In its recent decision in In re Stepan Co., The Court of Appeals for the Federal Circuit vacated an obviousness rejection under 35 U.S.C. §103. Stepan Company’s application, U.S. Application No. 12/456,567 (the ‘567 application), is directed to herbicidal formulations containing glyphosate salt with a surfactant system. Independent claim 1 recites:
1 An ultra-high load, aqueous glyphosate salt-containing concentrate comprising:
b. glyphosate salt in solution in the water in an amount greater than about 39 weight percent of acid equivalent, based on the weight of the concentrate, said glyphosate salt being selected from the group consisting of the isopropylamine salt of glyphosate, the potassium salt of glyphosate, mixtures of the isopropylamine salt and the potassium salt of glyphosate and mixtures of the potassium salt and the ammonium salt of glyphosate;
c. a surfactant system in an amount ranging from about 1 to about 20 weight percent, based on the weight of the concentrate, comprising:
i. from about 10 to about 60 weight percent, based on the weight of the surfactant system, of one or more dialkoxylated alkylamines;
ii. from about 5 to about 30 weight percent, based on the weight of the surfactant system, of one or more water miscible solubilizers; and
iii. from about 30 to about 75 weight percent, based on the weight of the surfactant system, of one or more amine oxides;
said concentrate having a cloud point above at least 70ºC. or no cloud point when the concentrate is heated to its boiling point.
The Examiner rejected claim 1 as obvious over a single reference: U.S. Pub. No. 2003/0087764 (the Pallas publication). In his rejection, the Examiner reasoned that Stepan’s claim 1 was obvious over the Pallas publication because Pallas teaches highly-loaded glyphosate compositions containing surfactants having a cloud point of at least 50ºC and ideally 60ºC and preferred surfactants such as lauryl dimethylamine oxide and diethoxylated tallow amine.” The Examiner further reasoned that Pallas teaches that the surfactant component may optionally contain glycols, such as polypropylene glycol. For the claimed ranges, the Examiner reasoned that reaching such ranges required merely routine optimization, selecting and adjusting the amounts of surfactants since Pallas teaches the surfactant component comprises any combination thereof. Similarly, the Examiner reasoned that arriving at the claimed cloud point would be a matter of optimization because Pallas teaches that the ideal cloud point is above 60ºC.
Stepan appealed the Examiner’s rejection based on Pallas to the Patent Trial and Appeal Board, which agreed with the Examiner in affirming the rejection. Stepan appealed the PTAB’s decision to the Federal Circuit, which reversed.
In reversing, the Federal Circuit noted that the PTAB failed to provide a reason why only routine optimization would have been necessary and why the skilled artisan would have arrived at the invention of claim 1 though such routine optimization. The Federal Circuit analogized the Board’s decision to cases in which the Board found that claimed inventions would have been “‘intuitive’ or ‘common sense,'” and even in such cases, there must be an explanation given as to why the skilled artisan would have arrived at her invention. The majority thus remanded for further proceedings consistent with its opinion.
The USPTO argued that Pallas evidenced the routine nature of combining different surfactants and evaluating their respective cloud points because Pallas did so with thousands of different formulations. The Federal Circuit rejected this argument as a “post hoc rationalization” of the USPTO’s rejection and that such evidence could be considered on remand, but which was inapposite to the case at hand because the PTAB had not made any findings related to the evidence allegedly set forth in the Pallas publication.
This case provides a reminder of the level of justification needed to establish a prima facie rejection under 35 U.S.C. §103. When boilerplate language such as “routine optimization” is used in a rejection, applicants should be mindful of the support, or lack of support, provided by the Examiner when drafting a response.