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BPAI: when prior art teaches away, expectation of success cannot support obviousness rejection

By McKee, Voorhees & Sease, P.L.C.

In a recent precedential decision by the Board of Patent Appeals and Interferences, the board reversed an Examiner's rejections based on double patenting, anticipation, and obviousness.  The Board held the Examiner inappropriately rejected the claims for double patenting because there was insufficient evidence to show the compositions claimed in the prior art possessed the viscosity level claimed in the current application or that they would be obvious variants.  

The Board similarly reversed the anticipation and obviousness rejections.  The Board noted the Examiner did not provide "an adequate basis – based on evidence or scientific reasoning – to support" the argument that the prior art compounds inherently met the viscosity limitation.  Further, the examiner's logic that the compounds were obvious based on the motivation in the art to optimize the viscosity of the prior art formulations was also rejected.  The Board noted that though "the discovery of an optimum value of a variable in a known process is normally obvious," here the cited references all indicated that low viscosity, not the claimed high viscosity, was desirable.  In fact, the Board, citing KSR, highlighted that there still must be a reason to make the asserted modifications to the prior art.  This is particularly the case when the prior art teaches away:

[W]hen the prior art teaches away from the claimed solution as presented here, obviousness cannot be proven merely by showing that a known composition could have been modified by routine experimentation or solely on the expectation of success; it must be shown that those of ordinary skill in the art would have had some apparent reason to modify the known composition in a way that would result in the claimed composition.

More on Ex parte Whalen after the jump.

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Full post as published by FileWrapper on August 16, 2008 (boomark / email).