BPAI finds "planar" means "flat" not "thin"

Takeaway: In considering the meaning of "planar", the BPAI adopted the Examiner's interpretation ("flat") rather than the Applicant's interpretation ("thin"). The Board found that the specification did not support the interpretation "thin." The Applicant did not address the dictionary definition used by the Examiner, nor did the Applicant provide his own definition.

Details:

Ex parte Hixon
Appeal 2009003090; Appl. 10/1718,852; Tech. Center 3700
Decided  July 30, 2010

The claims in the application on appeal were directed to a die used with a die cutting system. A representative claim on appeal read:

48. A die for forming patterns from a sheet of material, comprising:
a portable, substantially rigid, substantially planar plate;
at least one cutting edge protruding from a surface of said substantially planar plate.
(Emphasis added.)

Independent claims 48 and 62 both included the "substantially planar plate" limitation. The Examiner rejected claims 48 and 62 as anticipated by Gaspari (plate 11 and cutting edge 14, 14a):

The Applicant appealed and included two arguments about Gaspari. First, the Applicant argued that Gaspari's plate was not "substantially rigid." Second, the Applicant argued that Gaspari's plate was not "substantially planar":

Further, the only die thickness disclosed in Gaspari is a quarter of an inch, which, in view of the relatively small lateral dimensions and rigidity of the disclosed die, could hardly be considered to be "substantially planar."

The Examiner's Answer responded to the Applicant's "substantially planar" argument by offering a definition of "planar" and an explanation of how Gaspari's plate met that definition:

The term "planar" is defined as "Of or relating to a plane; (having parts) situated in or forming a plane or (esp. parallel) planes; flat, two-dimensional" Oxford English Dictionary (definition adj. 1.). However, appellant's die includes a plate with a thickness and a planar surface. Hence, appellant's die is not two-dimensional. The die of Gaspari is relatively flat and contains a planar surface as is in appellant's die. It is noted that the term "planar" is not specifically define to preclude a plate having different thickness than the preferred embodiment set forth in the appellant's written description.

The Applicant responded in the Reply Brief:

[T]he phrase "substantially planar" is intended to signify that the plate portion of each claimed die is very thin, as opposed to the relatively large, 0.17 inch thickness of the die plate that has been disclosed in Gaspari. The as-filed specification, at paragraph [0037], even provides a non-limiting example of a 0.010 inch plate thickness that could be considered to be "substantially planar." Notably, the thickness of the plate described in paragraph 100371 one-seventeenth of the thickness of the plate described in Gaspari.

The Board then found that the Applicant lacked support for a reading of "planar" as "thin":

Appellants' Specification does not provide support for Appellants' proffered definition. For example, the initial line of paragraph [0004] defines a die as a "thin planar plate." In paragraphs [0015] and [0030] the die is defined as a thin, substantially planar plate 62. The use of the word "thin" and the term "substantially planar" in the same description conveys the meaning that these terms are not synonymous but are different descriptors of the claimed die. Furthermore, the description of the die surface 22 as "substantially planar" conveys that the surface, which by definition has no depth, is flat. See Spec. para. [0041].
(Emphasis added.)

The Board therefore adopted the ordinary and customary meaning offered by the Examiner. Under this meaning, "substantially planar plate" read on Gaspari's plate, so the Board affirmed the anticipation rejection.

My two cents: The Applicant was definitely stuck on "planar." All the originally filed claims used the term, the term wasn't amended during prosecution, and the specification consistently used "planar" in referring to the surface.

The Applicant offered no definition to support his interpretation of "planar" as "thin," but instead referred to a "non-limiting example" from the spec. That simply won't do. Non-limiting is, well, non-limiting. If you want the limitation to be interpreted as "thin" then either make sure the word you use connotes "thin" or amend to include "thin."

Maybe the Applicant should have taken advantage of the definition introduced by the Examiner in the Answer, and argued that the proper meaning was "two-dimensional," which sort of connotes "thin." The Examiner didn't think that definition was appropriate ("Applicant's die has a thickness"). And the Board might have chosen the Examiner's "flat" over "two-dimensional."  But I think this would have been a stronger argument.

