PRIOR ART AS A WHOLE MUST BE CONSIDERED FOR TSM TESTS - Patent law

Recall from our introductory obviousness discussion that the obviousness analysis must be based on the subject matter as a whole. Accordingly, it should not be surprising that the components of our obviousness inquiry, such as motivation, must also be examined on the basis of the subject matter as a whole. Thus it would be improper to consider only references or portions of references that support motivation for makinga modification and / or combination while ignoring additional portions or references that might conflict with those references or portions of references. One category where this can occur is where a reference actually teaches away from making the particular modification or combination. In a recent case, Ecolochem, Inc. v. Southern California Edison Company the CAFC supported a finding of non obviousenss on just this point of teaching away in the prior art.
The patentee in this case was Ecolochem, Inc., the holder of two patents (U.S.4,556,492 and U.S. 4,818,411) which were allegedly infringed by Southern California Edison Company (defendant) through the defendant’s de oxygenation of water in one of its nuclear power stations. The claimed invention was related to pressurized water reactors that used a primary system and a secondary system. Since a small amount of water from the secondary system is lost in each cycle, the water must be replaced,and that water must be of very high purity, purged of both minerals and oxygen. The patentee and defendant had a prior agreement where the patentee provided purified water to the defendant, but the patentee was eventually relieved of its service due to defendant’s introduction of its own water purification and de oxygenation apparatus,which the patentee, in turn, alleged infringed their two patents. The patentee’s process comprised a hydrazine/carbon process for removal of oxygen, followed by passage of the water through ion exchange beds to remove ionic impurities leached from the carbon bed on reaction of the hydrazine with oxygenated water. The cited prior art described several methods for deoxygenating water, including the use of hydrazine in the presence of carbon. However, in its recitation of the various methods, the prior art reference mentioned that the hydrazine/carbon process will “release salts into the de mineralized water” and that an alternative process using a hydrogen-based reductive process is energy saving and significantly less expensive. Other prior art references either failed to refer to the carbon/hydrazine process as practical or touted other processes in its stead. The patentee’s solution, which consisted of using the hydrazine/carbon process followed by passage through negative and positive ion exchange beds, solved the problems in the art and provided a practical solution to the problem at hand. In reversing a lower court’s findings, the CAFC upheld the patent sand criticized the way that the lower court appeared to focus on the ways that the prior art could be combined to obtain patentee’s claimed invention, while ignoring the considerable amount of evidence in the literature that would have discouraged one in the art to proceed in the first place.
Another manner of considering the prior art for all that it might teach asks that we consider how the motivation of a PHOSITA would be affected if the proposed modification or combination would destroy or hinder the operability of what was intended in the reference. For example, consider the following hypothetical example.
During the course of her research, a chemist at the small biotech company, Imaginit Pharmaceuticals, succeeds in synthesizing a series of compounds containing a core1H-10-thia-1,3-diaza-cyclopenta[a] fluorene. Some of the compounds in the series demonstrate antibacterial activity and some of the compounds even demonstrate significant activity against vancomycin-resistant bacterial strains. Consistent with their structure activity relationship, the chemist draws up the Markush structure represented by formula I in Figure below and in consultation with her representative files a patent application claiming the compounds as well as their methods of use. In the course of the prosecution of the patent application, the USPTO examiner issues a rejection citing an issued patent from the country of Imaginarylanda. The cited patent reference includes compounds of the Markush formula II (also in Figure below).
The cited prior art reference discloses that the compounds of formula II have significant cytotoxic and anticancer activity, which is attributed to the nitrogen mustardmoiety since the reference also discloses that hydroxyl groups in the place of the

compounds of the Markush formula II

FIGURE :Claimed genus I and prior art genus II.

halogens at position X result in relatively noncytotoxic compounds.38 The relevant parts of the USPTO first office action rejection are reproduced in Figure below.
After reading the rejection, the chemist applicant grows despondent and calls herpatent attorney to discuss how they can possibly patent the compounds of claim1 absent some additional, expensive, and time-consuming tests to demonstrate the un expected or superior results the examiner has requested. After a long, emotional conversation with the patent representative, the Imaginit chemist feels much better.The chemist feels even better when she sees her attorney’s response to the previous office action rejection (Figure below). As you can see, the attorney’s response focused on the teaching away from removing the halogens that was present in the literature and the Imaginarylanda patent specification. If a PHOSITA were making cytotoxic compounds, he would not be motivated to remove the halogens. The examiner is convinced, for the next correspondence issuing from the patent office is a final notice of allowance of all five claims.


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