anticipation : CAFC Alert


| November 8, 2021

In Re: Surgisil, L.L.P., Peter Raphael, Scott Harris

Decided on October 4, 2021

Moore (author), Newman, and O’Malley


The Federal Circuit reversed the PTAB’s anticipation decision on a claim of SurgiSil’s ’550 application because a design claim should be limited to an article of manufacture identified in the claim.  The Federal Circuit held that since the claim in the ’550 application identified a lip implant, the claim is limited to lip implants and does not cover other article of manufacture.  The CAFC held that since the Blick reference discloses an art tool rather than a lip implant, the PTAB’s anticipation finding is not correct.


The ’550 application

            SurgiSil’s ’550 application claims an ornamental design for a lip implant[1] as shown below:

            The examiner rejected a claim of the ’550 application as being anticipated by Blick, which discloses an art tool called stump as shown below:


            The PTAB affirmed the examiner’s decision and found that the differences between the claimed design in the ’550 application and Blick are minor. 

            The PTAB rejected SurgiSil’s argument that Blick discloses a “very different” article of manufacture than a lip implant reasoning that “it is appropriate to ignore the identification of manufacture in the claim language” and “whether a reference is analogous art is irrelevant to whether that reference anticipates.”

The Federal Circuit

            The CAFC reviewed the PTAB’s legal conclusion that the article of manufacture identified in the claims is not limiting de novo.  The CAFC ultimately held that the PTAB erred as a matter of law.

            By citing 35 U.S.C. §171(a) (“Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.”), the CAFC held that a design claim is limited to the article of manufacture identified in the claim.

            The CAFC also cited a case called Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334, 1336 (Fed. Cir. 2019)[2] and the MPEP to hold that the claim at issue should be limited to the particular article of manufacture identified in the claim.

            The CAFC held that since the claim identified a lip implant, the claim is limited to lip implants and does not cover other article of manufacture. 

            The CAFC held that since Blick discloses an art tool rather than a lip implant, the PTAB’s anticipation finding is not correct.

            Therefore, the CAFC reversed the PTAB’s decision.


  • It would certainly be easier to obtain design patents going forward.  Can Applicant obtain design patents by using a known design in the art and applying to a new article of manufacture?
  • It would be difficult to invalidate design patents because prior arts from a different article of manufacture could not be used to invalidate them.
  • Applicant should be careful to amend a title/claim and provide any description on title/terms in the claim in a design application because they could be used to construe an article of manufacture and to clarify the scope of a design patent claim.
  • It may be difficult to enforce the design patent for a certain article of manufacture (i.e., “lip implant”) against a different article of manufacture (“art stump”).

[1] Website for SurgiSil: SurgiSil’s silicone lip implants are an alternative to “repetitive, costly, and painful filler injections,” but that they can be removed at any time.

[2] In this case, the CAFC held that a particular claim was limited to a wicker pattern applied to an article of manufacture recited in the claim (chair) and did not cover the use of the same pattern on another non-claimed article (i.e., basket).


| February 5, 2020

Koninklijke Philips N.V. v. Google LLC, Microsoft Corporation, Microsoft Mobile Inc.

January 30, 2020


The Federal Circuit affirmed the PTAB’s final decision that claims of Philips’ ‘806 patent are unpatentable as obvious.  The Federal Circuit held that the PTAB did not err in relying on general knowledge to supply a missing claim limitation in the IPR if the PTAB relied on expert evidence corroborated by a cited reference.  The Federal Circuit also held that the PTAB did not have discretion to institute the IPR on the grounds not advanced in the petition.


The ‘806 Patent

            Philips’ ‘806 patent is directed to solving a conventional problem where the user cannot play back the digital content until after the entire file has finished downloading.  Also, the ‘806 patent states that streaming requires “two-way intelligence” and “a high level of integration between client and server software,” thereby excluding third parties from developing software and applications.

            The ‘806 patent offers a solution that reduces delay by allowing the media player download the next portion of a media presentation concurrently with playback of the previous portion.