Finally, why didn't the Applicant argue over the claim term "plate" ?? I don't know what the definition of "plate" is – I'm sure there are many – but that word sure connotes "thin" to me more than "planar" does.

BPAI reverses when Examiner interprets "permanently secured" as "user can choose not to remove"

Takeaway: The BPAI reversed several rejections based on the Examiner's unreasonable interpretation of "permanently secured" as "the user can choose not to remove it". (Ex parte Bivens.)

Details:
Ex parte Bivens
Appeal 2009007955; Appl. No. 10/642,130; Tech. Center 3700
Decided  June 29, 2010

The technology in the application on appeal involved containers for fluids. One of the issues on appeal involved the limitation  "permanently secured" as used in the following claim:

1. An apparatus for containing a fluid, said apparatus comprising:
(a) a body for containing a fluid ...
(b) a vent member being disposed in said body ...
(e) said vent member being permanently secured to said at least one sidewall of said body.

The Examiner issued multiple rejections of each independent claim. In one of the four anticipation rejections, the Examiner explained his interpretation of "permanently secured" as follows:

Goff teaches a bottle having at least an aperture, a vent member (Fig. 3) being a separate member and disposed in the body. The vent member has first and second ends and having fluid passageway for connect the opening. With respect to the vent member being permanently secured to the sidewall. It is noted that the term "permanently secured" is broad. The vent member in Goff is considered permanently secured as claimed, i.e, it can be left permanently in the bottle by the user.
(Emphasis added.)

The Examiner used a similar interpretation in another anticipation rejection, finding that a clip-on vent member as disclosed in the Moser reference "is permanent if left on the bottle by the user."

In the Appeal Brief, the Applicant argued that the Examiner had used an unreasonable interpretation of "permanently secured." With respect to the Goff reference, the Applicant argued:

[T]he spout attachment of Goff is by design removable. In no sense can it be said that a spout attachment that is designed to be removable satisfies the claim limitation that the vent member be permanently secured to the body. There is no evidence whatsoever in the record that "permanent" would be construed by one of ordinary skill in the art to include an element that was designed to be removed.

The Applicant made a similar argument with respect to the Moser reference, noting that Moser did not anticipate because it described a vent device "which can be easily attached to and removed from the bottle."

In the Answer, the Examiner maintained his position and further explained that "the term 'permanent' is broad and does not impart any structure over the attachment taught by Goff, i.e, one can choose to keep the attachment between the bottle and the vent permanently."

On appeal, the Board reversed all the anticipation rejections. In discussing the Goff rejection, the Board found that "Goff's vent has threads defining a removable structure. Thus, Goff's apparatus does not describe a vent member 'permanently secured' to a body as recited in claim 1." In discussing the Moser rejection, the Board found that "Moser's clip-on vent is removable. Thus, Moser does not describe a vent member 'permanently secured' to a body ..."

With respect to the third anticipation rejection (Cox), the Board found that the Examiner had incorrectly treated "permanently secured" as a product-by-process limitation and thus given it no patentable weight.

With respect to the final anticipation rejection, the Board found that the Examiner had made no findings whatsoever as to how the vent in Codorniz was permanently secured, since the only description in Codorniz merely stated that "air supply conduit 14 is mounted with an interior surface of the pouring neck 12."

My two cents: A righteous Examiner smack down. Too bad the Applicant had to wait three years to prevail over sloppy examination.

It wasn't all good news, however. The Board affirmed an obviousness rejection of a dependent claim -- where permanently secured was further limited to welding, which was disclosed by the secondary reference. The Board also entered an obviousness rejection of two of the independent claims, combining two of the references used for anticipation.

The Applicant was left with reversals of two dependent claims, however. So the Applicant should get a patent out of it.

BPAI affirms obviousness based on generic motivation "need for higher performance disk caching methods"

Takeaway: In Ex parte Rau, the Board cited with approval a generic motivation to combine based on a statement in the Background of the secondary reference: "there is a continuing need in the art for new disk caching methods and structures, offering lower overhead and higher performance than is presently possible with known methods and systems." Neither the Examiner nor the Board showed any connection between the higher performance and the particular claimed feature relied on by the examiner. Yet if the claimed feature didn't produce the higher performance – if instead, higher performance was caused by something else – then where is the motivation to combine?

