Whither The CCPA? Hindsight Is 20/20: Examining CCPA Decisions And Their Continued Importance In Modern Obviousness Inquiries

Introduction

In United States patent law, a patent may not be obtained on a claimed invention if the differences between the claimed invention and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the pertinent art at the pertinent time. 35 U.S.C. § 103. Section 103 establishes obviousness as a legal inquiry with factual underpinnings including: (1) the scope and content of the prior art; (2) differences between the prior art and the claims at issue; and (3) the level of ordinary skill in the pertinent art. Graham v. John Deere Co., 383 U.S. 1, 18 (1966). Secondary considerations such as "commercial success, long felt but unsolved needs, failures of others, etc. . . . may have relevancy" in the obviousness or nonobviousness inquiry. Id. at 18−19; see also KSR Intern. Co. v. Telefex, Inc., 550 U.S. 398, 401 (2009) (affirming the Graham analysis and the secondary considerations inquiry for obviousness).

While modern case law continues to expand our understanding of obviousness, it is important to consider early United States Court of Customs and Patent Appeals ("CCPA") cases, and how these decisions shaped and continue to influence current patent law jurisprudence. CCPA cases are still found regularly throughout the Manual of Patent Examining Procedure ("MPEP"), revealing these cases still provide a solid foundation of jurisprudence in patent law. This article summarizes key CCPA decisions that continue to hold merit and remain binding precedent that should be considered when strategizing for obviousness and nonobviousness inquiries.¹

Case Summaries

In re Papesch, 315 F.2d 381 (C.C.P.A. 1963)

In In re Papesch, the Board affirmed the examiner's obviousness rejection of claims to a compound that was structurally similar to a prior art compound. The claimed compound differed by only three -CH₂groups, and it was presumed these compounds shared many common properties. The CCPA reversed the Patent Office's obviousness finding, citing evidence of record showing that the representative compound possessed unexpected anti-inflammatory properties that were not possessed by the prior art compound. The Court held that, from the standpoint of patent law, "a compound and all of its properties are inseparable; they are one and the same thing." In re Papesch, 315 F.2d at 391; see also In re Antonie, 559 F.2d 618, 619 (CCPA 1977) (holding that "[j]ust as we look to a chemical and its properties when we examine the obviousness of a composition of matter claim, it is this invention as a whole, and not some part of it, which must be obvious under 35 U.S.C. 103.") (emphasis in original). A finding of obviousness thus depends on comparing old and new compounds as a whole, including their properties. Id. Further, the Court stated a simple, but enduring proposition: "If that which appears, at first blush, to be obvious though new is shown by evidence not to be obvious, then the evidence prevails over surmise or unsupported contention and a rejection based on obviousness must fall." Id. at 386−87.

In re Albrecht, 514 F.2d 1389 (C.C.P.A. 1975)

In In re Albrecht, the Board affirmed an obviousness rejection of claims for esters and amides of carbazole over structurally similar prior art compounds that possessed anesthetic properties, despite the claimed compounds' possessing an unexpected antiviral activity. The CCPA reversed the Patent Office's obviousness finding, noting that "the discovery of new and unobvious properties in the claimed compounds rebuts even a prima facie case of obviousness where the art is silent on that property or the prior art is shown not to possess that property." In re Albrecht, 514 F.2d at 1394 (quoting In re Papesch) (emphasis added). Here, the "additional advantageous activity disclosed for the claimed compounds, namely antiviral activity, is not in fact possessed by the prior art analog . . . [and] is itself evidence of the nonobviousness of the subject matter as a whole." Id. at 1396. In re Albrecht is specifically cited in the MPEP for the proposition that the "lack of any known useful properties weighs against a finding of motivation to make or select a species or subgenus." MPEP § 2144.08(II)(A)(4)(d); see also MPEP § 2144.09(VI), MPEP § 2145. As the prior art compound irritated the skin—making it not useful for the disclosed anesthetic purpose—a person skilled in the art would not have been motivated to make related compounds.

In re May, 574 F.2d 1082 (C.C.P.A. 1978)

In In re May, the Board affirmed an obviousness rejection of composition and method-of-use claims involving N-methyl benzomorphans with expected analgesic potency, notwithstanding their unexpected non-addictiveness. The CCPA reversed the Patent Office's obviousness finding in view of the "inescapable conclusion that it was totally unexpected" for the compound to have analgesic potency combined with a nonaddictive nature of the compound was sufficient to overcome the obviousness rejection. 574 F.2d at 1092. The MPEP specifically cites In re May for the proposition that "[e]vidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention." MPEP § 716.02(c).

In re Rinehart, 531 F.2d 1048 (C.C.P.A. 1976)

In In re Rinehart, the Board affirmed the examiner's obviousness rejection of a claimed process for preparing resin on a commercial scale. The CCPA reversed the Patent Office's obviousness finding, noting that there was "nothing in the record which would lead one of ordinary skill to anticipate successful production on a commercial scale from a combination of such elements . . . [t]he view that success would have been 'inherent' cannot, in this case, substitute for a showing of reasonable expectation of success." 531 F.2d at 1054. In re Rinehart is specifically cited in the MPEP for the proposition that "obviousness does not require absolute predictability, however, at least some degree of predictability is required. Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness." MPEP § 2143.02 II. The Court in In re Rinehart found that the Board was unable to establish some degree of predictability of success for arriving at the claimed process based on the prior art.

Further, the Court clarified that when a prima facie case of obviousness is established and is then rebutted, the decision-maker must begin anew. The prior decision cannot be considered "concrete," with the applicant's rebuttal evidence only evaluated on its "knockdown ability." In re Rinehart, 531 F.2d at 1052. Rather, the tribunal must start over, and the evaluation of all of the facts in evidence must be "uninfluenced by an earlier conclusion reached by an earlier board upon a different record." Id. Thus, all evidence must be considered with fresh eyes before a final finding of obviousness can be made.

In re Oelrich, 579 F.2d 86 (C.C.P.A. 1978)

In In re Oelrich, the Board affirmed a rejection of obviousness of claims directed to a fin control mechanism using sub-critical frequencies. The Board based its conclusion on the basis that specific choices made to optimize the system performance were "a mere choice in design" and that the expert testimony failed to establish that a person of ordinary skill in the art considered the sub-critical frequency operation to not be possible. 579 F.2d at 89−90. The CCPA reversed this finding. As the Court pointed out, "the question under s 103, however, is not whether one skilled in the art doing what appellants did would have discovered what appellants discovered, but whether it would have been obvious to one of ordinary skill in the art to do what appellants did." Id. at 92 (citing In re Lemin, 364 F.2d 864 (CCPA 1966)). Thus, the Court was guarding against the use of hindsight when performing an obviousness analysis, which is also prohibited in modern-day obviousness inquiries.

Conclusion

The cases discussed above only scratch the surface of CCPA precedence regarding obviousness in United States patent law. It is important to remember that CCPA cases provided a foundation on which the obviousness inquiry could grow, and they continue to provide useful analyses and arguments to use in modern patent law practice. The CCPA may be gone—but the Court and its decisions should not be forgotten.

Footnote

1. Between 1963 and 1982, the CCPA issued multiple decisions concerning obviousness. The vast majority of these decision have not been overruled by the CCPA or overturned by an en banc Court of Appeals for the Federal Circuit ("CAFC") and thus remain binding precedent. See South Corp. v. U.S., 690 F.2d 1368, 1369 (Fed. Cir. 1982). Notably, many involved appeals from ex parte prosecution and are cited in the MPEP and, therefore, may be especially useful in responding to examiner rejections.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.