Wednesday, November 07, 2012

Atlas and Best cited in Ex parte PETEREIT

The Board in Ex parte PETEREIT cited significant case law.

The Examiner concludes it would have been obvious to use the outer coating of Beckert in the dosage form described in Ulmius (id. at 6). The Examiner also notes that the ―discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer‖ (Ans. 9-10 (quoting Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999), and citing In re Best, 562 F.2d 1252, 1254 (CCPA 1977)). (...)

We disagree with Appellants that Beckert (or any other cited reference) teaches away from the claimed dosage form (App. Br. 12) simply because the reference(s) describes different dosages forms. As correctly noted by the Examiner, a ―prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed ....‖ (Ans. 12 (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). (...)

Case law indicates that recognition of latent properties ―does not render nonobvious an otherwise known invention.‖ In re Baxter Travenol Labs, 952 F.2d 388, 392 (Fed. Cir. 1991); In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969) (stating that a ―mere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable‖); see also Ans. 9-10).
Moreover, In re Kubin addresses the question of whether inherency may be used in an obviousness analysis. Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1369 (Fed. Cir. 2012) (quoting In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009). Specifically, Kubin states that inherency applies if the ―application itself instructs that [the wherein element] is not an additional requirement imposed by the claims [on the recited composition]..., but rather a property necessarily present in the [recited composition].‖ (Id. (quoting Kubin, 561 F.3d at 1357); see also In re Huai- Hung Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (similarly quoting Kubin).) (...)

Because the Examiner presents a prima facie case of obviousness, we consider whether Appellants submits sufficient evidence or argument in rebuttal. In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). Evidence rebutting a prima face case of obviousness may include ―[e]vidence of unexpected results.‖ Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1369 (Fed. Cir. 2007). (...)

After an Appellant provides argument or evidence in response to an Examiner’s prima facie case, we determine patentability ―on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument‖ submitted by Appellant. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Here, Appellants’ arguments and evidence relating to unexpected results do not persuade us that the Examiner fails to establish that claim 1 would have been obvious by a preponderance of the evidence.


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