Florida Patent Lawyer Blog

Ex parte Lockemeyer involved a product-by-process claim of a chemical composition made using a new process. The Examiner issued a 35 U.S.C. 103 obviousness rejection of the product-by-process claim based on a prior art reference that disclosed the chemical composition, but did NOT disclose the Applicant's process. This begs the question - can you properly reject a product-by process claim using a prior art reference that discloses the product but NOT the process? Apparently, you can.

It is well settled that the patentability of a claim in product-by-process form is determined based on the product itself, not on the method of making it. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) ("If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process."). In light of this precedent, the Board affirmed the rejection of the Applicant's product-by-process claim.

As a side note, it should be noted that the Applicant did argue that Applicant's composition possessed characteristics not held by the composition of the prior art reference. Other than attorney argument, the Applicant offered no other evidence. This argument was, of course, shot down by the Board. When Appellants' product and a product of the prior art appear to be identical or substantially identical, the burden shifts to Appellants to provide evidence that the prior art product does not necessarily or inherently possess the characteristics of Appellants' claimed product. See Thorpe, 777 F.2d at 698; In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Fessmann, 489 F.2d 742, 745 (CCPA 1974).

The affirmation of the rejection of the product-by-process claim illustrates the uselessness of these types of claims. The "process" portion of a product-by-process claim clearly has little or no limiting value and is virtually ignored as a claim limitation. Consequently, there is no good reason to add a "process" to a "product" claim. For expediency, product-by-process claims should be avoided and standard chemical composition claims should be used.

The law on this issue states: "It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). Although "[a] patent applicant is free to recite features of an apparatus either structurally or functionally . . . choosing to define an element functionally, i.e., by what it does, carries with it a risk." Id. at 1478. Therefore, since the prior art reference had the identical structure as Appellant's claim, the BPAI decided the fact that it didn't disclose a "deflecting debris" function was irrelevant.

Now that's a novel argument. Patent practitioners know that market forces are rarely, if ever, a subject that we bring up during patent prosecution. The only commonly-used exception is when you make an argument of long-felt need - usually done in a 1.132 Affidavit - and even then, it is categorized as a "secondary consideration" and not given great weight. See MPEP 716.04 for long-felt need arguments.

How did the Board respond? The Board stated: "The Court in KSR does not 'mandate[] that we consider a common-sense consideration of market forces and the effects of demands known to the design community when assessing the obviousness of a given prior art combination,' as argued by Appellants. Anderson 's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62 (1969) specifically precludes Appellants' reading of KSR."

The Board went on: "

• A combination of elements may result in an effect greater than the sum of the several effects taken separately. No such synergistic result is argued here. It is, however, fervently argued that the combination filled a long felt want and has enjoyed commercial success. But those matters 'without invention will not make patentability.' Great A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147, 153, 71 S.Ct. 127, 130, 95 L.Ed. 162. Anderson's-Black Rock, 396 U.S. at 61.

The educational moment here is that long-felt need and market forces arguments are secondary considerations and cannot be used as the main component of your non-obviousness argument. In order to combat a 103 obviousness rejection, you must focus your argument on the basics, i.e., why the references don't disclose every element of the claimed invention, why the two references should not be combined, etc. In other words, long-felt need and market forces arguments can be used as a spice, but not as the main dish.

If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Further, "a reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

In Ex part Regini, the Board found the Examiner "fails to respond to Appellants' teaching away argument. In this regard, the Examiner does not explain why it would have been obvious to employ Fong's plasma of inert gas and chlorine-containing gas, which are known to be chemically reactive, to remove a silicon native
oxide layer on Vassalli's wafer in view of Vassalli's teaching that 'the effectiveness of the technique has been lost' when 'even a small amount of chemically reactive gas' is introduced to its polycrystalline silicon, which is positioned above its wafer." Consequently, the Board reversed the Examiner's 103 rejection on the grounds that the combination of Vassalli and Fong was not proper.

What can we learn from this case? First, if a cited reference expressly teaches away from a certain combination, then you have grounds for reversing a 103 rejection asserting the combination - and you don't need outside evidence such as textbooks, 1.132 Affidavits or other patents to support your point. The express teaching-away language in the cited reference can be enough to get a reversal! Second, an Examiner is required to provide a reason why a combination is obvious in a 103 rejection, especially in response to an inoperability argument. If he does not provide such a reason, this is grounds for a reversal of the103 rejection.