BPAI's MATSUBARA decision on anticipation, obviousness
In Ex parte SATOSHI MATSUBARA (Appeal 2009-006581, decision on 10 Feb 2010 ), the Board of Patent Appeals and Interferences [BPAI] affirmed an anticipation rejection of claim 17 of application 10/398,507 , which claim stated:
17. A therapeutic method for improving bone metabolism in a
human or animal subject comprising:
selecting a human or animal having a tendency toward a decrease in
bone density, and
therapeutically administering to said human or animal subject
fermented soy milk which is obtained by fermenting soy milk with one or
more microorganisms selected from the group consisting of Lactobacillus
casei, Lactobacillus mali, and Bifidobacterium breve.
The rejection for obviousness of claim 18
18. The method of Claim 17, wherein said subject is human.
was also affirmed.
Anticipation rejection of claim 17
Of the reasoning for the rejection of claim 17 under 35 USC 102, the BPAI noted:
There is no dispute that Kikuchi-Hayakawa discloses administering fermented soy milk to
ovariectomized rats. The Examiner has provided unrefuted evidence
establishing that ovariectomized rats exhibit a decrease in bone density
, i.e., that ovariectomized rats have “a tendency toward a decrease in
bone density” as required by the claims. Appellants have not identified any
manipulative difference between Kikuchi-Hayakawa’s method and the
claimed method. As discussed above, the claimed method “is inherent and
in the public domain if it is the ‘natural result flowing from’ the explicit
disclosure of the prior art” (Perricone, 432 F.3d at 1377), regardless of
whether the inherent result is recognized.
That is, if fermented soy milk was given to rats with decreased bone density, the
improved bone metabolism is presumed.
Obviousness rejection of claim 18
The patent applicants asserted the following argument:
Appellants contend that “[t]here is no motivation to modify the
method of Kikuchi-Hayakawa to administer fermented soy milk to a human
having decreased bone metabolism because the prior art does not suggest
that fermented soy milk also induces a greater effect (if at all) for bone
metabolism improvement as it does for plasma cholesterol level compared to
soy milk” (App. Br. 11).
The BPAI relied on findings of fact including:
Kikuchi-Hayakawa discloses administering fermented soy milk
to ovariectomized, estrogen-deficient rats, but doesn’t disclose administering
it to human subjects.
Hayakawa teaches that soy milk fermented by Bifidobacterium
lacks the “distinctive unpleasant odor and taste” of unfermented soy milk,
and “has excellent lipid metabolism-improving effects”
and concluded:
Given the recognized health benefits of both soy milk and fermented
soy milk on conditions associated with estrogen-deficiency, we agree with
the Examiner that it would have been obvious to administer fermented soy
milk to post menopausal women, who have a tendency toward unfavorable
lipid metabolism and decreased bone density. Whether or not one would
have expected fermented soy milk to have a greater effect on bone density
than unfermented soy milk is irrelevant, absent evidence of unexpected
results.
Recall that the claim requires the treated subject must be one having a tendency toward a decrease in
bone density and the method is for improving bone metabolism.
The applicants were arguing that there was no motivation to go FROM "fermented soy milk
to rats" TO "fermented soy milk to humans" but the applicants lacked DATA suggesting
fermented soy milk was BETTER than unfermented soy milk as to bone metabolism.
On the more general subject of "obvious design choice", recall the CAFC case IN RE PAUL CHU wherein a decision by Judge Rich overturned an obviousness finding by the BPAI (which position was argued by Nancy J. Linck. At issue was the location of a catalyst: The Board concluded that the change between situating the catalyst in between the bag and the bag retainer and within the bag retainer is a matter of "design choice" and affirmed the rejection of claim 1. Judge Rich implicitly gave advice to applicants to avoid a finding of obvious design choice-->
From the totality of the record, we hold that placement of the SCR catalyst within the bag retainer would not have been merely a matter of "design choice." First, there is no teaching or suggestion in the prior art that would lead one of ordinary skill in the art to modify the Szymanski structure to place the SCR catalyst within a bag retainer as opposed to between two filter bags as disclosed in Szymanski. Next, Chu's technical evidence relating to the frailty of fabric filters during pulse-jet cleaning clearly counters the assertion that placement of the catalyst in the baghouse is merely a "design choice." Specifically, Chu's evidence regarding the violent "snapping" action during pulse-jet cleaning, the difficulty in stitching compartments including the capacity to withstand high temperatures, and problems encountered from variable path lengths due to settling of the catalyst particles in each compartment militates against a conclusion that placement of the SCR catalyst is merely a "design choice." See In re Gal, 980 F.2d 717, 25 USPQ2d 1076 (Fed. Cir. 1992) (finding of "obvious design choice" precluded where the claimed structure and the function it performs are different from the prior art).
HOWEVER, the Supreme Court case of KSR v. Teleflex may have tightened up the situation wherein there are only a few choices available:
When there is a design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp.
