The test for obviousness is controlled by what a person of ordinary skill in the art would have done based on the teachings of the references
| May 25, 2018
In re: Daryl David Coutts
April 6, 2018
Before Dyk, Wallach and Chen. Opinion per curiam.
Summary
The inventor Daryl David Coutts has a patent application 11/836,293 rejected by the Examiner and the Board (Patent Trail and Appeal Board) under 35 U.S.C. § 103 for obviousness as being unpatentable over the combination of three prior arts (Cheung, Awada, and Kang). The Board stated that the patent application would have been obvious to a person of ordinary skill in the art by combining these prior arts.
However Mr. Coutts argued that the patent application is not obvious over the prior arts because, for a particular claim limitation/feature, the inventors of Cheung knew of this particular claim feature but did not claim it in their patent application and therefore the combination of Cheung and the claim feature could not have been obvious. The Court of Appeals of Federal Circuit (the “Court”) affirmed the decision of the Board and also affirmed that the test of obviousness is controlled by what a person of ordinary skill in the art would have done based on the teaching of the references and not what the inventors of the prior art would have done. In other words, what the prior art inventors would have done is not relevant for the obviousness test.
What do dioxaborinanes and benzoxaboroles have in common? They both exhibit activity against fungi, and so Anacor failed before the Federal Circuit, which could not have been fun-guys…
| May 17, 2018
Anacor Pharmaceuticals Inc. v. Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the U.S. PTO; case number 17-1947
May 14, 2018
Before Reyna, Bryson and Stoll. Opinion by Bryson.
要旨:
本件は、米国特許庁審判部の無効審決に対する控訴事件であり、争点は自明性に関するものである。具体的には、既存の組成物を利用した新しい治療法の特許に関する。CAFCは以下のような判断を示した。まず、似たような組成物同士が一定の特性を共通に備えている場合、他の関連する特性においても共通していると推定するのが合理的である。また、組成物同士の構造上の類似性は、組合せの動機づけや「当該組合せの成功に対する合理的な期待」を評価する上で重要な要素である。類似の構造を備える組成物同士が類似の特性を持つこと、また、構造の類似性が特性の類似性を示唆することは、長年の実務慣行である。一方、化学の分野では予測できない結果も起こり得るので、構造の類似性が常に特性の類似性につながるとは限らない。したがって、自明性の判断は、しばしば、構造上の類似性と機能的な類似性との間に強い関連性があることが証拠によって証明されたか否かに依存する。本件では、Austin引例とBrehove引例とに開示された組成部には限られた構造上の類似性しかなかったのであるが、構造および機能の類似性に鑑みれば、無効という判断を支持する十分な証拠があると判断された。(中村剛)
Summary:
This is an appeal from a decision of the Patent Trial and Appeal Board in an inter partes review proceeding. The Board held all claims of U.S. Patent No. 7,582,621 (‘621 patent) owned by Anacor pharmaceuticals Inc., (Anacor) to be unpatentable for obviousness. The patent is directed to the use of 1,3- dihydro-5-fluoro-1-hydroxy-2,1-benzoxaborole is also known as tavaborole. When applied topically, tavaborole can penetrate the nail plate and treat an underlying fungal infection. Anacor appealed only one of the rejected claims.
Newly Adopted Claim Construction Overcomes Anticipation & Obviousness Rejections
| May 2, 2018
Wonderland NurseryGoods Co., Ltd. v. Baby Trend, Inc., Denny Tsai, Betty Tsai
April 19, 2018
Before Moore, Prost & Newman. Opinion by Moore.
Summary:
The CAFC reversed the Board’s findings of anticipation and obviousness due to an erroneous claim construction. The newly adopted claim construction by the CAFC is consistent with the specification and prosecution history. Further, the CAFC held that the references of record did not anticipate nor render obvious the claims in light of the newly adopted claim construction.
要旨:
米国連邦巡回控訴裁判所(cafc)は、米国特許庁審判部のクレーム解釈が誤りであることを認め、誤ったクレーム解釈に基づく新規性ならびに自明性の判断を覆した。cafcが示したクレーム解釈は、当該米国特許の明細書ならびにプロセキューションヒストリに鑑みたものである。再発行特許(リイシュー)の手続き内で行なわれた補正が、権利範囲を拡張するためのものであったのか、あるいは、引例を回避するためのものであったのかが争点となった。
Details:
U.S. Reissued Patent43,919 (hereinafter ‘919) is directed towards “an easy to assemble baby crib in which a fabric member is positioned on a bed frame structure.” Id. at 2. The terms at issue are “a fabric member” and “an enclosure member”.
