Tuesday, May 17, 2011

CAFC delivers more messages on obviousness

Because of problems at blogger/blogspot, there were no posts on May 13, 2011. In the meantime, the CAFC decided IN RE HUAI-HUNG KAO, ANAND R. BAICHWAL, TROY MCCALL, AND DAVID LEE, with the result:

Because the Board based its conclusion of obviousness
regarding the ’432 Application on factual findings lacking
in substantial evidence, this court vacates and remands.
Because the Board’s conclusions regarding the obvious-
ness of the ’859 and ’740 Applications were supported by
substantial evidence, this court affirms the Board’s deci-
sions regarding those two applications.

Of the '432 application:

On the merits, this court agrees with Endo that the
Board relied on erroneous reasoning in making the fac-
tual determinations that underlie its conclusion that
claim 1 is obvious, and that its factual findings are there-
fore unsupported by substantial evidence. However,
because the evidence of record may yet satisfy the re-
quired substantial evidence standard, the Board’s deter-
mination will be vacated and remanded.

Once the examiner estab-
lishes a prima facie case of obviousness, the burden shifts
to the applicant to rebut that case. “The prima facie case
is a procedural tool, and requires that the examiner
initially produce evidence sufficient to support a ruling of
obviousness; thereafter the burden shifts to the applicant
to come forward with evidence or argument in rebuttal.”
In re Kumar, 418 F.3d at 1366. However, once the appli-
cant has come forward with rebuttal evidence, the exam-
iner must consider the totality of the evidence to
determine whether the obviousness rejection should
stand. “When rebuttal evidence is provided, the prima
facie case dissolves, and the decision is made on the
entirety of the evidence.” Id.


The Board’s own
conjecture does not supply the requisite substantial
evidence to support the rejections, i.e., “such evidence as a
reasonable mind might accept as adequate to support a
conclusion.” Consol. Edison Co. v. Nat’l Labor Relations
Bd., 305 U.S. 197, 229 (1938). For these reasons, the
Board’s reliance on its own conjecture regarding whether
a direct substitution of oxymorphone in Formula 6 would
satisfy the claimed range of dissolution rates is improper.

KSR did come up:

The Board’s decision is vacated and remanded so that
the Board can consider whether, under the proper analy-
sis, the evidence of record is sufficient to maintain an
obviousness rejection. As the Supreme Court has ex-

When there is. . . market pressure to solve a prob-
lem and there are a finite number of identified,
predictable solutions, a person of ordinary skill in
the art has good reason to pursue the known op-
tions 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.

KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 402-403
(2007). Thus, while the Board should neither rely upon
conclusory reasoning nor its own conjecture in assessing
the weight of evidence, the Board may, or may not, still find
that the evidence supports the examiner’s rejection.

Of secondary considerations:

To start, when secondary considerations are present,
though they are not always dispositive, it is error not to
consider them. See Stratoflex v. Aeroquip Corp., 713 F.2d
1530, 1538 (Fed. Cir. 1983) (“[E]vidence rising out of the
so-called ‘secondary considerations’ must always when
present be considered en route to a determination of
obviousness.”); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1372 (Fed. Cir. 2007) (“Although secondary considerations
must be taken into account, they do not necessarily con-
trol the obviousness conclusion.”).


Evidence of secondary considerations must be rea-
sonably commensurate with the scope of the claims. See
n re Tiffin, 448 F.2d 791, 792 (CCPA 1971); In re Hiniker,
150 F.3d 1362, 1369 (Fed. Cir. 1998). This does not mean
that an applicant is required to test every embodiment
within the scope of his or her claims. If an applicant
demonstrates that an embodiment has an unexpected
result and provides an adequate basis to support the
conclusion that other embodiments falling within the
claim will behave in the same manner, this will generally
establish that the evidence is commensurate with scope of
the claims. See In re Greenfield, 571 F.2d 1185, 1189
(CCPA 1978) (concluding that evidence of secondary
considerations was not commensurate with the scope of
the claims where that evidence related to a single com-
pound and there was no adequate basis to conclude that
other compounds included within the scope of the claims
would exhibit the same behavior); In re Cescon, 474 F.2d
1331, 1334 (CCPA 1973) (concluding that, although not
every compound within the scope of the claims was tested,
the evidence of secondary considerations was sufficient
where evidence showed a correlation and there was no
factual basis to expect the compounds to behave differ-
ently in different environments).


But there is a more fundamental requirement that
must be met before secondary considerations can carry
the day. “For objective evidence of secondary considera-
tions to be accorded substantial weight, its proponent
must establish a nexus between the evidence and the
merits of the claimed invention.” Wyers v. Master Lock
Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (quotation
omitted). Where the offered secondary consideration
actually results from something other than what is both
claimed and novel in the claim, there is no nexus to the
merits of the claimed invention. Tokai Corp. v. Easton
Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If
commercial success is due to an element in the prior art,
no nexus exists.”);

[From post "blogspot": Posts for May 12, 2011 are missing. Difficulty posting on May 13, 2011.]


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