Friday, February 26, 2010

Choosing among six not obvious?

In KSR v. Teleflex, one has the text:

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.

In the case In re Chapman and King, concerning antibodies, the CAFC suggests
that the difference between 6 choices and 3 choices might be significant:

The third alleged error concerns FF 3, wherein the Board stated that “[t]he
antibody can be a monovalent Fab fragment, a monovalent Fab’ fragment which
includes one or more cysteine residues in the constant region, or an F(ab’)2 antibody
fragment which has a hinge cysteine between the Fab’ fragments.” Initial Decision, slip
op. at 4 (citing Gonzalez col.11 ll.57-66; Answer 5). However, it is clear that, as the
government concedes, Gonzalez teaches six different possible antibody fragments:
F(ab), F(ab’), F(ab’)-SH, F(ab’)2, scFv, and Fv. Gonzalez, col.21 ll.33-41; Oral Arg. at
27:58-28:00 (“There are more than three [antibody fragments] disclosed [in
Gonzalez].”). FF 3 is incorrect as both parties agree that Gonzalez discloses more than
three choices for an antibody fragment.


Further, as to the third error, if the Board did not appreciate the full scope of antibody
fragments disclosed in Gonzalez, we cannot be confident about its ultimate conclusion
that the selection of one of them to form Chapman’s molecule is obvious
as it appears that there are more possibilities from which to choose.
Because we cannot say with confidence that the
Board would have reached the same conclusion in the absence of these errors, we are
persuaded they are indeed harmful. See Kotteakos v. United States, 328 U.S. 750, 765
(1946) (“[I]f one cannot say, with fair assurance, . . . that the judgment was not
substantially swayed by the error, it is impossible to conclude that substantial rights
were not affected.” This is not a situation where “an agency’s path, though convoluted,
can be discerned.” In re Huston, 308 F.3d 1267, 1281 (Fed. Cir. 2002) (quotation and
citation omitted).

In the second not harmless error, the government got the chemical connectivity disclosed in
the prior art wrong:

Chapman argues that the examiner and the Board
misinterpreted this passage and that in this embodiment, the polymer is not serving as a
link between the light and heavy chain; it is attached to either the light or the heavy
chain. The government conceded at oral argument that Chapman’s reading of this
passage is correct. See Oral Arg. at 24:40-24:47 (“[I]n Gonzalez . . . the polymer is
attached to either the light or the heavy chain; it’s not linking the light and heavy


With respect to the second error, the Board was mistaken as to whether
Gonzalez teaches the use of a polymer to link the light and heavy chains in a F(ab’)2
fragment in the cited embodiment. Therefore, Chapman’s use of a polymer to link
together two F(ab’) fragments may be less likely to be obvious.

Thus, in this case, it was undisputed that the patent office got the teaching of the
prior art wrong. The issue was whether the error was harmless. One wonders "why"
the art was misconstrued in the first place, and "why" this misunderstanding could
not have been corrected earlier in the process.

The patent applicant also tried a "teaching away" argument:

Chapman’s argument for reversal also rests on his claim that Gonzalez “teaches
away” from Chapman’s claimed invention as a matter of law. A finding that a reference
teaches away can preclude a finding that the reference renders a claim obvious. See
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir.
2009) (“An inference of nonobviousness is especially strong where the prior art's
teachings undermine the very reason being proffered as to why a person of ordinary
skill would have combined the known elements.”). Whether or not a reference teaches
away from a claimed invention is a question of fact. See In re Napier, 55 F.3d 610, 613
(Fed. Cir. 1995).

This failed.

Of an earlier anticipation rejection:

The Board reversed the examiner’s anticipation rejection over Gonzalez because
although Gonzalez suggests the antibody structure of claim 1, too much in
the way of mental gymnastics would have been necessary for persons of
ordinary skill to have ‘at once envisage[d]’ the claimed antibody structure
among the different structures described in the Gonzalez patent . . . .
[P]icking and choosing would have been necessary to have arrived at the
antibody structure of claim 1.

A genus does not necessarily anticipate a species.

*** See also

***On Chapman

The Standard of Reviewing Obviousness Determinations from the USPTO


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