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The oral argument of the day is from In re Stepan. The appeal in this case dealt with whether one could assert that it is merely routine optimization to modify a single reference in a §103 rejection in the unpredictable arts. There was a split decision with Judges Moore and O’Malley in the majority and Judge Lourie in the dissent.

One interesting quote from the majority decision was:

 Because the Board failed to adequately articulate its reasoning, erroneously rejected relevant evidence of nonobviousness, and improperly shifted to Stepan the burden of proving patentability, we vacate the Board’s decision that claims 1-31 of the ‘567 application would have been obvious.

The Board failed to explain why it would have been “routine optimization” to select and adjust the claimed surfactants and achieve a cloud point above at least 70°C. See J.A. 8-9. “The agency tribunal must make findings of relevant facts, and present its reasoning in sufficient detail that the court may conduct meaningful review of the agency action.” In re Lee, 277 F.3d 1338, 1346 (Fed. Cir. 2002). Stating that a person of ordinary skill in the art would have arrived at the claimed invention through routine optimization falls short of this standard. Missing from the Board’s analysis is an explanation as to why it would have been routine optimization to arrive at the claimed invention. Similar to cases in which the Board found claimed inventions would have been “intuitive” or “common sense,” the Board 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. See, e.g., Van Os, 844 F.3d at 1361 (“Absent some articulated rationale, a finding that a combination of prior art would have been `common sense’ or `intuitive’ is no different than merely stating the combination `would have been obvious.'”); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016) (“[R]eferences to `common sense’ … cannot be used as a wholesale substitute for reasoned analysis and evidentiary support….”). Absent some additional reasoning, the Board’s finding that a skilled artisan would have arrived at the claimed invention through routine optimization is insufficient to support a conclusion of obviousness.

In re Stepan Co., 868 F.3d 1342, 1346 (Fed. Cir. 2017).

You can listen to the oral argument here:

I had to chuckle that after the appeal was returned to the Board and remanded to the Examiner, the Examiner relied upon a new single reference and made this statement:

The Applicant eventually had to file a second appeal to the Board before modified claims were allowed.

You can review the subsequent file history here: Link.

In the second appeal decision, the Board wrote:

The Federal Circuit overruled the Rosen-reference test today with respect to design patents. The Rosen-reference test utilized a “primary” reference for obviousness analysis. In some oral arguments concerning utility patents, I think some of the younger Federal Circuit judges have infused “primary reference” into oral arguments when informally discussing utility patent obviousness. That always alarmed me, as it seemed improper. Today, however, I saw this quote from Judge Rich:

In a case of this type where a rejection is predicated on two references each containing pertinent disclosure which has been pointed out to the applicant, we deem it to be of no significance, but merely a matter of exposition, that the rejection is stated to be on A in view of B instead of on B in view of A, or to term one reference primary and the other secondary. It would perhaps have saved much argument of the kind we have before us if the Patent Office had stayed with its rejection of the claims as unpatentable over A and B “considered together” and had merely stated its reasons for such rejection without formal alinement of the references. Fifteen years ago this court pointed out in In re Cowles, 156 F.2d 551, 554, 33 CCPA 1236, that such differing forms of expression did not constitute different grounds of rejection, were of little consequence, and that basing arguments on them was “attempting to make a mountain out of a mole-hill.”

Application of Bush, 296 F.2d 491, 496 (C.C.P.A. 1961).

Don’t forget that you can increase the playback speed in order to decrease the time it takes to listen to an oral argument recording.

I saw this invention mentioned in a news story today. Just thought it was kinda cool.