Sunday, February 17, 2013

Whalen Watching

Inventors like to believe that if they define their invention specifically enough they are entitled to a patent. Specificity of the definition often resides in numerical values of a parameter like temperature, specific gravity, viscosity, molecular weight, resistance or concentration.

This belief is seductive, but may not be legally correct.

Although I am a big fan of the all elements test (discussed in an earlier post) every rule has an exception.

Examiner's like to say  in an office  action "Although Smith does not specifically teach value X for variable Y, the Y variable is recognized in the art as a result effective variable so that optimization to X would have been obvious".

This seems like circular reasoning, but it can be legally correct if the assertion that "the Y variable is recognized in the art as a result effective variable" is true. 

Of course, if ""the Y variable is NOT recognized in the art as a result effective variable" then the assertion is not legally correct.

This type of reasoning is consistent with USPTO policy as reflected in  the BPAI decision in  Ex parte Whalen II (Appeal 2007-4423).

The Board in Whalen clarified that:
While “the discovery of an optimum value of a variable
in a known process is normally obvious,” In re Antonie, 559 F.2d 618, 620 (CCPA 1977), this is not always the case.  One exception to the rule is where the parameter optimized was not recognized in the prior art as one that would affect the results.  Id.


Although Examiners often say "result effective variable" in an office action, they rarely refer to the Whalen decision by name.  

Perhaps that is because Whalen makes it clear that the suggestion to optimize the parameter in question must be in the cited art, and not in the specification of the application being examined. 

The board in Whalen reversed the Examiner's section 103 rejection saying:
"Here, the Examiner has not pointed to any teaching in the cited
references, or provided any explanation based on scientific reasoning, that would support the conclusion that those skilled in the art would have considered it obvious to “optimize” the prior art compositions by increasing their viscosity to the level recited in the claims."


In plain English, the claim must be obvious based on the art, not based on how reasonable the invention looks after the Applicant has provided an enabling disclosure.

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