{"id":1678,"date":"2017-08-01T19:38:22","date_gmt":"2017-08-01T23:38:22","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1678"},"modified":"2017-08-03T11:01:47","modified_gmt":"2017-08-03T15:01:47","slug":"can-unexpected-results-make-the-obvious-non-obvious","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1678","title":{"rendered":"Can Unexpected Results Make the Obvious Non-Obvious?"},"content":{"rendered":"

In\u00a0Honeywell, Int\u2019l Inc. v. Mexichem Amanco Holdings S.A.<\/a>, [16-1996] (August 1, 2017). the Federal Circuit\u00a0vacated the USTPO\u2019s reexamination decision invalidating claims\u00a01\u201326, 31\u201337, 46\u201349, 58,\u00a059, 61\u201368, 70\u201375, 80, and 81 of U.S. Patent 7,534,366 on a refrigerant and lubricant composition for air conditioning systems. \u00a0The Federal Circuit found that the Board erred by improperly\u00a0relying on inherency to find obviousness and in its\u00a0analysis of motivation to combine the references.<\/p>\n

First, the Board erred in relying on\u00a0inherency to dismiss evidence showing unpredictability in\u00a0the art. \u00a0 The use of inherency\u00a0in the context of obviousness must be carefully circumscribed\u00a0because that which may be inherent is not\u00a0necessarily known and that which is unknown cannot be obvious. \u00a0What is important regarding properties that may be\u00a0inherent, but unknown, is whether they are unexpected.\u00a0All properties of a composition are inherent in that composition,\u00a0but unexpected properties may cause what may\u00a0appear to be an obvious composition to be nonobvious. \u00a0The Board, in dismissing properties\u00a0of the claimed invention as merely inherent, without\u00a0further consideration as to unpredictability and\u00a0unexpectedness, erred as a matter of law.<\/p>\n

Second, the Board erred in dismissing evidence\u00a0of unpredictability in the art when it stated that\u00a0one of ordinary skill would no more have expected failure\u00a0than success in combining the references, and thus concluded that the person of ordinary skill would be led to routine testing, which would have eventually led to the claimed combination. \u00a0The Federal Circuit found that this put the burden on the patent owner to show that a person of ordinary skill in the art would have expected failure. \u00a0The Federal Circuit said that instead the\u00a0the burden is on the Office\u00a0to show that one of ordinary skill would have had a motivation\u00a0to combine the references with a reasonable expectation\u00a0of success.<\/p>\n

The use of unexpected results to show non-obviousness is a curious aspect of patent law. \u00a0If it truly is obvious to modify a reference, or combine two or more references, then the fact that the obvious modification or obvious combination results in something unexpected, should not change the determination of obviousness, While we might feel like rewarding someone who provides unexpected results, by giving them a patent for doing what is obvious is not what the patent laws prescribe. \u00a0In Honeywell, <\/em>however, the non-obviousness did not hinge on unexpected results, but on the unpredictability of the art.<\/p>\n

The Federal Circuit also agreed that the Board improperly relied upon a new ground of rejection, resurrecting a reference cited by the requesters, but not relied upon by the Examiner.<\/p>\n","protected":false},"excerpt":{"rendered":"

In\u00a0Honeywell, Int\u2019l Inc. v. Mexichem Amanco Holdings S.A., [16-1996] (August 1, 2017). the Federal Circuit\u00a0vacated the USTPO\u2019s reexamination decision invalidating claims\u00a01\u201326, 31\u201337, 46\u201349, 58,\u00a059, 61\u201368, 70\u201375, 80, and 81 of U.S. Patent 7,534,366 on a refrigerant and lubricant composition for … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[12,30],"tags":[],"class_list":["post-1678","post","type-post","status-publish","format-standard","hentry","category-obviousness","category-reexamination"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1678","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1678"}],"version-history":[{"count":3,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1678\/revisions"}],"predecessor-version":[{"id":1686,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1678\/revisions\/1686"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1678"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1678"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1678"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}