Tuesday, June 11, 2013

KSR dooms appellant in Ex parte Weiner

The appellant lost in Ex parte Weiner

KSR is mentioned:

“The combination of familiar elements according to known methods
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). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.


Novak teaches that zalpha11 Ligand, now known as interleukin 21
(FF 1), “could be therapeutically used in B-cell leukemias and lymphomas”
(Novak, col. 115, ll. 31-35; FF 4; see FF 7). (...)

Applying the KSR standard of obviousness to the findings of fact, we
agree with the Examiner that the person of ordinary skill would have
reasonably combined Novak‟s B-cell lymphoma treating interleukin-21 with
other known chemotherapeutic agents for B-cell lymphoma such as Brown‟s
anti-idiotype antibodies (FF 1-10) since both Novak and Brown teach
administering chemotherapeutic agents in combination (FF 6, 8; see Ans. 5-
6). Such a combination is merely a “predictable use of prior art elements
according to their established functions.” KSR, 550 U.S. at 417.

The appellants lost on a "why not" argument:

Appellants contend that “if it was indeed obvious to combine 1L,-21
with anti-idiotype antibodies for the treatment of a B cell malignancy, why
would the „024 patent, which was initially filed 10 years after the
publication of Brown et al., fail to mention this possibility?” (App. Br. 4-5).

We are not persuaded. “The mere age of the references is not
persuasive of the unobviousness of the combination of their teachings,
absent evidence that, notwithstanding knowledge of the references, the art
tried and failed to solve the problem
.” In re Wright, 569 F.2d 1124, 1127
(CCPA 1977). Appellants have provided no evidence addressing this point.


While we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are also mindful that the Supreme Court has clearly stated that “if
a technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR, 550 U.S. at 417. In this case, we conclude
that the person of ordinary skill would have recognized that Novak‟s
teaching to treat B-cell lymphoma with IL-21 (FF 1-5) in combination
therapy with antibodies (FF 6-7) along with Brown‟s teaching to treat B-cell
lymphoma with anti-idiotype antibodies, alone or in combination (FF 8-10)
provides specific reasons to combine these two components for the treatment
of B-cell lymphoma.
Appellants contend that “surprisingly, the treatment of B cells with
IL-21 results in the production of Granzyme B, and further, that this
treatment can effect tumor cell killing” (App. Br. 5). Appellants contend
that “Inherency is a very limited doctrine almost exclusively applied to the
realm of anticipation” (id.). Appellants contend that “if it was permissible to
view the inherent outcome of any prima facie combination of references as
„spoiling‟ an unexpected result, then under no circumstance would an
unexpected result ever be sufficient” (id. at 6).

Of unexpected results:

In re Soni, 54 F.3d 746, 750
(Fed. Cir. 1995) (“It is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements…
[do] not suffice.”) Also see In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (“Attorney‟s argument in a brief cannot take the place of evidence.”).


Second, inherency may be relied upon in obviousness determinations.
See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Whether the rejection is
based on „inherency‟ under 35 U.S.C. § 102, on „prima facie obviousness'
under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the
same, and its fairness is evidenced by the PTO‟s inability to manufacture
products or to obtain and compare prior art products.”)
In Wiseman, the CCPA rejected the argument of Appellants
that a structure suggested by the prior art, and, hence,
potentially in the possession of the public, is
patentable to them because it also possesses an
Inherent, but hitherto unknown, function which they
claim to have discovered. This is not the law. A patent
on such a structure would remove from the public that
which is in the public domain by virtue of its
inclusion in, or obviousness from, the prior art.
In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979).


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