Thursday, October 31, 2013

Board affirmed by CAFC in Haase

From In re Haase

The ’849 application had an extensive prosecution history.
Before the application wound its way up to the
Board, it spent nearly six years in front of the Examiner.
During that time, in response to the Examiner’s rejections,
Mr. Haase filed numerous affidavits and declarations
from himself, experts, and people who work in the
industry. Collectively, the submissions purported to show
that Mr. Haase’s use of particular molecular-weight
ranges obtained unexpected results, that the prior art
taught away from his claims, or that his invention was
copied and met a long-felt need in the industry. Considering
this evidence, the Examiner nevertheless concluded
that the claims were unpatentable over prior art.

As to anticipation

All that is required to meet
claims 1, 2, 56, and 75 is one individual ammonium
polymer compound within the claimed range, no matter
what else is in the composition or how much of the molecular-
weight distribution disclosed in Hassick overlaps
with the claimed ranges. Because Mr. Haase’s claims 1,
2, 56, and 75 undoubtedly “cover[] several compositions,”
and because at least one such composition was disclosed
in Hassick for each of those claims, Hassick anticipates.
Titanium Metals, 778 F.2d at 782.


evidence supports the Board’s finding that Hassick
discloses polymers that come within the claim
limitations, and the only “result” required by Mr. Haase’s
claims is a reduction in turbidity—regardless of how large
that reduction is or how well it compares to other results
in Hassick. See Bristol-Myers Squibb Co. v. Ben Venue
Labs., Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001). The
anticipatory disclosure in Hassick shows a reduction in
turbidity. Nothing more is needed.

As to obviousness

The Board rejected the remaining claims at issue—
independent claims 3, 4, 22, and 76—on the ground of
obviousness. The PTO bears the initial burden of showing
a prima facie case of obviousness. E.g., In re Sullivan,
498 F.3d 1345, 1351 (Fed. Cir. 2007). If the relevant
comparison between disputed claim limitations and the
prior art pertains to a range of overlapping values, “we
and our predecessor court have consistently held that
even a slight overlap in range establishes a prima facie
case of obviousness.” In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003); see In re Geisler, 116 F.3d 1465, 1469
(Fed. Cir. 1997) (overlap only at the end points). Where a
variable is known to affect a particular desirable result,
i.e., is what has been called a “result-effective” variable,
the “overlap itself provides sufficient motivation to optimize
the ranges,” and “‘it is not inventive to discover the
optimum or workable ranges by routine experimentation,’”
because the desire to improve results would motivate
skilled artisans to experiment with, and improve
upon, known conditions in the prior art. In re Applied
Materials, Inc., 692 F.3d 1289, 1295-96 (Fed. Cir. 2012).

After a prima facie case of obviousness is established,
an applicant may present evidence to rebut it. Sullivan,
498 F.3d at 1351. Such rebuttal evidence comes in many
forms, but common-sense principles guide its persuasiveness.
For example, an applicant claiming a particular
range for a result-influencing variable may offer proof
that the claimed range leads to unexpected results, but
that evidence “must be commensurate in scope with the
claimed range.” Peterson, 315 F.3d at 1330; Geisler, 116
F.3d at 1469-70. The applicant may also try to show that
the prior art teaches away from the claimed invention.

But a prior-art reference that discloses alternatives does
not, simply by preferring some alternatives, “teach away”
from the non-preferred alternatives, In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004), and a particular reference’s
mere silence about a particular feature does not
tend to teach away from it, especially if it is disclosed
elsewhere in the prior art, Syntex (U.S.A.) LLC v. Apotex,
Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). In addition, an
applicant may try to show non-obviousness based on
evidence beyond a comparison of claims with prior art,
i.e., through objective indicia (secondary considerations),
but any such evidence must, at a minimum, be tied to the
particular claims so as to be a sound indicator that skilled
artisans would not have found obvious what is actually
claimed. E.g., Wyers v. Master Lock Co., 616 F.3d 1231,
1246 (Fed. Cir. 2010). The Board’s factual findings on
these issues are reviewed for substantial evidence. See,
e.g., Teva Pharms. USA, Inc. v. Sandoz, Inc., 723 F.3d
1363, 1372 (Fed. Cir. 2013); Geisler, 116 F.3d at 1469.

As to weak argumentation

Here, too, rather than systematically pointing out
where to find the information that the Board said was
missing, Mr. Haase just states that the data exist and
directs us back to the expert reports. We see no basis, in
such loose assertions or otherwise, for overturning the
Board’s detailed findings as unsupported by substantial


We discern no
error in the Board’s treatment of Mr. Haase’s evidence;
indeed, if Mr. Haase is right that Kigel’s turbidity results
were poor, that is all the more reason to think that a
skilled artisan would have tried to improve on those
using Simmsgeiger’s teachings about higher
molecular weights and polyacrylamides. See Haase, at
*31. Mr. Haase has not established that the Board’s
unexpected-results findings lacked sufficient evidentiary


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