Patent Office Must Consider Relevant Rebuttal Evidence, Says Federal Circuit
Summary: The PTO must consider “relevant rebuttal evidence” submitted by patent applicants to overcome a prima facie case of obviousness. Such evidence must be in the record. Cite: In Re Sullivan, No. 2006, Civ. 1507 (Fed. Cir. 2007).
At issue in this appeal from the PTO's Board of Patent Appeals and Interferences, was joint inventor Sullivan’s and Russell’s U.S. patent application Serial No. 08/405,454, which is directed to an antivenom composition. The application had been finally rejected by the PTO as being obvious under 35 U.S.C. § 103(a) over the inventors’ own prior art publication in view of a publication by Coulter, a decision that was affirmed by the Board in two PTO appeals. During those appeals, the Board concluded that “the [antivenom] composition taught by the combination of Sullivan and Coulter would have been expected by a person of ordinary skill in the art at the time the invention was made to neutralize the lethality of the venom of a rattlesnake” (the underlined portion was added during prosecution).
On appeal to the Court of Appeals for the Federal Circuit (CAFC), the Federal Circuit found that the Board’s obviousness conclusion was not unreasonable, in that one skilled in the art of snake venom could consider that a fragment of a whole antibody that neutralizes one type of venom (i.e., the prior art) might be used to neutralize the venom of another species (citing from KSR Int’l Co. v. Teleflex Inc.: “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). However, the Federal Circuit also found that “the claimed composition cannot be held to have been obvious if competent evidence rebuts the prima facie case of obviousness.” The PTO (the Board, in this case) must consider any “relevant rebuttal evidence” when an applicant puts forth such evidence in response to an obvious rejection (in this case three declarations containing evidence of unexpected result from use of the claimed composition, how the prior art taught away from the composition, and how a long-felt need existed for a new antivenom composition).
Conclusion: the Board failed to give any weight to rebuttal evidence of record regarding the nonobviousness of the invention. Vacated and remanded to the Board to consider the evidence.
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