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In re Stepan Co.

PTAB Must Fully Explain Basis for Findings in Motivation to Combine Analysis

In re Stepan Co., (Fed. Cir. Aug. 25, 2017) (Lourie (dissenting), MOORE, O’Malley) (PTAB) (3 of 5 stars)

Fed Cir vacates affirmance of examiner’s rejection of claims. The claim related to an herbicide formulation. The PTAB failed to adequately support its determination that the applicant, upon being presented with the prior art, had failed to establish that reaching the claimed matter required more than “routine optimization” of known techniques. “Missing from the Board’s analysis is an explanation as to why it would have been routine optimization to arrive at the claimed invention.” Op. at 6. On appeal, the PTO argued that the evidence in the record was sufficient to establish a motivation to combine references with a reasonable expectation of success. Citing Lee, 277 F.3d 1338 (Fed. Cir. 2002), the opinion rejects this as “post hoc rationalization.” The opinion also rejects a finding by the Board as to the content of a reference. Finally, the Board erred by shifting the burden of proving patentability to Stepan because, for the reasons above, the Board had not established a prima facie obviousness case. Further, the Board erred insofar as it determined that the scope of Stepan’s claims was entirely within the scope of the prior art disclosure. While there was some overlap, it was incomplete, and it was thus the PTO’s burden to establish that the nonoverlapping element was obvious.

Dissent: Judge Lourie would have affirmed. While acknowledging imperfections in the Board’s opinion, to him the claim was clearly obvious over the references.

KEYWORDS: OBVIOUSNESS; MOTIVATION TO COMBINE; FACT FINDINGS