September 11, 2017
Authored and Edited by John E. Nappi; Sydney R. Kestle; Elizabeth D. Ferrill
The Federal Circuit vacated and remanded the Patent Trial and Appeal Board’s (PTAB) decision in In re Stepan Co., No. 2016-1811 (Fed. Cir. Aug. 25, 2017), because the PTAB “failed to adequately articulate its reasoning, erroneously rejected relevant evidence of nonobviousness, and improperly shifted to Stepan the burden of proving patentability.”
Stepan’s patent application is directed to herbicidal formulations containing glyphosate salt with a surfactant system. In affirming the examiner’s obviousness rejection, the PTAB found, among other things, (1) that Stepan failed to provide evidence that it would not have been routine optimization for a skilled artisan to select and adjust the claimed surfactants to achieve a cloud point above 70°C; and (2) that Stepan failed to establish the criticality of its claimed ranges.
The Federal Circuit vacated and remanded, explaining that the PTAB did not articulate ”why it would have been routine optimization to arrive at the claimed invention,” failed to articulate why a POSA would have a reasonable expectation of success, and erroneously ignored Stepan’s submitted evidence of nonobviousness. In light of those shortcomings, the Federal Circuit noted that the PTAB failed to establish a prima facie case of obviousness and erred in shifting the burden to Stepan to show the criticality of the cloud point limitation.
Judge Lourie dissented, reasoning that the broad claims of Stepan’s application would have been obvious, and that, where there is a single asserted reference, there does not need to be an express finding of a reasonable expectation of success for those skilled in the art to make a conventional modification and to look for improvements in some parameter.
Copyright © 2017 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
10th Annual Georgia Asian Pacific American Bar Association Gala
May 29, 2024
Atlanta
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.