fared well – in a series of cases, the Federal Circuit rejected obviousness attacks in pharmaceutical patent challenges on appeal from the district courts.  Second, patent holders appealing decisions from the Board of Patent Appeals and Interferences (whether it be an original application, a reexamination, or a reissue) fared poorly – the Federal Circuit affirmed several Board decisions finding chemical patent claims obvious.  While these trends are not surprising, a third more subtle trend suggests chemical patents in district court litigation may be less susceptible to invalidation for obviousness post-KSR.   In 2012, when the Federal Circuit reversed the obviousness decision below on a chemical patent, those reversals favored non-obviousness three to one.

Our review lends itself to dividing the 2012 Federal Circuit obviousness decisions in chemical cases in three different categories:  appeals from i) pharmaceutical litigation, ii) PTO Board decisions, and iii) non-pharmaceutical litigation over chemical patents. What follows is our review of appeals from pharmaceutical litigation. Part II of the article will focus on PTO Board decisions and appeals from non-pharmaceutical litigation relating to chemical patents.

Last week I wrote about the petition for en banc rehearing that I recently filed in Plasmart v. Kappos.  See Petition for Rehearing en banc filed in Plasmart v. Kappos and How Much Deference Should the CAFC Give the USPTO?  The case arose from what was originally an inter partes reexamination of U.S. Patent No. 6,722,674. In the reexamination proceeding the patent examiner found claims 20-33 to be patentable.  The Board agreed that claims 20-33 were patentable as not being obvious, but also found claim 1 patentable as well.  Then the Federal Circuit, in a nonprecedential decision, determined that none of the claims were patentable.  That was when I became involved in the case.

The Board recognized multiple characteristics that differentiate the claimed invention in the “674 patent from the prior art combination of Song and Handong.  Among these, the Board specifically determined that the claimed invention possessed a “supporting arm” and that the safety wheels of a resultant combination of Song and Handong would be raised off the ground, unlike what is depicted in the ‘674 patent and recited in the claims.  Still, the panel determined that the claims were invalid.  How is it possible to find an invention obvious when not all of the elements are within the prior art?  This is unfortunately a disturbing trend that has been brought about by a misreading of KSR.

Yesterday I wrote about the petition for en banc rehearing that I recently filed in Plasmart v. Kappos.  See Petition for Rehearing en banc filed in Plasmart v. Kappos. The case arose from what was originally an inter partes reexamination of U.S. Patent No. 6,722,674. The patent examiner ultimately concluded that claims 20-33 were patentable.  The Board agreed that claims 20-33 were patentable as not being obvious, but also determined that claim 1 was patentable as well.  Then at the Federal Circuit, in a nonprecedential decision, the panel determined that none of the claims were patentable.

I question whether it is appropriate to have a nonpredential opinion after the USPTO has gone through the time and expense of an inter partes reexamination.  Based on the decision I specifically raised as an issue whether the original panel provided proper deference to the Board’s finding of facts, or instead merely substituted their own view.  A view that I don’t believe was properly explained with the required specificity under KSR.

I have been doing a lot of research and writing on obviousness and KSR v. Teleflex lately, but not for publication on the blog so far.  Last Friday, July 6, 2012, I filed a petition for rehearing en banc in Plasmart v. Kappos.  I represent the Appellee-Patentee.  The case arose out of what was originally an inter partes reexamination of U.S. Patent No. 6,722,674. The patent examiner found some of the claims allowable, the Board found all of the claims allowable, and then in a nonprecedential opinion the Federal Circuit overturned the Board.

This case intrigued me from the start because it seemed rather odd that there should be a nonprecedential opinion in an appeal to the Federal Circuit necessitated by a completely adjudicated inter partes reexamination at the United States Patent and Trademark Office. Moreover, the original panel concluded that the combination of known elements resulted in a predictable result.  The problem with that reasoning, however, is that not all of the elements were found within the prior art.  In fact, the Board found that there are no fewer than three (3) meaningful structural differences between the invention as claimed and the prior art.

When attempting to determine whether an invention is patentable it is necessary to go through the patentability requirements in an effort to see whether patent claims can be drafted that will be usefully broad and that will be distinguishable over the prior art. I recently wrote about the patentability requirements, providing an overview of patentability.

Where the rubber meets the road when it comes to patentability is often with respect to determining whether an invention is non-obvious, which is one of the five patentability requirements. It has always been difficult to explain the law of obviousness to inventors, business executives and law students alike. Since the United States Supreme Court issued its decision in KSR v. Teleflex five years ago it has become even more difficult to provide a simple, coherent articulation of the law of obviousness that is at all intellectually satisfying. That is in no small part due to the fact that the determination about whether an invention is obvious is completely subjective.

If you look at the Federal Circuit cases it seems that there is an awful lot of reasoning (if you can call it that) that justifies a conclusion already formed. Simply stated, the state of the law of obviousness allows a decision maker to make a determination about obviousness that seems appropriate from a subjective standpoint and then weave the “reasoning” to justify the conclusion already reached.