Ex parte Rau
Appeal 2009008251; Serial No. 11/021,707; Tech. Center 2100
Decided June 16, 2011

The technology on appeal related to caching in a computer. A representative claim on appeal read:

     1. A method of updating a data cache having a plurality of rows, the method comprising:
     maintaining a list of the rows, the list including a plurality of entries, each entry corresponding to a row and having a key uniquely identifying the row, and further having a count indicating an age of the row;
     sorting the entries by their key;
     searching the list for an entry having a key to a row to be updated if found or added if not found;
     if the entry having the key to the row to be updated is found:
               removing the entry from the list;
               sorting the remaining entries by their count, so that the entry at the beginning of the list is for the oldest row, and the entry at the end of the list is for the newest row;
               appending a new entry at the end of the list that replaces the removed entry, the new entry having the same key as the removed entry, and a count indicating the corresponding row is the newest; and
              updating the corresponding row in the data cache. 

The Examiner rejected the independent claim as obvious over a combination of two references. According to the Examiner, the primary reference taught all limitations except for the sorting by count and appending at the end of the list. The Examiner relied on a secondary reference for these limitations. As a reason for combining the references, the Examiner offered an explicit motivation in the secondary reference: "there is a continuing need in the art for new disk caching methods and structures, offering lower overhead and higher performance than is presently possible with known methods and systems."

In the Appeal Brief, the Applicant made several arguments: the primary reference did not teach removing the entry when found; no expectation of success in the combination; and teaching away. The Applicant did not contest the motivation to combine.

On appeal, the Board considered each of the Applicant's arguments, and found no error in the Examiner's positions. The Board therefore affirmed the obviousness rejection.

Finally, the Board noted with approval the Examiner's explicit motivation to combine, taken from the secondary reference:

We also agree with the Examiner’s explicit motivation that combining the references would be obvious since “there is a continuing need in the art for new disk caching methods and structures, offering lower overhead and higher performance” (Ans. 6). The Supreme Court has stated that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). 

My two cents: I don't have an opinion on the overall conclusion of obviousness. But I think the Board was completely offbase in using this generic motivation to combine as a grounds for affirmation.

I've seen plenty of cases in which generic motivations – stronger, faster, cheaper – were convincing. Take, for example, an obviousness rejection based on modifying the primary reference to use titanium instead of steel because the secondary reference teaches that titanium is lighter. Sounds pretty convincing because the generic benefit – reduced weight – is directly tied to the modification.

That's not the case here, not by a long shot. First of all, the motivation relied on was in the Background of the reference:

In view of these and other deficiencies associated with prior art methods of implementing a disk cache and replacement strategy, a continuing need exists in the art for new disk caching methods and structures, offering lower overhead and higher performance than is presently possible with known methods and systems.

All the Background section tells me is that a need exists. Strictly speaking, this statement doesn't even tell me that the reference solved the problem. But let's assume a POISTA would interpret this statement as also implying "and we're going to tell you how we solved it".

Even so, this statement doesn't doesn't tell me how the claimed invention in the reference solved the problem. Yet unless the specific teaching relied on in the rejection (here, sorting by count and appending at the end of the list) was the feature that actually produced the benefit (here, higher performance), that teaching can't properly serve as a motivation to combine.

Why should we assume – based on the single statement quoted above – that it was sorting by count and appending at the end of the list that produced higher performance? Maybe sorting by count and appending at the end of the list were already known in the art, and the higher performance was produced by some other feature not relied on by the Examiner. Maybe sorting by count and appending at the end of the list were involved in achieving higher performance, but only in combination with other features.

I'm always suspicious of explicit motivations to combine, because Examiners often take them out of context. References disclose lots of features, and lots of benefits. Don't assume that the cited benefit is actually produced by the feature you're claiming. Read the reference carefully and decide for yourself.

Federal Circuit reverses BPAI finding of analogous art (In re Klein)

Takeaway:
The Federal Circuit doesn't reverse many BPAI decisions, but last week's In re Klein decision reversed all five obviousness rejections. The Federal Circuit based its reversal solely on the Board's findings that five references were analogous art as compared to the claimed invention. The court concluded that none of the Board's findings of analogous art were supported by the evidence, and so remanded the application back to the BPAI for further proceedings.


