Board addresses unexpected results in Ex parte Wacker Chemie AG
From the Patent Trial and Appeal Board [PTAB] decision written by FRED E. McKELVEY in Ex parte Wacker Chemie AG ,
concerning application 11/686,037 :
On the basis of the above-mentioned portions of Weitzel, the Examiner had
a more than adequate reason for concluding that it would have been obvious to use
polyvinyl alcohol in the amounts described by Weitzel absent convincing evidence
of an unexpected result based on the use of applicant’s amounts. Action, page 5.
In re Heyna, 360 F.2d 222, 228 (CCPA 1966) ("It was incumbent upon appellants
to submit clear and convincing evidence to support their allegation of unexpected
property."). See also McClain v. Ortmayer, 141 U.S. 419, 429 (1891) (conclusive
evidence needed to establish new function)
In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (inventor must
show that the results the inventor says the inventor gets with the invention are
actually obtained with the invention). Hence, the Examiner has a fact-based point
that the data is not commensurate in scope with the breadth of the claims.
Yes, In re Best was cited:
Since the Weitzel compositions can have the same ingredients in the same amounts, the Examiner had a sufficient basis for finding that the Weitzel composition “must necessarily be self-leveling.” Action, page 5; In re Best, 562 F.2d 1252, 1254-55 (CCPA 1970)
("[w]here, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product"). See also In re Spada, 911 F.2d 705, 708-9 (Fed. Cir. 1990) (same) and In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (same).
Yes, KSR was cited:
The Examiner reasoned that it would have been obvious to use the known
Haerzschel dispersants in the Weitzer process given that such a use would have
been of a known material for its intended purpose, citing Sinclair & Carroll Co. v.
Interchemical Corp., 325 U.S. 327 (1945). The combination of familiar elements
(Haerzschel’s hydrolyzed polyvinyl alcohol) according to known methods (those
of both Weitzel and Haerzschel) is likely to be obvious when it does no more than
yield predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
As to enablement:
If Penzel stands for the proposition advanced by applicant, then arguably
Penzel and Weitzel disagree on the use of polyvinyl alcohol as a protective colloid.
Weitzel explicitly describes the use of polyvinyl alcohol as a protective colloid
stabilizer. Example 2. We have no reason to doubt the objective statements made
by Weitzel. Cf. In re Spence, 261 F.2d 244, 246 (CCPA 1958), which states that
"[t]he invention disclosed in a patent is presumed to be operative because the
patent enjoys a statutory presumption of validity *** and operativeness is a
prerequisite to validity ***."; In re Fried, 329 F.2d 323, 327 (CCPA 1964)
(applicant has the burden to establish that a process described in a patent to
produce claimed product is inoperative and could not be made operative by the use
ordinary skill in the art). See also In re Antor Media Corp., 689 F.3d 1282, 1289
(Fed. Cir. 2012) (both patent and non-patent prior art publications are presumed to
be enabling). To the extent that there is an inconsistency between Weitzel and
Penzel as to what is described in Weitzel, we credit Weitzel over Penzel. Penzel
(originally filed in 1993 in Germany) does not address the invention described by
Weitzel (first published in 1997). Weitzel does not indicate that the problems
described by Penzel are a concern in the environment in which Weitzel uses its compositions.
As to design choice:
Nor do we perceive a reason why one skilled in the art should not be free to select any of the protective
colloids described by Sauer for use in Sauer’s process. Cf. Sinclair & Carroll Co.,
Inc. v. Interchemical Corp., 325 U.S. at 335 (reading a list and selecting a known
compound to meet known requirements is not more ingenious than selecting the
last piece to put into the last opening in a jig-saw puzzle; it is not “invention” (i.e.,
Applicant discusses other Sauer examples in what is essentially an attempt to
limit Sauer’s teachings to its examples. The teachings of a patent are not limited to
its examples. In re Mills, 470 F.2d 649, 651 (CCPA 1972); In re Chapman, 357
F.2d 418, 424 (CCPA 1966).
As to declarations without factual support:
The Examiner declined to give controlling weight to the Declaration. The
Examiner found that much of the possible hydroxyl group/acid group reaction “is
not backed up [with] evidentiary data.” Answer, page 18. We will assume,
without deciding, that Dr. Haerzschel is an expert in the field of chemistry.
However, while opinion testimony rendered by experts is entitled to consideration,
lack of factual support for expert opinion may render the testimony of little
probative value. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir.
2004). See also Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed.
Cir. 1997) (nothing in Federal Circuit jurisprudence requires a fact finder to credit
the unsupported assertions of an expert witness). The Examiner had a sufficient
reason for declining to credit Dr. Haerzschel’s opinions to the extent they were not
supported by evidence, particularly in light of the fact that both Weitzel and Sauer
arguably contradict Dr. Haerzschel’s opinions.