            Representative claim 1 of the ‘806 patent:

1.  A method of, at a client device, forming a media presentation from multiple related files, including a control information file, stored on one or more server computers within a computer network, the method comprising acts of:

downloading the control information file to the client device;

the client device parsing the control information file; and based on parsing of the control information file, the client device:

identifying multiple alternative flies corresponding to a given segment of the media presentation,

determining which files of the multiple alternative files to retrieve based on system restraints;

retrieving the determined file of the multiple alternative files to begin a media presentation,

wherein if the determined file is one of a plurality of files required for the media presentation, the method further comprises acts of:

concurrent with the media presentation, retrieving a next file; and

using content of the next file to continue the media presentation.


            Google filed a petition for IPR with two grounds of unpatentability.  First, claims of the ‘806 patent are anticipated by SMIL 1.0 (Synchronized Multimedia Integration Language Specification 1.0).  Second, claims of the ‘806 patent would have been obvious in view of SMIL 1.0 in view of the general knowledge of the skilled artisan regarding distributed multimedia presentation systems as of the priority date.  Google cited Hua (2PSM: An Efficient Framework for Searching Video Information in a Limited-Bandwidth Environment, 7 Multimedia Systems 396 (1999)) and an expert declaration to argue that pipelining was a well-known design technique, and that a skilled artisan would have been motivated to use pipelining with SMIL.

            The PTAB instituted review on three grounds (including two grounds raised by Google and additional ground).  In other words, the PTAB exercised its discretion and instituted an IPR on the additional ground that claims would have been obvious over SMIL 1.0 and Hua based on the arguments and evidence presented in the petition.

            In the final decision, the PTAB concluded that while Google had not demonstrated that claims were anticipated, Google had demonstrated that claims would have been obvious in view of SMIL 1.0 and that they would have been obvious in view of SMIL 1.0 in view of Hua as well.


            First, the CAFC held that the PTAB erred by instituting IPR reviews based on a combination of prior art references not presented in Google’s petition.  Citing 35 U.S.C. § 314(b) (“[t]he Director shall determine whether to institute an inter partes review . . . pursuant to a petition”), the CAFC held that it is the petition, not the Board’s discretion, that defines the metes and bounds of an IPR. 

            Second, the CAFC held that while the prior references that can be considered in IPR are limited patents and printed publications only, it does not mean that the skilled artisan’s knowledge should be ignored in the obviousness inquiry.  Distinguishing this case from Arendi (where the CAFC held that the PTAB erred in relying on common sense because such reliance was based merely upon conclusory statements and unspecific expert testimony), the CAFC held that the PTAB correctly relied on expert evidence corroborated by Hua in concluding that pipelining is within the general knowledge of a skilled artisan.

            Third, with regard to Philips’ arguments that the PTAB’s combination fails because the basis for the combination rests on the patentee’s own disclosure, the CAFC held that the PTAB’s reliance on the specification was proper and that it is appropriate to rely on admissions in the specification for the obviousness inquiry.  The CAFC held that the PTAB supported its findings with citations to an expert declaration and the Hua reference.  Therefore, the CAFC found that the PTAB’s factual findings underlying its obviousness determination are supported by substantial evidence.

            Accordingly, the CAFC affirmed the PTAB’s final decision that claims of the ‘806 patent are unpatentable as obvious.        


  • In the obviousness analysis, the general knowledge of a skilled artisan could be used to supply a missing claim limitation from the prior art with expert evidence.
  • Patentee’s own disclosure and admission in the specification could be used in the obviousness inquiry.  Patent drafters should be careful about what to write in the specification including background session.
  • Patent owners should check whether the PTAB instituted IPR on the grounds not advanced in the IPR petition because the PTAB does not discretion to institute IPR based on grounds not advanced in the petition.

A Claimed Range May be Anticipated and/or Obviousness When the Lower Limit of the Range of the Reference Abuts the Upper limit of the Disputed Claim Range

| January 31, 2020

Genentech, Inc., v. Hospira, Inc.

