{"id":1718,"date":"2017-08-25T14:00:47","date_gmt":"2017-08-25T18:00:47","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1718"},"modified":"2017-08-28T14:57:47","modified_gmt":"2017-08-28T18:57:47","slug":"routine-optimization-cannot-make-invention-obvious-without-a-reasonable-expectation-for-success","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1718","title":{"rendered":"Routine Optimization Cannot Make Invention Obvious Without A Reasonable Expectation for Success"},"content":{"rendered":"

In In re Stepan Co.<\/a>, [2016-1811] (August 25, 2017), the Federal Circuit vacated the PTAB’s affirmance of the Examiner’s rejection of claims\u00a01\u201331 of U.S. Patent Application\u00a0No. 12\/456,567 on\u00a0herbicidal formulations containing\u00a0glyphosate salt with a surfactant system.<\/p>\n

The Examiner found that the prior art contained the preferred surfactants, and further taught glycols as an optional ingredient, and concluded that \u201cit is routine optimization to select and adjust\u00a0the surfactants to the undisclosed range. \u00a0The Board affirmed.<\/p>\n

The Federal Circuit began with the premise that an obviousness determination requires finding both \u201cthat\u00a0a skilled artisan would have been motivated to combine \u00a0the teachings of the prior art . . . and that the skilled
\nartisan would have had a reasonable expectation of success\u00a0in doing so.\u201d The Federal Circuit said that the Board failed to explain why it would have been\u00a0\u201croutine optimization\u201d to select and adjust the claimed\u00a0surfactants and achieve the claimed results. \u00a0The Federal Circuit said that an \u00a0agency tribunal must make findings of\u00a0relevant facts, and present its reasoning in sufficient\u00a0detail that the court may conduct meaningful review of the agency action, and that relying on\u00a0routine optimization falls short of this standard. \u00a0Specifically, the Federal Circuit said the Board did not explain “why it
\nwould have been routine optimization to arrive at the\u00a0claimed invention.”<\/p>\n

The Federal Circuit said that just like cases where the Board has characterized the invention as “intuitive” or “common sense,”\u00a0the Board must provide some rational\u00a0underpinning explaining why a person of ordinary skill in\u00a0the art would have arrived at the claimed invention
\nthrough routine optimization.<\/p>\n

The Federal Circuit also noted the absence of a reasonable expectation of success. \u00a0 The Federal Circuit said that to\u00a0have a\u00a0reasonable expectation of success, one must be motivated\u00a0to do more than merely to vary all parameters or try each\u00a0of numerous possible choices until one possibly arrived at\u00a0a successful result.<\/p>\n

Finally the Federal Circuit said the Board improperly placed the burden of proving patentability on the applicant. \u00a0The claim required the composition have a “cloud point above 70\u00b0” and it was the USPTO’s burden to show that achieving this would have been obvious to a person of ordinary skill
\nin the art.<\/p>\n

The Board’s decision was vacated, and the application remanded for further examination.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In In re Stepan Co., [2016-1811] (August 25, 2017), the Federal Circuit vacated the PTAB’s affirmance of the Examiner’s rejection of claims\u00a01\u201331 of U.S. Patent Application\u00a0No. 12\/456,567 on\u00a0herbicidal formulations containing\u00a0glyphosate salt with a surfactant system. The Examiner found that the … 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],"tags":[],"class_list":["post-1718","post","type-post","status-publish","format-standard","hentry","category-obviousness"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1718","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=1718"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1718\/revisions"}],"predecessor-version":[{"id":1719,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1718\/revisions\/1719"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1718"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1718"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1718"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}