Yesterday, the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner's anticipation rejection, citing the Applicant's attempt to claim a new benefit of an old process. As a Miami Patent Attorney that handles anticipation rejections on a weekly basis, Ex parte Satoshi Matsubara, et al. is an interesting case because it illustrates the law surrounding the concepts of inherency and claiming a new use or benefit of a prior art process.
At issue were claims involving a therapeutic method for improving bone density of a human or animal having decreased bone density by administering fermented soy milk. The Patent Examiner rejected representative independent claim 17 under 35 U.S.C. §102(b) as being anticipated by an academic paper by Kikuchi-Hayakawa. The Examiner found that Kikuchi-Hayakawa disclosed administering fermented soy milk to rats with removed ovaries. Since ovariectomized rats have decreased bone densities, and soy milk increases bone density in rats, the Examiner concluded that Kikuchi-Hayakawa disclosed administering fermented soy milk to rats to improve their decreased bone densities. The Appellants, however, argued the rats of Kikuchi-Hayakawa were not selected for their decreased bone densities but for other reasons (to determine the effects of soy milk on lipid metabolism), and therefore Kikuchi-Hayakawa did not disclose every element of claim 17.
The BPAI held that Appellants' argument - Kikuchi-Hayakawa's rats were not selected for their decreased bone densities but for other reasons - was not persuasive. Specifically, the BPAI stated: "Appellants have not identified any manipulative difference between Kikuchi-Hayakawa's method and the claimed method ... the claimed method 'is inherent and in the public domain if it is the 'natural result flowing from' the explicit disclosure of the prior art regardless of whether the inherent result is recognized." Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1377 (Fed. Cir. 2005). And because a 35 U.S.C. §102(b) prior art reference may disclose a limitation inherently, claim 17 was anticipated by Kikuchi-Hayakawa. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). "To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently." Thus, the BPAI affirmed the Examiner's 35 U.S.C. §102(b) rejection of claim 17.
What I found particularly interesting about Ex parte Satoshi Matsubara, et al. was the BPAI's apparent disregard for the claim element "selecting a human or animal having a tendency toward a decrease in bone density." Sure, the prior art disclosed selecting ovariectomized rats, which happened to have decreased bone densities. But the prior art didn't disclose selecting rats because they had decreased bone densities. The decreased bone densities of the rats in the prior art were a serendipitous (for the Patent Examiner) byproduct of the actual reason they were selected - because they were ovariectomized.
For patent practitioners, the educational aspect of this case rests in the classification of a claimed invention as novel, as opposed to an old process. Beware of an Examiner's determination that your claimed process is old or well-known. Further, be wary of an Examiner's finding that your claimed new benefit naturally flows from the allegedly old process. These findings, if not properly rebutted, will hurt your chances of a reversal on appeal.