Prost, Newman and Chen.  Opinion by Chen; Dissenting opinion by Newman.


At an inter partes review (IPR) proceeding, the Board held that a reference that discloses a range where the lower limit of said range abuts the upper limit of the disputed claim range was sufficient to render the disputed patent invalid for anticipation and obviousness. The Majority Opinion of the CAFC affirmed the holding of anticipation and obviousness. The Dissenting Opinion held that there was insufficient evidence to establish anticipation, the wrong reasoning was used to establish obviousness and the findings of Board and the Majority Opinion were based on hindsight.



Protein A affinity chromatography is a purification method, wherein “a composition comprising a mixture of the target antibody and undesired impurities often present in harvested cell culture fluid (HCCF) is placed into the chromatography column….  The target antibody binds to protein A, which is covalently bound to the chromatography column resin, while the impurities and rest of the composition pass through the column…. Next, the antibody of interest is removed from the chromatography column….”  Id. at 3.  A known problem of protein A affinity chromatography is leaching, wherein protein A detaches from the column and contaminates the purified antibody solution.  Thus, further purification steps of the antibody solution retrieved from the column are necessary.  Patent 7,807,799 (hereinafter “‘799”), owned by Genentech, addresses the known problem of protein A leaching, with regards to antibodies and other proteins that comprises a CH2/CH3 region.  By reducing the temperature of the composition that is subjected to chromatography, leaching can be prevented and/or minimized to an acceptable level of impurity for commercial purposes.  Claim 1, herein presented below, is the representative claim. 

A method of purifying a protein which comprises CH2/CH3 region, comprising subjecting a composition comprising said protein to protein A affinity chromatography at a temperature in the range from about 10°C to about 18°C.

See Patent ‘799, Col. 35, Lines 44-47.  


Hospira sought an inter partes review (IPR) of claims 1-3 and 5-11 of Patent ‘799.  The Board instituted a trial of unpatentability and held that WO95/22389 (hereinafter “WO ‘389) anticipated and WO ‘389, both solely and in combination with secondary references, rendered obvious all of the challenged claims. 

WO ‘389 discloses a method for purifying similar antibodies by a protein A affinity chromatography step and then a washing step, comprising washing with at least three column volumes of buffer.  WO ‘389 discloses that “[a]ll steps are carried out at room temperature (18-25oC).”  Id. at 6.

The Board held that WO ‘389 overlaps the claimed range of “about 10oC to about 18oC”, regardless of the claim construction of “about 18oC”.  Further, the Board held that Genentech failed to establish the criticality of the claimed range to the operability of the claimed invention and thus did not overcome the prima facie case of anticipation.  Also, the Board held that the claimed temperature range was in reference to the temperature of the composition both prior to and/or during chromatography.  The Board held that the disclosed temperature range (18-25oC) of WO ‘389 applied to all components of the purification process and that the temperature of the HCCF composition both prior to and during chromatography were within said range. 

Genentech appealed the Board’s holding of unpatentable due to anticipation and obviousness over WO ‘389.  Of note, in the Appeal, Genentech did not challenge the Board’s holding that criticality of the claimed temperature range was not established. 