There are essentially five patentability requirements. In order for a claimed invention to be patented each of these requirements must be satisfied. The claimed invention must be (1) comprised of patent eligible subject matter; (2) useful; (3) novel; (4) non-obvious; and (5) adequately described. The first three of these requirements were discussed generally in Patentability Overview: When can an Invention be Patented? published last week. This article picks up with an overview of the law of obviousness and what constitutes an adequate description.

The Nonobviousness Requirement – 35 U.S.C. 103

Obviousness is a critical element to patentability. In essence, even if the applicant can demonstrate patentable subject matter, utility and novelty, the patent will not issue if the invention is trivial. In order to determine if an invention is trivial it is necessary to see if there was motivation in the prior art to do what the inventor has done. If the prior art does not explicitly, and with identity of elements, teach the invention, the patent applicant may still be thwarted if there are a number of references that, when combined, would produce the claimed invention.

The 5^th anniversary of the Supreme Court’s KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) decision is on April 30^th.  This is a good time to review the implications of this case, but an even better time to look into the origins and constitutionality of the Non-obviousness requirement.  You might object that the jurisprudence of the non-obviousness requirement is so well established that nothing can be learned from this sort of analysis.  I disagree.  Patent law is under assault by the Supreme Court, the media, the ‘information wants to be free’ crowd, multinational corporations, and the economics profession.  If we attempt to explain patent law based on the decisions of people who never passed the patent bar, never wrote a patent, never prosecuted a patent, and do not have a technical background, we are doomed.  We need to define patent law as a natural law/right based on certain fundamental truths.  This is the only way to get the non-patent attorney judge or the general public to understand patent law and understand that it represents justice.  It is also why many of my comments and posts appear repetitive.  For a list of some of the fundamental principles of patent law please see Foundations of Patent Law.

Holding in KSR

The holding in KSR was confused, but is generally accepted as stating that the teaching, suggestion, motivation rule (TSM rule) is not the only rule for determining if an invention is obvious.  What other standards the courts and the PTO should use was somewhat nebulous, but clearly the three prong test of Graham v. John Deere Co., 383 U.S. 1 (1966) is still valid.  In addition, the Supreme Court seemed to adopt the ‘I know it when I see it’ standard to obviousness.  The decision overturned the relatively objective TSM test for a subjective non-test.

On Monday, April 30, 2007, the United States Supreme Court issued its final decision in the matter of KSR v. Teleflex, which overruled the Federal Circuit’s application of the so-called “teaching, suggestion, motivation” rule (or simply TSM) as it applies to determining whether an invention is obvious. This 5th Anniversary of the ruling provides an opportunity to revisit the decision and where we have come since. This will be a recurring theme this week on IPWatchdog.com as we look at the law of obviousness in the wake of this infamous decision.

At least for the last generation (and likely longer) no other Supreme Court case in the patent arena has been nearly as influential as the Court’s decision in KSR v. Teleflex. This is because obviousness is where the rubber meets the road for the patentability of inventions. It is not enough that the invention is different; it also must also be non-obvious. TSM sought to inject objectivity into the obviousness analysis, and did so rather successfully. There were from time to time patents granted on inventions that would make you scratch your head and wonder, but was that any reason to remove objectivity from the obviousness analysis? No, but that is what the Supreme Court did when they issued the KSR decision, taking many by surprise.

One of the most common questions I receive, dating back to the very beginning of IPWatchdog.com, is whether recipes can be protected by any form of intellectual property.  Typically the question presents specifically by a reader asking whether a recipe can be patented, or how once can patent a recipe.

In most cases the typical recipe for a “killer Margarita” or “the best barbeque sauce ever” will not be patentable because they won’t be unique enough, typically failing on the non-obviousness requirement.  Of course,  the only way to know for sure is to understand how the Patent Office reaches its conclusions relating to what can and cannot be patented.  It is certainly possible to obtain a patent on a recipe or food item if there is a unique aspect, perhaps if there is something counter-intuitive or a problem (such as self live or freshness) is being addressed.  The trick will be identifying a uniqueness that is not something one would typically think to try.

On Monday, April 30, 2007, the United States Supreme Court issued its much anticipated decision in KSR International Co. v Teleflex, Inc.  For many months patent pundits tried to predict how the Supreme Court would handle the Federal Circuit “teaching, suggestion and motivation” test, used to determine whether a particular patent claim is obvious.  Predictions of this sort are usually no more reliable than predictions of any other kind, and while everyone had an opinion, few actually anticipated what the Supreme Court would do.  Whether the surprise that was KSR was owing to the patent bar being willful blind or simply having misplaced hope is another story for another day.

The Supreme Court dislikes bright line rules, but surely they wouldn’t opt for a totality of the circumstances approach to obviousness and throw away TSM, thereby leaving some 6,000+ patent examiners to make their own determinations about the qualitative value of an invention?  Isn’t that what erasing “flash of creative genius” was meant to do away with? Sadly, the Supreme Court put on display their severe lack of understanding for all to see, believing obviousness to be about common sense.  But who’s common sense?  What boundaries would be put in place?  As is all to familiar, the Supreme Court took the “we decide, you figure it out” approach.  I guess they loathe showing their work, which is probably why they aren’t mathematicians!