Summary: CAFC reverses rejection of patent application as anticipated and obvious and remands for further proceedings.

Case: In re Kevin P. Eaton, No. 2013-1104 (Fed. Cir. Nov. 22, 2013) (non-precedential). On appeal from PTAB in Serial No. 11/145,716 . Before Rader, Lourie, and Moore (per curiam).

Procedural Posture: Patent applicant appealed from the decision of the Patent Trial and Appeal Board rejecting claims as anticipated and obvious. CAFC reversed and remanded.

  • Anticipation: The PTAB’s rejection turned on the meaning of the claim limitation “essentially free of antioxidants” in a composition aimed to treat psoriasis. The PTAB correctly construed the term to require that the amount of antioxidant “would not render the vitamin composition of the present invention ineffective or of reduced effectiveness.” This construction meant that “lower amounts” of antioxidants may be present, but the effectiveness of the composition must not be reduced. The prior art did not meet the “essentially free of antioxidants” limitation because it did not disclose compositions whose effectiveness was not reduced at all due to the presence of the antioxidants. Hence, the Federal Circuit reversed the finding of anticipation, and remanded for further proceedings.
  • Obviousness: The PTAB’s reasoning on the obviousness question did not provide a rationale for adjusting the concentrations of antioxidants in the prior art to be “essentially free of antioxidants.” The patent application specifically teaches that Vitamin C is the antioxidant to be especially avoided, and the prior art relied upon discloses use of a lot of Vitamin C. The Federal Circuit did not find any evidence on the record that would establish a motivation to modify prior art (e.g., by changing or reducing antioxidants), which specifically disclosed antioxidants as a necessary part of the disclosed compound. Accordingly, the Federal Circuit reversed the obviousness determination and remanded for further proceedings.