Genentech argued that the meaning of “all steps are carried out at room temperature (18-25oC)” is applicable only to the temperature of the laboratory and is not applicable to the temperature of the HCCF composition.  Genentech asserted that 1) WO ‘389 discloses “steps” where the HCCF composition was cold or frozen, 2) Genentech’s expert and Hospira’s expert testified that typically HCCF coming from a bioreactor, are at a temperature of 37oC, 3) both experts testified WO ‘389 is silent regarding how long HCCF was held prior to chromatography and 4) Genentech’s expert testified that a skilled artisan in industrial processing would perform chromatography of the HCCF as soon as possible, i.e. without waiting for the HCCF to cool to room temperature, unless there were explicit instructions to do so.  Id. at 8.  Hospira argued that the explicit disclosure of “room temperature (18-25oC)” is with regards to the temperature of performing chromatography and all the components of said purification process, including the HCCF composition.  Hospira noted that WO ‘389 disclosed specific temperatures for when the composition was not at room temperature.  Further, Hospira’s expert testified that a skilled artisan would perform experiments at “ambient temperature with all materials equilibrated in order to obtain robust scientific data.”  Id. at 9.  The CAFC affirmed the Board and held that there was substantial evidence that the HCCF composition was within the claimed temperature of “about 10oC to about 18oC.” The CAFC agreed with the Board’s findings that 1) the statement “[a]ll steps are carried out at room temperature (18-25oC)” was a blanket statement and thus, specifying the temperature of HCCF during chromatography is redundant, 2) it disagreed with Genentech’s expert because said opinion was based upon large-scale industrially standards, and 3) it agreed with Hospira’s expert that a skilled artisan would not use HCCF at 37oC in a chromatography column and then report that all steps were performed at room temperature because the warm HCCF would raise the temperature of the entire system.  Id. at 10. Lastly, the CAFC disagreed with Genentech’s argument that there was no anticipation because there was a missing limitation in WO ‘389 and agreed with the Board’s finding that WO ‘389 discloses a composition that is at the claimed temperature of “about 10oC to about 18oC” either prior to or during chromatography. (Nidec Motor Corp. v. Zhongshan Board Ocean Motor Co., cited by Genentech, holds that a reference missing a limitation cannot anticipate even if a skilled artisan would ‘at once envisage’ the missing limitation. 851 F.3d 1270, 1274–75 (Fed. Cir. 2017).” Id. at 10.)  


The Board, citing the secondary references, determined that the temperature at which chromatography is performed is a result-effective variable and that when temperature is lowered, leaching is reduced. Thus, a skilled artisan would have been motivated to optimize temperature.  Genentech argued that there was no reason or motivation to optimize the temperature because “the desire to reduce protein A leaching applies only to the large-scale, industrial purification of therapeutic antibodies for clinical applications…[and] that chilling HCCF for largescale, industrial processes would have been inconvenient, costly, and impractical.” Id. at 13.  Hospira argued that a skilled artisan in non‑clinical applications would have been motivated to reduce leaching because leaching damages chromatography columns.  The CAFC held that the Board was correct in holding that neither the ‘799 patent nor WO ‘389 are limited to large-scale industrial applications.  The CAFC affirmed the Boards’ finding that temperature is a “result-effective variable” and that it would have been routine experimentation for a skilled artisan to optimize the temperature to reduce protein A leaching. 


Newman dissented and asserted that affirming the holding of invalidity for anticipation and obviousness was an error because none of the prior art shows or suggest the claimed method.  Id. at 9.  According to Newman, the determination by the Board and the CAFC is based on hindsight.  Newman noted that the “retrospective simplicity of the solution apparently led the Board to find it obvious to them, despite the undisputed testimony that no reference suggests this solution to the contamination problem here encountered, as the experts for both sides acknowledged.”  Id. at 3.  Newman noted that the ‘799 patent disclosed in detail the complexities with regards to obtaining and purifying antibodies, the many factors to consider when performing chromatography, the problems associated with the leaching of protein A, and explained their discovery of the cause of said leaching and their solution to said problem.  At the Board, Genentech argued the advantages of their claimed method, i.e. prevent leaching of protein A in protein A affinity chromatography, in contrast to the need to perform additional purification chromatography to remove protein A, as in WO ‘389.  Both experts agreed that the reference to room temperature (18-25oC) was in reference to the ambient temperature and was not in reference to the chilled material in the column.  “Nonetheless, the PTAB and now my colleagues hold that this ‘room temperature’ range anticipates the ‘799 patent’s chilled range of 10oC-18oC, ignoring the significantly different results in the recited ranges.” Id. at 6. 

