Docket No. 2013-1219, -1220, -1221
NEWMAN, MOORE, WALLACH
September 10, 2014
Brief Summary: Soda pop bottle caps found to be analogous art to chromotagraphy caps for “address[ing] the problem of providing a fluid-tight seal at elevated pressures”. Art provided “implicit acknowledge[ment of] a potential leakage issue”; combination of references therefore proper.
Summary: Scientific Plastics Products (SPP) appealed Board decision affirming examiner’s rejection of all claims of SPP’s US 7,138,061; 7,381,327; and 7,410,571 (SPP patents) relating to chromatography cartridges following an inter partes reepatxamination (filed by Biotage AG after SPP filed an infringement suit). The claims were found obvious in view of the Yamada reference showing a low pressure liquid chromatography (LPLC) cartridge and the King or Strassheimer references showing pressure-resistant caps. SPP argued that King and Strassheimer were not “analogous art” and that the combination would not have been obvious. The Board concluded “that the specification of the SPP patents identified a leakage problem associated with threaded connections between the polymer cap and polymer body in LPLC cartdriges, and that Yamada’s use of an O-ring in the cartridge ‘implicitly acknowledges’ potential leakage” which provided a reason the skilled artisan would have “turned to King or Strassheimer.” The opinion explained that “[t]o be deemed ‘analogous art,’ a reference outside an inventor’s field of endeavor must be ‘reasonably pertinent’ to the particular problem with which the inventor is involved, such that a person of ordinary skill would reasonably have sought a solution to the problem in that outside field” (In re Clay, FC 1992) (the reference “logically would have commended itself to an inventor’s attention in considering his problem” (Innovention Toys, FC 2011) without hindsight (In re Oetiker, FC 1992 (women’s garment fasteners not analogous art for hose clamp fasteners) and KSR, US 2006)). SPP argued “that the needs identified in the specification are specific to flash chromatography, and that chemists…would not look to ‘soda-pop’ bottle caps to solve problems with flash chromatography cartridges”. However, the FC concluded that the references “address the problem of providing a fluid-tight seal at elevated pressures, between a container and a resealable cap” that “is sufficiently close to the problem”. Regarding the combination, the Board found that Yamada described using an O-ring, thereby “implicitly acknowledge[ing] that there is a potential leakage issue”. The FC panel did not agree with SPP that the conclusion regarding the combination required hindsight because “the issue here is not whether the Yamada cartridge leaked, but whether there was a concern with leakage in LPLC cartridges such that a person of ordinary skill would have provided a known pressure-resistance cap, as in King or Strassheimer, to the cartridge of Yamada”. Thus, the Board decision was affirmed. Judge Moore’s dissent argued this conclusion was improper because the record does not contain substantial evidence that one skilled in the art would have modified the cartridge of Yamada “by replacing its sealing configuration with that of a soda pop bottle” (“Yamada did not have a leakage problem…You wouldn’t seek to improve [a] sealing arrangement’ that doesn’t leak.”)