Recent Federal Circuit decisions reversing or remanding PTAB holdings of obviousness have faulted the Board for failing to clearly articulate its reasoning. See our previous posts here and here. In In re Stepan Co., No. 2016-1811 (Fed. Cir. Aug. 25, 2017), a split CAFC panel vacated a PTAB ex parte appeal decision affirming an obviousness rejection based on “routine optimization” for failing to explain why one of ordinary skill would arrive at the claimed subject matter.

The claims of Stepan’s U.S. Patent Application No. 12/456,567 are directed to herbicide compositions defined, in part, by weight percentage ranges of particular surfactants and a physical characteristic, having a “cloud point” above at least 70o C (i.e., the solution becomes cloudy due to surfactant insolubility above 70o C). The claims were finally rejected for obviousness over a single prior art reference that discloses various surfactants present in ranges that overlap those recited in the claims, and teaches that the ideal cloud point for the composition should be above 60o C. The examiner concluded, and the PTAB agreed, that one of ordinary skill would have been motivated to adjust the teachings of the cited reference to arrive at the claimed subject matter by routine optimization.

The court vacated the decision 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.” The PTAB erred by failing to explain why it would have been routine optimization to select and adjust the claimed components and achieve the recited cloud point; merely stating that one of ordinary skill would have arrived at the invention through routine optimization is insufficient. The Board further failed to articulate why one of ordinary skill in the art would have had a reasonable expectation of success. The appellant pointed to failures to achieve the recited cloud point that were described in the reference. The PTAB disregarded the appellant’s argument because the failures did not include the specific components recited in the claims. On appeal, however, the court determined that the failures are relevant to whether a skilled artisan would have had a reasonable expectation of success to achieve the recited cloud point. The court concluded that the PTAB did not establish a prima facie case of obviousness.

To have a reasonable expectation of success, one must be motivated to do more than merely to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.

Judge Lourie dissented, stating that the cloud point feature is not a component of the claimed composition, but merely a result or property which “does not make a claim to what is essentially disclosed by the prior art nonobvious.” In contrast, the majority treated this feature as “limit[ing] and defin[ing] the scope of what surfactant combinations satisfy the claimed composition.” Interestingly, the dissent also suggested that a finding of a reasonable expectation of success is not required when obviousness is based on a single prior art reference, citing In re Ethicon, Inc., 844 F.3d 1344 (Fed. Cir. 2017). The majority countered that what is required to establish a prima facie case of obviousness does not differ based on the number of references, but presented no further comment on the issue.

The decision offers a few suggestions for practitioners faced with the dreaded “routine optimization” rationale for obviousness. An assertion that one of ordinary skill would or could have arrived at a claimed invention through “routine optimization” is not sufficient. Some “rational underpinning explaining why a person of ordinary skill in the art would have arrived at the claimed invention” is required. Further, failures in the art to arrive at the claimed invention should not be disregarded for failing to exactly mirror the claims. Such failures are probative of whether a reasonable expectation of success was present at the relevant time, a requirement for establishing a prima facie case of obviousness regardless of the number of references relied upon.