Federal Circuit Emphasizes “Why” is Important Part of Obviousness Rationales in Chemical Patent Cases

September 21, 2017
Post by Jonathan L. Kennedy

In a recent decision by the Federal Circuit Court of Appeals, In re Stepan Company, the Federal Circuit reversed the Patent Trial and Appeal Board decision to affirm an examiner’s rejection that claims were obvious.  The claims in the application were directed to ultra-high load, aqueous glyphosate salt-containing concentrates comprising water, a glyphosate salt in an aqueous solution, a surfactant system, where the concentrate had a cloud point above at least 70 °C.  The Examiner had rejected the claims over a published patent application contending that achieving a composition having a cloud point of at least 70 °C would have been a matter of optimizing the formulation because the reference taught the ideal cloud point should be above 60 °C.  The Patent Trial and Appeal Board affirmed the Examiner’s rejection.

The Federal Circuit reversed holding that the Examiner and the Board had failed to adequately address why it would have been routine optimization to arrive at the cloud point limitation.  Specifically, the Federal Circuit held that “the Board must provide some rational underpinning explaining why a person of ordinary skill in the art would have arrived at the claimed invention through routine optimization.”  Further the Federal Circuit held that the Board had also failed to articulate why there would be a reasonable expectation of success in formulating a composition with a cloud point of at least 70 °C.  The Federal Circuit noted that even though the reference taught a cloud point above 60 °C would be ideal, it provided no rational or explanation as to why there would be a reasonable expectation of success in formulating the compositions as claimed.  Underscoring this error in the Board’s holding was the fact that the Applicant had submitted evidence demonstrating failure of multiple compositions with similar surfactants to achieve the claimed cloud point of at least 70 °C.

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

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