In re Kevin P. Eaton

Docket No. 2013-1104

RADER, LOURIE, MOORE (per curium)
November 22, 2013


Brief summary: Finding of anticipation reversed because prior art was not shown to disclose compositions “essentially free of anti-oxidants” as defined by the specification. Obviousness findings reversed because no rationale or motivation for adjusting prior art to be “essentially free of anti-oxidants” was shown.

Summary: The court reversed the Board’s obviousness and anticipation determinations regarding Eaton’s application related to methods for treating psoriasis using a multiple vitamin supplement (25-2200 μg folic acid, 25-2500 μg vitamin B12, and 0.5-20 μg vitamin B6) that is “essentially free of anti-oxidants” (e.g., vitamins C and/or E). The Examiner rejected the claims as anticipated or obvious in view of five prior art references. The Board affirmed these rejections because “the specification defines the phrase ‘essentially free of anti-oxidants’ to ‘allow antioxidants as long as they do not damage or inactivate the B12 or folic acid.’” The specification did not define the amount of antioxidants that “would tend to damage or inactivate” the vitamin B12 or folic acid “but instead relies on functionality” (determined to mean that “the effectivenss of the composition must not be reduced”). In reversing the anticipation findings, the court found that “[t]he Office has not established that the cited references disclose compositions whose effectiveness is not reduced at all due to the presence of antioxidants.” A factual error (“not harmless”) in the PTO analysis was also found in that one reference discloses 200 milligrams of vitamin C and not 200 micrograms as stated by the examiner. Regarding obviousness, “the Board adopted the examiner’s reasoning that it would have been obvious for one of ordinary skill to ‘adjust the concentrations of folic acid, vitamin B6 and vitamin B12 to arrive at an optimum workable range’”. The court concluded, however, that “this finding does not provide a rationale for adjusting the concentrations of antioxidants” in the prior art to be “essentially free of antioxidants”. The court also found that “[t]he Office has not established on this record that a motivation exists to modify [the prior art] to be essentially free of antioxidants” (e.g., prior art shows vitamin C concentration three times that of next-most prevelant component; another shows a specific combination of vitamin E and B-complex vitamins that “act[s] synergistically”). In reversing the obviousness decision, the court cited Leo Pharm. Prods., Ltd. (FC 2013): “’[I]n the face of such divergent compositions with express disclaimers of the other’s contents,’ the record demonstrates neither a motivation to ‘adjust’ those synergistic concentrations nor a motivation to combine them.”

This entry was posted in Anticipation (35 USC 102), Claim Construction, Obviousness. Bookmark the permalink.

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