Details:

In re Klein (Serial No. 10/200,747)
Federal Circuit Docket No. 2010-1411
Decided June 6, 2011

The only independent claim on appeal read:

21. A convenience nectar mixing device for use in preparation of sugar-water nectar for feeding hummingbirds, orioles or butterflies, said device comprising:
     a container that is adapted to receive water,
     receiving means fixed to said container, and
     a divider movably held by said receiving means for forming a compartment within said container,
     wherein said compartment has a volume that is proportionately less than a volume of said container, by a ratio established for the formulation of sugar-water nectar for humming-birds, orioles or butterflies,
     wherein said compartment is adapted to receive sugar, and
     wherein removal of said divider from said receiving means allows mixing of said sugar and water to occur to provide said sugar-water nectar.

The Examiner made five different obviousness rejections. Each rejection relied on a single reference for the container, receiving means and divider, with a statement in the Applicant's background providing the specific sugar-water ratios.

The Board explicitly found, based on a statement in the application background, that the problem addressed by the invention was "making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals." Three of the references were drawers, and the remaining two were bottles. The Board also found that each of the five references disclosed a container with movable dividers "for the purpose of keeping two or more things separate." The Board then summarily concluded that each reference was "reasonably pertinent" to the inventor's problem, and thus each reference did qualify as analogous art.

On appeal to the Federal Circuit, the applicant argued that the Board's findings that the references were "reasonably pertinent" to the inventor's problem were nothing more than conclusory statements, unsupported by evidence.

The Federal Circuit agreed. The first three references were not analogous since:

[t]he purpose of each of Roberts, O’Connor, or Kirkman is to separate solid objects. An inventor considering the problem of “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals,” would not have been motivated to consider any of these references when making his invention, particularly since none of these three references shows a partitioned container that is adapted to receive water or contain it long enough to be able to prepare different ratios in the different compartments.
(Emphasis added.)

The remaining two references involved fluid containers, but were still not analogous because they failed to "address multiple ratios and did not have a "movable divider" as claimed.

My two cents: Don't get too excited and think that the standard for analogous art has been tightened. The reversal here was a result of a single fatal mistake by the BPAI: adopting a narrow problem statement from the background. You simply can't sweep in dividable drawers one you limit yourself to this narrow problem. In fact, you can't even sweep in fluid containers if they don't have movable dividers.

In the Solicitor's Brief to the Federal Circuit, the PTO attempted to fix this deficiency in the Board's decision by arguing that the problem was really a "compartment separation problem." The Federal Circuit said that administrative law prohibited the PTO from changing its position like this.

I have no idea why the Board went with such a narrow problem statement. The Applicant acknowledged, in his BPAI Appeal Brief, a slightly broader version: "making it convenient to prepare a fixed ratio formulation of food or feed".

I'm bothered by the Board's inclusion of moveable dividers into the problem statement. Aren't the moveable dividers part of the solution (to the problem of preparing different ratios), rather than the problem itself?


When formulating the "problem solved" for the purposes of determining analogous art, how much do we look at the claims and how much do we look at the spec? The three specifically recited elements – container, receiving means, and divider  –  are not limited to making nectar for different birds. Maybe the stuff about nectar, birds, sugar, and water are all intended use. In that case, the problem might be something like "prepare different predetermined ratios of solvent and solute" or even "prepare different predetermined ratios of two ingredients".


Another very puzzling aspect of the Board's decision is that they considered only the "pertinent to the inventor's problem" prong of the non-analogous arts test. The Applicant argued that the references were not in the same field as the invention, but the Board completely ignored this prong. [And as a result, the Federal Circuit didn't consider this on appeal.]

Are the references analogous under the "same field" prong? Depends on what the "field" of the invention is. Bird feeders? Animal feeders? Feeders? Containers for liquid? Containers with partitions? Containers with moveable partitions?

BPAI says foreign application can be used in swear behind to show constructive reduction to practice – under some conditions

Takeaway: On appeal, the Applicant argued that a foreign filing could be used to show constructive to practice in a swear behind declaration. The BPAI said that the foreign filing was constructive reduction to practice only if the US filing occurred less than a year after the foreign filing, citing In re Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983). If the US filing took place more than one year after the foreign filing, § 119(a) does not allow the foreign application to be used as constructive reduction to practice.

