THAT WAS UNEXPECTEDLY…WELL…EXPECTED

In Ex Parte Akio Ochiai, Masakikosuge, and Takao Daicho, Appeal 2010-001367 decided February 14, 2011, the Board of Patent Appeals and Interferences (BPAI) affirmed an Examiner’s obviousness rejection of the claims of the application because the Appellants failed to show specific evidence that an ordinary artisan would not have attempted to use individual compounds described in the prior art in the manner claimed in the application with a reasonable expectation of success.

It is now well established that when a claim simply arranges old elements that each perform a known function, yielding no more than one would expect, the combination is obvious to a person skilled in the art. In other words, combining two compositions each known to be useful for the same purpose to form a third composition used for the very same purpose, is prima facie obvious since the idea of combining the compositions flows logically from their individual properties. However, evidence of an unexpected result of a substantially superior property of the combination can be used to show unexpected results compared to the closest prior art.

In this appeal proceeding, the claims involved a health food product having curcumin, scymnol, and isoflavones, which were individually described in the prior art as useful for treating hyperlipidemia and atherosclerosis.
In rejecting the claims as obvious, the examiner found that the substances were used “in compositions to treat hyperlipidemia and atherosclerosis, [so] an artisan of ordinary skill would have reasonable expectation that a combination of the substances would also be useful in creating compositions to treat hyperlipidemia and atherosclerosis.” The examiner thus found that the invention only combined old ingredients of known properties and the results obtained were merely the additive effect of the ingredients.

The applicants argued that there was no motivation for a skilled person to have combined the known components of the prior art with any reasonable expectation of success, contending that there are hundreds of atherosclerosis-treating compounds to choose from and picking random compounds could even result in competing or canceling effects, with possible inherent dangers in combining compounds. Although the appellants offered additional evidence of non-obviousness through declarations, the declarations only established the benefits of the proposed combination of curcumin, scymnol, and isoflavones, and not an unexpected result, according to the BPAI.

As could be expected, the BPAI held that an ordinary artisan would have been prompted to combine the ingredients disclosed in the prior art with the reasonable expectation of producing a food composition suitable for treating and/or preventing atherosclerosis, since the prior art references explicitly taught that the claimed ingredients would have been useful for that treatment. In dismissing the appellants’ contention that the proposed combination was unexpected or unpredictable, the BPAI appeared to focus on the fact that the appellants did not “advance” sufficient evidence of unexpected results to overcome the examiner’s prima facie case. In other words, the appellants failed to provide clear or specific comparative data or evidence supporting their argument.

Thus, when relying on an argument of an unexpected or unpredictable result to overcome an obviousness type rejection, providing solid comparative data or evidence in support of the argument remains to be important.

Read/download the decision here

Prepared by Thomas Lee