According to Newman, mere abutment of the 18oC is not anticipation. “Anticipation requires that the same invention, including all claim limitations, was previously described. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1274– 75 (Fed. Cir. 2017). The “anticipating reference must describe the entirety of the claimed subject matter.”  Id. at 7. Newman holds that the affirmation of anticipation fails to consider the “absence of identify of these ranges” (18-25oC vs. about 10oC-about 18oC), fails to consider “the different results at the lower range” and fails to consider “the significance of the purity of the eluted antibody.”  Id. at 8 Regarding obviousness, Newman holds that there is no evidence that it was known or suggested that cooling the HCCF composition either prior to or during chromatography would minimize or prevent leaching of the protein A in the purified antibody solution.  According to Newman, “the question is not whether it would have been easy to cool the material to the 10ºC–18ºC range; the question is whether it would have been obvious to do so. Contrary to the Board’s and the court’s view, this is not a matter of optimizing a known procedure to obtain a known result; for it was not known that cooling the material for chromatography would avoid contamination of the purified antibody with leached protein A.” Id. at 9.  That is, even if it is possible to modify the temperature, Newman asserts that there is no reason or motivation to optimize the temperature to prevent leaching of protein A.


  • If possible, establish the criticality of a claimed range.  One is encouraged to rebut a prima facie case of anticipation or obviousness by establishing that the claimed range is critical to the operability of the claimed invention.
  • If there is an overlap of a disputed claim range and the range disclosed in the prior art, but the results are different, this may be evidence of the criticality of the range.

Examples and procedures in the specification may provide necessary objective boundaries for a term of degree in the claims

| September 18, 2019

Guangdong Alison Hi-Tech Co., v. ITC, Aspen Aerogels, Inc. (intervenor)

August 27, 2019

Wallach, Hughes, and Stoll (Opinion author).


The ALJ at ITC held, later affirmed by the Commission, that the claims of U.S. Patent No. 7,078,359 were not invalid due to indefinites and anticipation and were infringed by Alison’s importation of the accused products. The Federal Circuit affirmed the validity determination.


The ‘359 patent, titled “Aerogel Composite with Fibrous Batting,” is directed to an improvement in aerogel composite products. Specifically, the ‘359 patent specifically discloses an aerogel composite that uses a lofty batting to reinforce the aerogel in a way that maintains or improves the thermal properties of the aerogel while providing a highly flexible, drapeable form. The ‘359 patent is an improvement over prior aerogel composites, which suffer from low flexibility, low durability, and degraded thermal performance. Independent claim 1 of the ‘359 patent is:

1. A composite article to serve as a flexible, durable, light-weight insulation product, said article comprising a lofty fibrous batting sheet and a continuous aerogel through said batting.

Regarding the indefinites, the ALJ and the Commission rejected the Alison’ indefinite argument arguing that the phrase “lofty fibrous batting” in claim 1 is indefinite. The Federal circuit affirmed based on the “reasonable certainty” indefiniteness standard. Specifically, as set forth in Nautilus, Inc. v. Biosig Instruments, Inc., a patent’s claims are definite if the claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. A patentee need not define his invention with mathematical precision in order to comply with the definiteness requirement. Patents with claims involving terms of degree must provide objective boundaries for those of skill in the art in the context of the invention. Intrinsic evidence such as the claims, figures, written description, or prosecution history of a patent can provide the necessary objective boundaries. In this case, the Federal Circuit acknowledges that the phrase “lofty … batting” is a term of degree. However, the Federal Circuit held that the written description of the ‘359 patent provides objective boundaries for the term. The ‘359 patent specification first expressly defines “lofty … batting” as “a fibrous material that shows the properties of bulk and some resilience (with or without full bulk recovery).” The specification explains that “bulk” refers to the air or openness created by the web of fibers in a lofty batting. It further explains that a batting is “sufficiently resilient” if it “can be compressed to remove the air (bulk) yet spring back to substantially its original size and shape.” Furthermore, the specification details functional characteristics of a “lofty … batting.” Furthermore, the specification provides specific examples of commercial products that can qualify as a lofty batting, and a detailed discussion of seven examples of aerogel composites manufactured in accordance with the claimed invention, along with corresponding test results. Furthermore, during the prosecution, in the Statement of Reasons for allowance, the examiner distinguished the prior art based on the phrase “lofty fibrous batting.” Thus, the Federal Circuit categorize this case in the same class as previous cases like Sonix and Enzo, where examples and procedures in the written description provided sufficient guidance and points of comparison to render claim terms not indefinite.