Details:

Ex parte Saito
Appeal 200805777; Appl. No. 10/800,386; Tech. Center 2800
Decided  December 28, 2008

The technology in the application on appeal related to color bar codes. In the first Office Action, the Examiner rejected the independent claims as being anticipated by Ackley under § 102(e). The Applicant responded by attempting to swear behind Ackley, by showing conception before Ackley's filing date coupled with diligence from conception to the filing of Applicant's provisional (to which priority was claimed).

Specifically, the Applicant submitted evidence of conception in the form of Applicant's corresponding Japanese patent application, and a certified English translation thereof. As for diligence, the inventor's declaration included statements about preparation of the provisional application, spanning the time frame starting immediately before Ackely's filing date up to the filing of the provisional.

The Applicant explained the evidence as follows:

As stated in the Declaration of Takahlro Saito, during the period of time from just before October 18, 1999 to December 15, 1999, Mr. Saito has been working with Mr. Tetsuo Wada of Ehara Patent Office to modify and finalize the specification for the base U.S. provisional application No. 601170,815. Mr. Saito exchanged opinions with Mr. Wada and modified the specification numerous times during that period of time, while both Mr. Saito and Mr. Wada fulfilled other work related duties. Exhibit C is a draft specification dated December 10, 1999, which is a modified version of the disclosure shown in Exhibit A and was finished five days before filing the provisional application No. 601170,815. As shown and evidenced above, Mr. Saito and his patent attorney(s) had worked on the present invention with due diligence from just before October 18, 1999 (the 102(e) date of Ackley) to December 15, 1999 (the date of constructive reduction to practice). 

The Examiner maintained the rejection in a Final Office Action, explaining that the evidence was insufficient to show diligence. Specifically, the Examiner indicated that:

The evidence submitted is insufficient to establish diligence from a date prior to the date of reduction to practice of the Ackley reference to either a constructive reduction to practice or an actual reduction to practice since the applicant's statements are vague as to diligence. For example, applicant states on page 1, paragraph 4 of the declaration filed 4 April 2005, "As far as I can recall" and "We exchanged opinions.. ." which are not concrete declarations of an established diligence since applicant is not sure when he says "As far as I can recall" and does not pinpoint specific conversations during a 2 year time period when it is stated that "We exchanged opinions ... while both fulfill other work-related duties".

The Applicant filed an After Final Response which included another swear-behind declaration. Like the first one, the second swear-behind declaration referenced the corresponding Japanese patent application. However, the second swear-behind did not include statements about, or evidence of, diligence. Instead, the Response asserted that the Japanese patent application was evidence of constructive reduction to practice before the critical date.

In the Advisory Action, the Examiner indicated that the second declaration was still ineffective to remove the Ackely reference. The Examiner took the position that filing of the Japanese application was only evidence of conception, and that diligence must be shown from the time of conception until the time of the US filing (almost a two year period). The Applicant then filed a Notice of Appeal.

In the Appeal Brief, the Applicant argued that Arkley was not prior art because the inventor "constructively reduced the claimed invention of the present application to practice by filing in Japan on November 28, 1997 before the § 102(e) date of Ackley." The Applicant also noted that although the Japanese application did publish, this was not a § 102(b) bar since the US provisional was filed less than one year before the publication.

The Examiner's Answer maintained that Arkley was prior art. The Examiner interpreted the Applicant's reference to the Japanese filing as reliance on a foreign priority date. The Examiner then cited Stevens v. Tamai (Fed. Cir 2004) for the rule that Section 119(a) prohibits reliance on a foreign filing for priority when the foreign filing is more than a year before the US filing, as was the case here. The Examiner further explained:

Appellant apparently mis-interpreted the statute to allow asserting priority benefit of the filing date of a foreign application if a later filed provisional was filed within one year of the filing date of the foreign application. This is not a proper interpretation of section 119(a) since 119(a) is available for an application for a patent and not for a provisional application which is not an application for patent.

