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ARTICLE · 03 OCTOBER 2017

Assertion Of "Routine Optimization" Without Additional Reasoning Insufficient To Support Obviousness Conclusion

Marshall, Gerstein & Borun LLP
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Recent Federal Circuit decisions reversing or remanding PTAB holdings of obviousness have faulted the Board for failing to clearly articulate its reasoning.

United StatesIntellectual Property
Heather R. Kissling
Heather R. Kissling
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Recent Federal Circuit decisions reversing or remanding PTAB holdings of obviousness have faulted the Board for failing to clearly articulate its reasoning. See our previous posts here and here. In In re Stepan Co., No. 2016-1811 (Fed. Cir. Aug. 25, 2017), a split CAFC panel vacated a PTAB ex parte appeal decision affirming an obviousness rejection based on "routine optimization" for failing to explain why one of ordinary skill would arrive at the claimed subject matter.

The claims of Stepan's U.S. Patent Application No. 12/456,567 are directed to herbicide compositions defined, in part, by weight percentage ranges of particular surfactants and a physical characteristic, having a "cloud point" above at least 70o C (i.e., the solution becomes cloudy due to surfactant insolubility above 70o C). The claims were finally rejected for obviousness over a single prior art reference that discloses various surfactants present in ranges that overlap those recited in the

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