The Federal Circuit also specifically rejected several Alison’ arguments in support of its indefiniteness challenge. First, Alison argued that the ‘359 patent provides no objective boundary between “some resilience,” which would infringe, and “little to no resilience,” which would not. In other words, in Alison’ view, the ‘359 patent fails to disclose precisely how much resilience is enough to satisfy the claim. The Federal Circuit dismissed this argument by holding that Alison was seeking a level of numerical precision beyond that required when using a term of degree. Next, Alison argued that the  ‘359 patent offers two independent approaches, a thermal properties’ approach and a compressibility and resilience approach, to assess loftiness, without indicating which approach to use. The Federal Circuit dismissed this argument by holding that Alison has not provided any evidence that the different methods of measurement described in the ‘359 patent lead to different results. Lastly, Alison argued that the Commission’s indefiniteness analysis is irreconcilable contradiction with its claim construction. The ALJ provided a single reason for holding the claim term not indefinite because the specification states that “a lofty batting is sufficiently resilient if after compression for a few seconds it will return to at least 70% of its original thickness.” Yet, in construing the term, the ALJ declined to limit “lofty … batting” to this specific example of “resilience” in the specification, namely, “it will return to at least 70% of its original thickness.” The Federal Circuit dismissed this argument by holding that examples in the specification may be used to inform those skilled in the art of the scope of the invention with reasonable certainty, thus demonstrating that the term is not indefinite, without being directly construed into the claim.

Regarding the anticipation, Alison uses the same reference Ramamurthi, which was considered by the patent examiner during prosecution and later by the Board in denying Alison’s IPR petition. One of Alison’s argument is that Ramamurthi recites “glass wool” as a preferred fiber, which should be synonymous with the “fiber glass” expressly identified as a lofty batting by the ‘359 patent. However, the Commission rejected Alison’s anticipation argument based on Aspen’s detailed expert testimony, which demonstrated that “fiberglass” and “glass wool” each describe broad categories of materials that are not inherently “lofty.” the Federal Circuit held that the Commission’s determination is supported by substantial evidence, and rejected to reweight the evidence.

In conclusion, the Federal Circuit affirmed that the claims of the ‘359 patent are valid.

Take away

  1. In drafting specification, the drafter should provide some detailed examples of the invention, which can provide sufficient guidance and points of comparison to render certain claims terms definite.
  2. In defining claims terms in the specification, numerical precision is not necessarily needed to satisfy the definiteness requirement.

A claimed rule feature may not be anticipated and/or rendered obvious merely because the rule is satisfied by chance in a reference

| August 29, 2018

In re Facebook

August 14, 2018

Before Prost, Moore, Stoll.  Opinion by Prost.


The CAFC reversed and remanded a PTAB decision, which had affirmed an Examiner’s anticipation and obviousness rejection of a patent application for a method of arranging images contiguously in an array.  The CAFC held that anticipation of Applicants’ claimed rule is not established by an example in a cited reference, which just happens to satisfy Applicants’ claimed rule, since said rule is not satisfied all of the time in the cited reference.

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Post-filing clarification of an ambiguous feature in a pre-filing reference is not sufficient to establish inherent properties of the feature in the earlier publication

| July 31, 2018

Endo Pharmaceuticals Solutions et al. v. Custopharm Inc.

July 16, 2018

Before Moore, Linn and Chen.  Opinion by Chen.


