It's Better to Show that Claims Belong to an Unpredictable Art

October 28, 2018
Post by Blog Staff

A non-precedential opinion does not establish a new law, but usually offers good patent application drafting and prosecution tips. BASF CORPORATION v. ENTHONE, INC., came out from the Court of Appeal of the Federal Circuit (CAFC) last Friday, and reminded me of a good tip: include evidence in the record to show that the claims relate to an unpredictable art.

In this case, BASF challenged the Patent Trial and Appeal Board’s (PTAB) inter partes review decision that a claim in a patent by Enthone was not obvious over a combination of two references. The disputed claim relates to an electrolytic plating composition comprising a source of [copper] ions and a polyether suppressor compound comprising a combination of propylene oxide (PO) repeat units and ethylene oxide (EO) repeat units. 

BASF argued before the PTAB that the claim is obvious because a first reference teaches an electrolytic plating composition including a suppressor compound and a second reference teaches that the polyether may be used as “suppressor agents for plating compositions”. However, the PTAB found that the second reference did not provide the requisite motivation to combine, because “there must be some specific motivation to employ specific plating bath components, given the general unpredictability in the field and the art”.

BASF argued on appeal that the PTAB erred by applying an overly “stringent version” of the motivation to combine test. CAFC held that the PTAB did not apply an incorrect legal standard in its motivation to combine analysis, because “this approach fits within the Supreme Court’s directive to “account [for] the inferences and creative steps that a [PHOSITA] would employ”, KSR, 550 U.S. at 418, "by considering whether, based on the record, the level of unpredictability in the art would affect such inferences and creative steps, such that a PHOSITA might require a more explicit directive”.

It is very common for a claim in any patent application to be a combination of two or more elements that already exist in the prior art, leading to one or more obviousness rejections for the claim over a combination of two or more cited references. To enhance the chances to overcome the obviousness rejection(s) for such claims, it is always good practice to include some evidence in the patent application or to point out the same in the cited references to show that the claims relate to an unpredictable art.

Xiaohong Liu, Ph.D., is an Intellectual Property Attorney in the Biotechnology & Chemical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information, please visit or contact Xiaohong directly via email at



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