Anticipate This!™ | Patent and Trademark Law Blog

In Re John B. Sullivan, et al.

Posted in Opinion Commentary by Jake Ward on September 5, 2007

When an applicant puts forth evidence to rebut a prima facie case of obviousness, the evidence must be considered.  

(Fed. Cir. 2007, 06-1507)


On appeal from the BPAI, the CAFC vacated the BPAI’s decision that affirmed a final rejection of application Serial No. 08/404,454 (the ‘454 application) on obviousness grounds.

Sullivan had originally filed the ‘454 application with claims directed to an antivenom composition.  During prosecution, Sullivan had provided three expert declarations related to the use of the claimed composition as an antivenom.  The BPAI, in finding the claims unpatentable, stated in a footnote that:

The remainder of appellants [sic] arguments on this record, in addition to the Declarations of record, relate to the use of the claimed composition as an antivenom. Since we have placed not [sic] weight on the intended use of appellants’ composition we do not address these arguments or the Declarations.

Sullivan argued that even if the BPAI established that the claimed composition was prima facie obvious over the cited references, the BPAI erred by ignoring extensive rebuttal evidence (teaching away, unexpected properties, and other objective indicia of nonobviousness) in the expert declarations.

The CAFC agreed that the BPAI imroperly failed to consider the rebuttal evidence.  When a prima facie case is made by the PTO, the burden shifts to the applicant to come foward with evidence and/or argument supporting patentability.  Evidence rebutting a prima face case of obviousness can include: “evidence of unexpected results,” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1369 (Fed. Cir. 2007), evidence “that the prior art teaches away from the claimed invention in any material respect,” In re Peterson, 315 F.3d 1325, 1331 (Fed. Cir. 2003), and evidence of secondary considerations, such as commercial success and long-felt but unresolved needs, WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999).  When a patent applicant puts forth rebuttal evidence, the Board must consider that evidence. 

The BPAI’s focus on the intended use of the composition missed the mark.  The issue was not whether the claim recited a new use, but whether the subject matter of the claim possessed an unexpected use.  An unexpected property is relevant, and thus the declarations that described it should have been considered by the BPAI.


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