According to the Examiner, the § 119(a) prohibition against relying on the foreign filing more than a year earlier had the following effect:

[T]he affidavit may at best be sufficient to show conception as of the applicant's foreign filing date of November 28, 1997 but is not adequate to establish constructive reduction to practice. As such, in order to disqualify Ackley as a 102(e) reference, diligence must be shown from the date of conception to the filing date of the Ackley reference. ... Due to a lack of claimed diligence, the arguments are not persuasive.

The Board decision first focused on "reduction to practice" in the first prong of § 1.131(b):

Thus, under the first prong of 37 C.F.R. § 1.131(b), Appellant has to establish reduction to practice prior to the effective date of the 102 (e) reference. Appellant’s declaration and arguments assume that to show reduction to practice as encompassed by “filing of the application” recited in 37 C.F.R. § 1.131(b) includes filing an application for the same invention in a foreign country.

The Board found that the Applicant had not established reduction to practice. The Japanese filing did not qualify as constructive reduction to practice per se because the phrase "the application" in § 1.131(b) refers to a US application, not to a foreign application. The case law nonetheless allows constructive reduction to practice through a foreign filing – but only if that foreign filing met the requirements of § 119(a). (See In re Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983)). But here the Applicant waited more than a year after the Japanese filing to file the US provisional application, and thus did not comply with § 119(a).

Having found no reduction to practice under the first prong of § 1.131(b), the Board turned to the second prong, which requires conception plus diligence. The Board acknowledged that the Japanese filing might be enough to show conception. However, the Board summarily stated that the Applicant had not provided "sufficient evidence" of due diligence during the required period (one day before the reference filing date to the filing of the Applicant's provisional). Therefore, the reference was not disqualified as prior art, and the prior art rejections were affirmed.

My two cents: The Applicant made a mistake in not making an argument on diligence using the originally submitted declaration. The Examiner said the diligence period was 2 years but the correct period was only 2 months. It's true that conception before the reference date must be shown. But the diligence period does not start at conception. The diligence period instead starts immediately before the reference date. (MPEP 715.07.) That is, unexplained gaps between conception and the reference date are allowed – just not unexpected gaps between the reference date and reduction to practice (actual or constructive).

Since the earlier "diligence" declaration was already in the record, the Applicant should have argued conception plus diligence as an alternative to the argument made (constructive reduction to practice).
Instead, the Applicant based the entire appeal on a statutory interpretation that was either creative, strained, or misguided.

The decision doesn't discuss the diligence evidence at all. So I can't tell if the Board didn't evaluate diligence (because no arguments were made on appeal) or evaluated it and found it lacking.

I wondered at first why the Board even brought up the point that a foreign filing can be used to show constructive reduction to practice, as long as the filing meets § 119(a). After all, if you meet § 119(a), you can go with a straight claim to foreign priority, in which case you don't need a swear behind. After reading the fine print in the decision, it appears to me that constructive reduction through a foreign filing could be useful if you forget to claim priority and it's too late to fix the priority claim through a petition.

BPAI reminder that silence in one reference as to what another teaches is not "teaching away"

Takeaway: In Ex parte Greve, the Applicant presented technical reasons why a POSITA would not combine the references. The Applicant concluded the argument by explaining that because the reference didn't mention a claimed feature, a POSITA would understand that the feature should be avoided. "Therefore, Gross et al. clearly teaches away from the presently claimed invention." The Board affirmed the obviousness rejection, stating that "silence in one reference as to what another teaches is not 'teaching away'. "

Details:
Ex parte Greve
Appeal 2010002433; Appl. No. 10/984,628; Tech. Center 1600
Decided April 4, 2011

The claims on appeal were directed to a drug for treating rhinitis or inflammation of the nasal cavity. A representative claim on appeal read:

18. A pharmaceutical composition for the curative topical treatment of rhinitis, comprising in combination and in each case based on the pharmaceutical composition
     (a) 0.001 to 1% by weight of at least one sympathomimetic selected from the group consisting of oxymetazoline hydrochloride and xylometazoline hydrochloride;
     (b) 0.01 to 5 % by weight of hyaluronic acid in the form of its physiologically acceptable salts; and
     (c) 0.01 to 15 % by weight of at least one of pantothenol or its esters and/or pantothenic acid or its physiologically acceptable salts,
     wherein the pharmaceutical composition is formulated as a solution, a dispersion, a paste, a spray, an ointment, a cream or a gel.