In two inter partes review (IPR) proceedings, the Board determined that “a fabric member” means “one or more pieces of fabric” and “an enclosure member” means “one or more members.” Id. at 2. In light of this construction, the Board held that the claims of the ‘919 Patent were anticipated U.S. Patent No. 6,004,182 (“Pasin”) and Australian Patent No. 715,883 (“Bidwell”) and would have been rendered obvious by Pasin in view of U.S. Patent No. 7,063,096 (“Stoeckler”), Bidwell in view of Stoeckler; U.S. Patent No. 3,924,280 (“Vaiano”) in view of Pasin and the combination of Vaiano, Pasin and Stoeckler. It is noted that the Board “stated that Vaiano taught ‘a single, continuous member’.” Id. at 3. Wonderland appealed.
“In IPR proceedings, the Board gives claims their broadest reasonable interpretation consistent with the specification. PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 751 (Fed. Cir. 2016).” Id. at 3. The CAFC reversed the Board and held that the Board erred in its constructions of the terms “a fabric member” and “an enclosure member.”
Although the use of the singular articles “a” and “an” often means “one or more” when the transitional phrase “comprising” is used, Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016), in this instance, the Board’s construction is inconsistent with the use of the terms in the claims.
The ordinary language of the claims indicates that a single fabric or enclosure member is capable of separating the interior of the claimed crib from the exterior.
Id. at 3. The CAFC held that “a fabric member” and “an enclosure member” “must be unitary structures able to ‘delineate’ or ‘surround []’ an ‘enclosed space’.” Id. at 4. The CAFC held that their claim construction is consistent with the specification, including preferred embodiments, examples and the drawings. “Although we must be careful not to read limitations from the specification into the claims, the specification’s use of the claim terms in a manner consistent with their use in the claims further supports our conclusion.” (emphasis added) Id. at 4. The CAFC dismissed the Board and Baby Trend’s reliance upon prosecution history to support the original claim construction by noting that claim amendments by Wonderland “were part of a series of changes emphasizing that the ‘fabric/enclosure member surrounds an enclosed space adapted for receiving a baby therein’ J.A. 1853, made in response to the examiner’s citation to a prior art reference directed to chairs.” Id. at 4-5. The CAFC held that the proper construction of “a fabric member’ and ‘an enclosure member’ refer to unitary elements that separate the interior of the claimed crib from the exterior.” Id. at 5.
In light of the newly adopted claim construction, the CAFC held that the “Board’s alternative finding that the claims are unpatentable under the construction we now adopt is not supported by substantial evidence.” Id. at 5. Baby Trend, relying upon the Board’s finding that Vaiano taught a single, continuous member, argued that Vaiano disclosed the claimed features under the newly adopted claim construction. The CAFC disagreed, noting that the citation of Vaiano cited by the Board did not support their position, and that Vaiano merely discloses a netting feature. The CAFC concluded that the disclosure of Vaiano “does not indicate that the netting is a single, continuous member.” Id. at 5. Further, the CAFC dismissed Baby Trend’s argument that Vaiano depicts a continuous, single member because the lines of netting are aligned in one corner, as illustrated in Figure 1, by noting that the lines in the other corners were not aligned. “While it is possible that a single, continuous piece could be used in Vaiano, that is not the question before us. Instead, we ask whether Vaiano discloses a single, continuous piece. Substantial evidence does not support the Board’s finding that it does.” Id. at 6.
Id. at 5. Lastly, the CAFC dismissed Baby Trend’s argument that the Board inherently relied upon their expert testimony regarding the disclosure of Vaiano by noting that merely finding an argument persuasive does not deem said evidence adopted. “When the Board intends to rely on extrinsic evidence, it does so expressly. A single citation to 10 pages in a petition does not incorporate by reference every piece of evidence referenced therein. Similarly, Baby Trend may not rely on statements made by Administrative Patent Judges at the oral hearing that were not included in the Board’s written decisions.” Id. at 6.
Takeaway:
Review claim construction to ensure it is consistent with the specification. The disclosed use of a claim term can affect claim construction.
Carefully review each reference to determine if the Examiner’s understanding is accurate.