Custopharm argued that Endo’s patents were invalid due to anticipation or obviousness of three features of a drug and its administration:  the dosage, the content of the vehicle, and the administration schedule.  The arguments regarding the dosage were rejected on the grounds that they relied on a lesser-used industry treatment guideline.  The arguments regarding the vehicle were rejected on the grounds that they relied on an improper inherency position, and that it would not have been obvious to modify the vehicle in view of a reference teaching a similar vehicle in a different context.  Finally, the arguments regarding the administration schedule were rejected on the grounds that they relied upon an unsupported claim construction position, as well as an improper combining of the teachings of two references.

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The CAFC Finds the Board’s Claim Construction to Be Unreasonably Broad

| April 13, 2018

In re Power Integrations, Inc.

March 19, 2018

Before Moore, Mayer, and Stoll.  Opinion by Mayer.


Power Integrations, Inc. (“Power Integrations”) appeals a remand decision of the Patent Trail and Appeal Board (“Board”) rejecting claims 1, 17, 18 and 19 of US Patent No. 6,249,876 (the ‘876 patent) as anticipated under 35 U.S.C. §102(b).  On appeal, the CAFC found the board’s claim construction to be unreasonably broad.  Because the Board’s anticipation rejection was based on an unreasonably broad claim construction, the CAFC reversed.


連邦巡回控訴裁判所(CAFC)の判決である。先に米国特許庁審判部へ差し戻され、米国特許庁審判部が再度判断を下したその判断の適否が争われた。米国特許庁審判部が広いクレーム解釈に基づいて「新規性なし」と判断した審決をCAFCは覆した。CAFCは、米国特許庁審判部のクレーム解釈はいわゆるBRI(Broadest Reasonable Interpretation)ではなく、Unreasonably(不当)に広いと判断した。そのような不当に広いクレーム解釈に基づいて引例の開示が当てはめられた新規性の判断が覆された。

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CAFC relies on extrinsic evidence to define a claim term and to demonstrate inherency

| February 23, 2018

Monsanto Technology LLC v. E.I. Dupont de Nemours & Co.

January 5, 2018

Before Dyke, Reyna and Wallach.  Opinion by Wallach.


 In this case, the CAFC affirmed a PTAB decision which relied on two pieces of extrinsic evidence.  First, a journal article referred to by the specification was used to define the bounds of “about 3% or less.”  Second, a Declaration submitted in the course of inter partes reexamination was used to demonstrate that claimed features are inherent in an anticipating reference.  The CAFC explained that both were appropriate, and the claims are invalid as being anticipated by the cited art.

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Back to Basics: In re Chudik offers a refresher on the law of anticipation for functional limitations

| April 17, 2017

In re Chudik

March 27, 2017

Before Dyk, Reyna, and Stoll. Opinion by Reyna.


This decision is a refresher on the basic law of anticipation for functional claim elements. A prior art does not anticipate a functional claim element merely because it is “capable of” performing the recited function, but rather, such capability must be achieved without “distortion” or “modification” to the prior art.

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Evidence showing conversion of units to find anticipation

| December 9, 2016

REG Synthetic Fuels, LLC. v. Neste Oil Oyj

November 8, 2016

Before Prost, Taranto and Chen.  Opinion by Chen.


REG Synthetic Fuels, LLC (REG) owns U.S. Patent No. 8,231,804 (’804 patent).  Neste Oil Oyj (Neste) requested inter partes review against claims 1–5 and 8 of the ’804 patent, which were directed to a composition comprising paraffins (hydrocarbons) useful as heat-insulation material in a house.  PTAB found that claim 1 was anticipated by cited references including Craig.  CAFC affirmed.  The key feature of claim 1 was the limitation: “comprising at least 75 wt% (weight percent) even-carbon-number paraffins.”  Craig disclosed the production of hydrocarbon compositions and the hydrocarbon amounts therein defined by a different unit, “peak area percentages” measured by a mass spectral analysis.  Neste relied upon their expert’s calculation using three different conversion factors to calculate corresponding wt.% from the peak area %.  CAFC held that Neste’s expert’s calculation established by a preponderance of evidence that the claimed composition read on the prior art compositions.


