Wednesday, August 29, 2007

CAFC: Evidence of Unexpected Results Must be Considered by PTO

In Re John B. Sullivan (2006-1507) August 29, 2007 (link)

The applicants appealed a decision by the BPAI, finding their application obvious. The subject matter of the appeal relates to an antivenom composition used to treat venomous bites from a rattlesnake.

The PTO reasoned that two prior art references rendered the claims obvious, and added that limitations recited towards snakebite victims were for an "intended use", and that functional language related to the composition "would have been expected by a person of ordinary skill in the art at the time the invention was made to neutralize the lethality of the venom of a rattlesnake."

Interestingly, the applicant submitted three declarations which argued non-obviousness, but the PTO "gave them no weight because they only relate to the use of the claimed composition."

While finding that a prima facie case of obviousness was made, the court found error in the PTO's refusal to consider the declarations:

The Board failed to consider each of these declarations. The Board stated in a footnote that the declarations of record relate only to the use of the claimed composition as an antivenom, and thus the Board expressly declined to give any meaningful consideration to them. Sullivan, No. 2006-0220, slip op. at 13 n.7. As stated above, when an applicant puts forth relevant rebuttal evidence, as it did here, the Board must consider such evidence. The claimed composition cannot be held to have been obvious if competent evidence rebuts the prima facie case of obviousness. By failing to consider the submitted evidence, the Board thus committed error. That is not to suggest that the Board’s finding of obviousness must be overturned in light of the evidence; rather, the Board must give the declarations meaningful consideration before arriving at its conclusion.

Moreover, the Board was mistaken to assert that the declarations only relate to the use of the claimed composition. The declarations do more than that; they purport to show an unexpected result from use of the claimed composition, how the prior art taught away from the composition, and how a long-felt need existed for a new antivenom composition. While a statement of intended use may not render a known composition patentable, the claimed composition was not known, and whether it would have been obvious depends upon consideration of the rebuttal evidence. Had the Board considered or reviewed the declarations in any meaningful way, it might have arrived at a different conclusion than it did.

With regard to "intended use," the CAFC provided this important language:
The issue here is not whether a claim recites a new use, but whether the subject matter of the claim possesses an unexpected use. That unexpected property is relevant, and thus the declarations describing it should have been considered by the Board.


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