The Examiner rejected as obvious over a combination of three references.The Examiner found that Greve taught a composition including (c) and a sympathomimetic in the claimed range, though not one of the two specific compounds named in (a). Moreover,  Castellano taught a composition including (b) and one of the specific compounds named in (a). Furthermore, Gross taught (c) and (b). Finally, each of the compositions found in the references was described as a treatment for rhinitis or a rhinological condition. 

The Examiner found that the references themselves provided the motivation to combine:

The skilled artisan would have been motivated to do so with an expectation of success because Gross et al. teach a synergistic effect with the combination of pantothenic acid [c] and hyaluronate [b] for the treatment of rhinitis; Greve et al. teach a synergistic effect with the combination of a sympathomimetic [a] and pantothenic acid [c] for the treatment of rhinitis; and Castellano et al. teach a combination of a sympathomimetic [a] and hyaluronic acid [b] for the treatment of rhinitis.

During prosecution, the Applicant argued that:

[T]he prior art documents do not teach the use of the compositions described therein each for the same purpose. Rather, each reference has its own technical solution for its own specific object, each being readily distinguishable and different, respectively, from the others. Thus, it is not believed to be obvious in any way that the ordinarily skilled person would take a combination of these documents into consideration in coming up with the present claims.

The Applicant buttressed this argument by submitting an expert declaration which explained why a POSITA would not modify Gross to add sympathomimetic [a] (the compound missing from Gross).

The specific use of a sympathomimetic would be even disadvantageous with respect to the treatment of ophthalmological malfunctions especially since this reference [Gross] focuses on the treatment of the so-called "dry eye" which is linked to disturbances to wetting of the cornea and conjunctiva of the eye. Furthemore, this document also deals with the treatment of dry mucous membrane of the nose. Thus, the use of a sympathomimetic would strongly counteract these treatments since sympathomimetics as such even enhance the drying out of tissues treated therewith. Thus, it is absolutely clear to the skilled practitioner to explicitly avoid the addition of a vasoconstrictor with respect to the teaching of this reference. Consequently, the skilled practitioner would never consider this reference with
respect to the claimed invention.

The Applicant reiterated this same argument on appeal, concluding with:

To bring this clearly to the point, if the addition of a vasoconstrictor [such as a sympathomimetic] would be evident with respect to why is the complete document silent to do so? The answer for this is quite simple. The use of a vasoconstricting agent is to be completely avoided in Gross al. since it would even intensify the drying out. Therefore, Gross et al. clearly teach away from the present claimed invention as is and would be consequently not considered relevant or obvious by the ordinarily skilled person in the way alleged by the Examiner in this Action.
(Emphasis added.)

The Board found the "teaching away" argument was misplaced:

The fact that one reference is silent as to what another reference teaches is not a “teaching away” within the meaning of 35 U.S.C. § 103(a). See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any … alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.…”).

The expert declaration also asserted that the claimed ternary composition provided unexpected results:

[T]he surprisingly found  synergism is mainly based on the fact that the combination of the hyaluronic acid, on the one hand, and the pantothenol and/or pantothenic acid component, on the other hand, leads to a significant diminishing of the side-effects induced by the vasoconstrictor [such as a sympathomimetic].  

However, the Board found the evidence to be unpersuasive:

Dr. Greve provides no evidence that the result is “unexpected.” See In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) (“[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference”). Dr. Greve does not provide, either in the Declaration or in the Specification, a comparison of the results of the ternary composition with the closest prior art with a showing of an actual difference other than an asserted “synergistic effect” (see Greve Dec. 4 ¶ 7; Spec. 13-14). See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”).

My two cents: I don't do chemical cases, but the Board's comment about teaching away caught my eye.

The Board appeared to ignore reasons why a POSITA would not combine the references – reasons presented in the form of expert evidence -- simply because the Applicant mischaracterized this as "teaching away." The Board should have instead weighed the expert evidence (pointing away from a combination) against the teachings of the references themselves (pointing toward a combination) to decide on obviousness/non-obviousness.

This case highlights the danger of improperly characterizing arguments. The Board should have looked beyond the label the Applicant put on the argument – but you should make their job easy, not hard.