Docket No. 2016-1811
LOURIE (D), MOORE, O’MALLEY
August 25, 2017
Brief summary: Board affirmance of examiner’s rejection of Stepan’s claims as obvious vacated and remanded because, e.g., “[t]he Board failed to explain why it would have been ‘routine optimization’”.
Summary: Stepan appealed Board affirmance of examiner’s rejection of claims 1-31 of Ser. No. 12/456,567 relating to herbicide formulations for obviousness. The FC panel opinion explains that the specification explains that “[t]he present invention is based on the unexpected discovery that surfactant systems comprising dialkoylated alkylamine, water miscible solubilizer and amine oxide allow for formulation of ultra-high loaded (‘high-strength’) glyphosate salt concentrates possessing high or no cloud points” (“the temperature at which a solution becomes cloudy due to the surfactants becoming insoluble and separating into layers”). Sole independent claim 1 claims a concentrate comprising water, “greater than about 39 weight percent” of a glyphosate salt, 1 to 20 percent of a “surfactant system” of ~10-60% dialkoxylated alkylamines, ~5-30% of one or more water miscible solubilizers, ~30-75% of one or more amine oxides, “having a cloud point about at least 70 [degrees]C., or no cloud point when the concentrate is heated to its boiling point.” The examiner rejected the ‘567 claims as obvious because, e.g., while Pallas does not teach the claimed cloud point, “achieving this cloud point would be a matter of ‘optimizing the formulation’ because [it] teaches the ideal cloud point should be above 60[degrees]C” (“routine optimization”). Regarding claims 26 and 27, the examiner included the Parker reference which was alleged to disclose “polyethylene glycol 600 in a surfactant system mixed with tallow amine and used with glyphosate” and “a skilled artisan ‘would have been motivated to make the formulation’” in view of that teaching. The FC panel explained that it reviews the Board’s factual findings for substantial evidence and its legal determinations de novo” (In re Van Os, FC 2017) and there must be both a motivation to combine the teachings of the prior art” and a reasonable expectation of success in doing so (Intelligent Bio-Sys, FC 2016) (both “questions of fact”). It found that “[t]he Board failed to explain why it would have been ‘routine optimization’ to select and adjust the claims surfactants and achieve a cloud point above at least 70[degrees] C”, as it “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” (In re Lee, FC 2002; Van Os (“Absent some articulated rationale, a finding that combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.”); Arendi, FC 2016). And “[t]o 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” (Pfizer, FC 2007). The FC panel also found that the Board “erred when it shifted the burden of proving patentability to Stepan” (In re Deuel, FC 1995). It also explained that the “line of case law” regarding the “criticality of [a] claimed range…does not apply here” because the Board did not make the prima facie case and Stepan’s claims do “not merely claim a range of surfactants that is within or overlaps with the range of surfactant systems taught by Pallas” but “contains four elements…that produce” the claimed cloud point (“thus limit[ing] and defin[ing] the scope of what surfactant combinations satisfy the claimed composition”). Thus, “[i]t therefore may be that not all compositions that containg the claimed combination and range of surfactants fall within the claims” and “it was the PTO’s-not Stepan’s-burden to show achieving” the claimed cloud point would have been obvious. Addressing Judge Lourie’s dissent, FN1 of the FC panel opinion explains that “[w]hether a rejection is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.”