Arguing Obviousness - Road De-icing Example

Sometimes patent attorneys can get caught up in the technocratic rules in arguing obviousness and lose the big picture. A recent Federal Circuit case illustrates that sometimes, the key to an overcoming an obviousness rejection (even one affirmed by the PTAB) is simply explaining an overall story of the invention, with supporting evidence.

In in re Natural Alternatives, the Federal Circuit examined an invention related to solving the problem of deicing road surfaces using a natural product, desugared sugar beet molasses (“DSBM”).  In a re-examination, the Patent Office, via the PTAB, found the invention obvious based on a combination of prior art references. Claim 1 is shown below:

1. A composition for deicing and inhibiting the formation of ice and snow on surfaces comprising from 25-99% by volume of desugared sugar beet molasses having 60-75% suspended solids and 1-75% by volume of a component selected from the group consisting of sodium formate, calcium magnesium acetate, potassium acetate, ethylene glycol, di- ethylene glycol, magnesium chloride, calcium chloride, sodium chloride, potassium chloride and mixtures thereof.

The specification described the DSBM as being made by a process that "removes most, but not all, of the sugar from the beets in the form of beet 'juice.'"  In terms of why this was so advantageous, the specification explained that the product was more environmentally friendly, less expensive, less corrosive, and more effective (achieving lower freezing temperatures) than prior art products.  It also noted that the claimed composition does not have the offensive odor inherent in the organic fermentation products of certain other prior art products.

The primary reference referred to beet molasses that contains approximately 50% of sugar. An issue on appeal was whether the PTAB properly equated the prior art's beet molasses (with 50% sugar) to desugered sugar been molasses. Clearly, following logic, there should not be much doubt that something made of half sugar would not be considered desugared, especially when the specification was consistent with the idea the the desugared beet molasses had "most" of the sugar removed.

The next problem with the combination of references was that the secondary reference related to using DSBM for tire ballast. The USPTO attempted to overcome the "non-analagous" art problem by arguing both prior art references related to the "transportation industry" - one being for de-icing roads and the other for tires. The Federal Circuit was highly critical of this approach noting that the case law on non-analagous art directly contradicted this type of broad industry-based approach. The Court confirmed that the burden is on the Office to establish a proper case of obviousness, and it had not done so here because:

... we [have] held that the prior art reference “cannot be considered to be within [the invention’s] field of endeavor merely because both relate to the [same] industry.

The icing on the cake for all of this was that the patentee here had also submitted substantial evidence of non-obviousness. Those handing patent prosecution note that it is exceedingly difficult to win with such secondary indicia of non-obviousness. Here, however, the Court explained how such evidence reinforced the notion that the USPTO had failed to establish its prima facia case. In other words, it did not matter whether the evidence overcame the prima facia obviousness case. Rather, the evidence was still relevant to reinforce that the USPTO relied on hindsight. While this case is non-precedential, this approach illustrates how the key to some cases is more about winning the hearts and minds of the decision makers in terms of telling the story of a great invention. From the Court:

Objective indicia of nonobviousness serve precisely to “guard against slipping into use of hindsight.” Graham, 383 U.S. at 36. Because such objective indicia help anchor abstract analyses of obviousness to actual evidence of the claimed invention’s benefits over the prior art, this evidence “must always when present be considered en route to a determination of obviousness.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983). Objective indicia of nonobviousness is particularly useful where, as here, the examiner alleges that an ordinarily skilled artisan would have been motivated to combine prior art references across disparate fields. In this case, our observation that the Board failed to establish a prima facie case of obviousness is further supported by Natural’s objective evidence ofnonobviousness, including industry praise, commercial success, and licensing. J.A. 946-57, 1115-68. A review of the objective indicia confirms that the Board’s obviousness conclusion is contradicted by unrebutted, real world evidence of nonobviousness.

If only examiners at the USPTO considered such objective evidence with this view.