Claim 1 representative of the ’804 patent:

  1.  A phase change material composition comprising at least 75 wt% even carbon number paraffins, wherein the paraffins are produced by hydrogenation/ hydrogenolysis of naturally occurring fatty acids and esters.

A key feature in claim 1 was the limitation with “at least 75 wt% even carbon number paraffins,” as CAFC agreed with the PTO’s interpretation that the preamble part (the phase change material) and the wherein-clause (the product-by-process limitation) are not limiting.  The main issue in this appeal was whether Craig taught the limitation of “at least 75 wt% even carbon number paraffins.”

Craig disclosed hydrocarbon products obtained from naturally occurring feedstocks, and the results of quantitative analysis of the products.  The critical disclosure was Table 9 (reproduced below in part).  The table showed “peak area percentages” of each even-carbon-number paraffin such as C16, C18, or C20 in the hydrocarbon products.  However, Craig did not disclose corresponding weight percentages.  Nor did it disclose how to calculate weight percentages from weight percentages.





As evidence, Neste’s expert (Dr. Klein) submitted data showing conversion of peak area percentages to weight percentages.  As shown in Table 2 (reproduced from the opinion), the peak area percentages of each hydrocarbon were calculated using three relative response factors, i.e., “Hsu,” “Gorocs,” and “Chaurasia.”

REG argued that the conversion of peak area percentages into weight percentages is “not straightforward” and Craig did “not provide enough information to accurately convert the GC-MS peak area percentages to weight percentages using relative response factors.”  However, REG’s expert (Dr. Lamb) agreed that the peak area percentages could be converted to weight percentages by using relative response factors, and other references cited in Dr. Lamb’s opinion in fact disclosed two of the factors (Gorocs and Chaurasia).








REG’s arguments relied mostly upon the complex nature of the biological feedstocks and their own expert’s opinion that the resulting product is a very complex mixture which affects the phase change characteristic.  REG argued that Craig disclosed a distillation process to separate the obtained mixture into fractions and such additional process would result in “structural and functional differences in the products.”  However, REG did not submit any evidence or data showing the asserted differences.  PTAB rejected the REG’s arguments because there was no credible evidence or disclosure in the specification supporting their arguments.  Particularly, as noted by PTAB, claim 1 did not exclude distilled products.

Turning to the issue as to whether the peak area percentages disclosed in Craig read on the claimed weight percentages, CAFC noted, as PTAB held, that claim 1 was anticipated since “a person of ordinary skill in the art could readily convert the disclosed peak area percentages into their corresponding weight percentages, and the sum of the converted peak area percentages of Craig met the claim requirement that the overall weight percentage of even-carbon-number paraffins be at least 75 wt%.”  It was specifically noted that each of the calculated weight percentages for “Canola Premium” met the claimed range and “82.31 wt%” was “more than 7% higher than” the claimed l limit, 75 wt%.

CAFC agreed with the PTAB’s view that “it unlikely that any correction required by the experimental conditions would result in a weight percentage of less than the 75 wt%” because Table 2 showed that the different weight percentages obtained by using the different relative response factors “were very small.”

CAFC added that “this is not an inherency issue, however, because the challenged limitation is not missing from Craig” as Neste’s expert “simply converted one unit of measurement (area percent) into another unit of measurement (weight percent) by using relative response factors from the prior art.”

Take Away

According to this decision, conversion of units or parameters one another is not an inherency issue, but all about evidence.  This is one example showing that IPRs help the Patent Office find better interpretation of prior art, which may not easily be examined without expert’s opinions from each party.  In addition, the preponderance of evidence standard is available to fill a gap between cited prior art and patented claims in IPRs.  Good reasons to use IPRs.

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