OBVIOUSNESS OF COMBINING EQUIVALENTS TOGETHER FOR SAME KNOWN PURPOSE - Patent law

As a general matter, it is within the realm of one of ordinary skill in the art to combine compounds, compositions, materials, etc., where those compounds are known for the same purpose. The motivation and expectation are that the combination will be similarly useful in the additive sense. This is clearly laid out in In re Crockett, resulting from an appeal of claims rejected by the USPTO. The claims in question we redirected to methods and materials related to the casting of steel. The composition claim 96 is reproduced below.
A treating material for injection into molten gray cast iron to produce upgrade or nodular gray cast iron products and which comprises essentially a major proportion of finely-divided calcium carbide in admixture with a minor proportion of a finely-dividednodulizing agent selected from the group consisting of magnesium oxide and rare earth oxides.
The USPTO rejected the claim and cited three references in the rejection. The three references were patents that the Board of Appeals in the USPTO referred to as Morrogh I, II, and III. While Morrogh I is not relevant to the discussion of claim 96,Morrogh II disclosed a process for casting steel by which magnesium oxide is added to the molten steel before casting. Morrogh III describes a similar process by which a stream containing calcium carbide is injected into molten iron before casting. The subject matter and teaching of the instant application was directed toward processes and a composition useful in making cast steel where magnesium oxide and calcium carbide (or a rare earth oxide) are added together to molten steel before casting.In Morrogh II, the use of magnesium oxide is described and taught as promotinga desired nodular structure to the cast iron. In Morrogh III, calcium carbide is also described for accomplishing the same purpose. What is different about the claimed composition is that it would require both materials and also, that those materials would be present together in the composition so as to be suitable for adding to the molten steel at the same time. The court upheld the obviousness rejection of this claim, finding that it would have been “obvious to use these two materials together in the production of nodular cast iron. The combining of additives is an old expedient.”
In this case, the two additives were both known to be useful for the same purpose and so the motivation would be to simply provide a material useful for achieving the same result as either one of the individual ingredients by itself.
Of course, we are speaking of prima facie obviousness rebuttal a showing of any of the secondary considerations of obviousness. Unexpected results could come,for example, if a synergistic rather than an additive effect occurred. Alternatively, the abolition or even diminution of one or more undesired characteristics of the separate components might also be persuasive evidence of non obviousness. Furthermore,each and every claim limitation must also be considered, especially where the claim language itself requires combination performance that exceeds the prediction of merely additive. Unexpected results from combinations of ingredients useful for the same purposes has been addressed in a recent case, Knoll Pharmaceutical Co., Inc.et al. v. Teva Pharmaceuticals USA, Inc.122 The defendant in this decision was Teva,a drug manufacturer that was trying to launch a generic version of Knoll’s FDAapproved painkiller, Vicoprofen_R . The form of drug in suit was a tablet containing two analgesics, hydrocodone bitartrate (7.5 mg) and ibuprofen (200 mg). In the District Court, summary judgment was issued against Knoll Pharmaceutical, finding that all six claims of its U.S. patent 4,587,252 were invalid for obviousness. To appreciate the subject matter of the invention, claim1, which is a process of treatment(interchangeable in name with a method of treatment claim), and the composition claim 4 have been selected for illustration. As you read them, pay special attention to the claim limitations (particularly “a greater analgesic effect”) in regard to considering secondary evidence of non obviousness.

In finding the claims invalid for obviousness on summary judgment, the District Court had held:
The prior art expressly teaches one of ordinary skill in the art to combine an opioid with an NSAID. Furthermore, based on the prior art, a person of ordinary skill in the art of pain management would have had a reasonable expectation of success in combining hydrocodone, a narcotic analgesic, with ibuprofen, an NSAID.On appeal, the CAFC acknowledged that the prior art did “appear(s) to suggest combining an opioid, such as hydrocodone,with various NSAIDs, such as ibuprofen’”but a genuine factual dispute still existed because there was no evidence that the priorart taught or suggested an enhanced biological effect for the combination. For claim1,this is important because the enhanced effect is actually one of the required elements of the claim, and of course, the prior art together with ordinary skills must teach or suggest each of the claimed elements. For claim 4, which does not have that explicit limitation of an enhanced effect, there still exists the right to present secondary evidence that the combination demonstrated surprising or unexpected results. In this regard, Knoll submitted to the CAFC clinical evidence demonstrating the synergistic effect of ibuprofen when combined with hydrocod one for both pain control and enhanced muscle repair. These secondary considerations were sufficient for the CAFC to reverse the summary judgment of the District Court.


All rights reserved © 2018 Wisdom IT Services India Pvt. Ltd DMCA.com Protection Status

Patent law Topics