If this leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that instance the
fact that a combination was obvious to try might show that it was obvious
under § 103.
from the IPBiz post
CAFC affirms BPAI decision in Kubin: obviousness found
See also
http://ipbiz.blogspot.com/2005/11/evidence-of-recent-drop-in-patent.html
USPTO e-FOIA
17. A therapeutic method for improving bone metabolism in a
human or animal subject comprising:
selecting a human or animal having a tendency toward a decrease in
bone density, and
therapeutically administering to said human or animal subject
fermented soy milk which is obtained by fermenting soy milk with one or
more microorganisms selected from the group consisting of Lactobacillus
casei, Lactobacillus mali, and Bifidobacterium breve.
The rejection for obviousness of claim 18
18. The method of Claim 17, wherein said subject is human.
was also affirmed.
Anticipation rejection of claim 17
Of the reasoning for the rejection of claim 17 under 35 USC 102, the BPAI noted:
There is no dispute that Kikuchi-Hayakawa discloses administering fermented soy milk to
ovariectomized rats. The Examiner has provided unrefuted evidence
establishing that ovariectomized rats exhibit a decrease in bone density
, i.e., that ovariectomized rats have “a tendency toward a decrease in
bone density” as required by the claims. Appellants have not identified any
manipulative difference between Kikuchi-Hayakawa’s method and the
claimed method. As discussed above, the claimed method “is inherent and
in the public domain if it is the ‘natural result flowing from’ the explicit
disclosure of the prior art” (Perricone, 432 F.3d at 1377), regardless of
whether the inherent result is recognized.
That is, if fermented soy milk was given to rats with decreased bone density, the
improved bone metabolism is presumed.
Obviousness rejection of claim 18
The patent applicants asserted the following argument:
Appellants contend that “[t]here is no motivation to modify the
method of Kikuchi-Hayakawa to administer fermented soy milk to a human
having decreased bone metabolism because the prior art does not suggest
that fermented soy milk also induces a greater effect (if at all) for bone
metabolism improvement as it does for plasma cholesterol level compared to
soy milk” (App. Br. 11).
The BPAI relied on findings of fact including:
Kikuchi-Hayakawa discloses administering fermented soy milk
to ovariectomized, estrogen-deficient rats, but doesn’t disclose administering
it to human subjects.
Hayakawa teaches that soy milk fermented by Bifidobacterium
lacks the “distinctive unpleasant odor and taste” of unfermented soy milk,
and “has excellent lipid metabolism-improving effects”
and concluded:
Given the recognized health benefits of both soy milk and fermented
soy milk on conditions associated with estrogen-deficiency, we agree with
the Examiner that it would have been obvious to administer fermented soy
milk to post menopausal women, who have a tendency toward unfavorable
lipid metabolism and decreased bone density. Whether or not one would
have expected fermented soy milk to have a greater effect on bone density
than unfermented soy milk is irrelevant, absent evidence of unexpected
results.
Recall that the claim requires the treated subject must be one having a tendency toward a decrease in
bone density and the method is for improving bone metabolism.
The applicants were arguing that there was no motivation to go FROM "fermented soy milk
to rats" TO "fermented soy milk to humans" but the applicants lacked DATA suggesting
fermented soy milk was BETTER than unfermented soy milk as to bone metabolism.
On the more general subject of "obvious design choice", recall the CAFC case IN RE PAUL CHU wherein a decision by Judge Rich overturned an obviousness finding by the BPAI (which position was argued by Nancy J. Linck. At issue was the location of a catalyst: The Board concluded that the change between situating the catalyst in between the bag and the bag retainer and within the bag retainer is a matter of "design choice" and affirmed the rejection of claim 1. Judge Rich implicitly gave advice to applicants to avoid a finding of obvious design choice-->
From the totality of the record, we hold that placement of the SCR catalyst within the bag retainer would not have been merely a matter of "design choice." First, there is no teaching or suggestion in the prior art that would lead one of ordinary skill in the art to modify the Szymanski structure to place the SCR catalyst within a bag retainer as opposed to between two filter bags as disclosed in Szymanski. Next, Chu's technical evidence relating to the frailty of fabric filters during pulse-jet cleaning clearly counters the assertion that placement of the catalyst in the baghouse is merely a "design choice." Specifically, Chu's evidence regarding the violent "snapping" action during pulse-jet cleaning, the difficulty in stitching compartments including the capacity to withstand high temperatures, and problems encountered from variable path lengths due to settling of the catalyst particles in each compartment militates against a conclusion that placement of the SCR catalyst is merely a "design choice." See In re Gal, 980 F.2d 717, 25 USPQ2d 1076 (Fed. Cir. 1992) (finding of "obvious design choice" precluded where the claimed structure and the function it performs are different from the prior art).
HOWEVER, the Supreme Court case of KSR v. Teleflex may have tightened up the situation wherein there are only a few choices available:
When there is a design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp.
If this leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that instance the
fact that a combination was obvious to try might show that it was obvious
under § 103.
from the IPBiz post
CAFC affirms BPAI decision in Kubin: obviousness found
See also
http://ipbiz.blogspot.com/2005/11/evidence-of-recent-drop-in-patent.html
USPTO e-FOIA
posted by Lawrence B. Ebert at 9:15 AM
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