Over a number of years, the Federal Circuit has stated the conditions for an obviousness rejection: the cited references must teach or suggest all the limitations of the claim, there must be a reason to combine the references, and there must be a reasonable expectation of success in the combination. In KSR Int’l Co. v. Teleflex Inc., the Supreme Court moved away from the rigid teaching-suggestion-motivation test, and provided an expansive and flexible approach for the reason to combine references. However, in the same case, the Court also stated the need for a detailed explanation of the reason to combine. Over the last year, the Federal Circuit, in a number of decisions, has stated the need for a detailed, reasoned explanation of the reason to combine. The detailed, reasoned explanation presented by the Board (or the examiner) has to be supported by substantial evidence, which is not a very high standard. (Defined in Blue Calypso, LLC v. Groupon, Inc., substantial evidence is “such relevant evidence [that] a reasonable mind might accept as adequate to support a conclusion.”)

In a recent Federal Circuit opinion, In re Stepan Company, the Court finds that the motivation to combine and the finding of a reasonable expectation of success are not supported by substantial evidence. (Click here to read the full opinion.) The reasons for the motivation to combine could be arrived at on remand following the arguments of the United States Patent and Trademark Office counsel. The decision that the finding of a reasonable expectation of success is not supported by substantial evidence is one that I find of interest, in that it provides some guidance that can be used in patent prosecution and litigation.

The patent application, in this case, is directed to herbicidal formulations containing glyphosate salt with a surfactant system. According to the specification, “[t]he present invention is based on the unexpected discovery that surfactant systems comprising dialkoxylated alkylamine, water miscible solubilizer and amine oxide allow for formulation of ultra-high loaded (‘high-strength’) glyphosate salt concentrates possessing high or no cloud points.” The claims recite that the cloud point above at least 70ºC. (As defined in the Stepan opinion, a cloud point is “the temperature at which a solution becomes cloudy due to the surfactants becoming insoluble and separating into layers.”).

The examiner rejected most of the claims as being obvious in view of U.S. Pub. No. 2003/0087764, titled “Stable Liquid Pesticide Compositions” (hereinafter referred to as “Pallas”), which provides 153 examples. The examiner stated that “it is routine optimization to select and adjust the surfactants to this range since Pallas teaches the surfactant component comprises any combination of surfactants.” The Patent Trial and Appeal Board upheld the examiner's rejection.

The Board stated that one skilled in the art would have had a reasonable expectation of success, since “Pallas teaches the surfactant component comprises any combination of surfactants” and “teaches the ideal cloud point should be above 60[°C].” However, as shown by Stepan, “none of the examples in Pallas include all three of the claimed surfactants and that the closest examples failed to achieve a cloud point above at least 70°C.”

The present case differs from the situation where there are a small number of options that would be obvious for one skilled in the art to try (as stated in KSR). In contrast, for the matter of the patent application in question, Pallas had provided 153 examples, indicating that a large number of options were available. The Federal Circuit Court cited their previous opinions, stating that “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” (citing Pfizer, Inc. v. Apotex, Inc., and quoting Medichem, S.A. v. Rolabo, S.L.).

The In re Stepan Company opinion provides a good example of the requirement of a reasonable expectation of success that has to be provided by the combination of the references asserted in an obviousness argument or rejection.