August 25, 2017

Routine Optimization Cannot Make Invention Obvious Without A Reasonable Expectation for Success

By Bryan K. Wheelock, Principal

In In re Stepan Co., [2016-1811] (August 25, 2017), the Federal Circuit vacated the Patent Trial and Appeal Board’s affirmance of the Examiner’s rejection of claims 1–31 of U.S. Patent Application No. 12/456,567 on herbicidal formulations containing glyphosate salt with a surfactant system.

The Examiner found that the prior art contained the preferred surfactants, and further taught glycols as an optional ingredient, and concluded that “it is routine optimization to select and adjust the surfactants to the undisclosed range.  The Board affirmed.

The Federal Circuit began with the premise that an obviousness determination requires finding both “that a skilled artisan would have been motivated to combine the teachings of the prior art … and that the skilled artisan would have had a reasonable expectation of success in doing so.”  The Federal Circuit said that the Board failed to explain why it would have been “routine optimization” to select and adjust the claimed surfactants and achieve the claimed results.  The Federal Circuit said that an agency tribunal must make findings of relevant facts, and present its reasoning in sufficient detail that the court may conduct meaningful review of the agency action, and that relying on routine optimization falls short of this standard.  Specifically, the Federal Circuit said the Board did not explain “why it would have been routine optimization to arrive at the claimed invention.”

The Federal Circuit said that just like cases where the Board has characterized the invention as “intuitive” or “common sense,” the Board must provide some rational underpinning explaining why a person of ordinary skill in the art would have arrived at the claimed invention through routine optimization.

The Federal Circuit also noted the absence of a reasonable expectation of success.  The Federal Circuit said that to have a reasonable expectation of success, one must be motivated to do more than merely to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.

Finally, the Federal Circuit said the Board improperly placed the burden of proving patentability on the applicant.  The claim required the composition have a “cloud point above 70°” and it was the USPTO’s burden to show that achieving this would have been obvious to a person of ordinary skill in the art.

The Board’s decision was vacated, and the application remanded for further examination.