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ARTICLE · 19 SEPTEMBER 2018

Federal Circuit Outlines Four Options For Overcoming Obviousness Rejections Based On Routine Optimization

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In E.I. DuPont De Nemours & Co. v. Synvina C.V., the Federal Circuit reversed the decision of the USPTO Patent Trial and Appeal Board

United StatesIntellectual Property
Courtenay Brinckerhoff
Courtenay Brinckerhoff
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In E.I. DuPont De Nemours & Co. v. Synvina C.V., the Federal Circuit reversed the decision of the USPTO Patent Trial and Appeal Board (PTAB) that had upheld Synvina's chemical process patent against an obviousness challenge brought in an Inter Partes Review (IPR) proceeding. In so doing, the court outlined four ways to prevail against an obviousness rejection based on routine optimization.

The Patent At Issue

The patent at issue was U.S. Patent No. 8,865,921, directed to methods for preparing 2,5-furan dicarboxylic acid under certain reaction conditions found to overlap with conditions disclosed in three asserted prior art references.

The Federal Circuit Decision:
Overcoming Obviousness Based On Routine Optimization

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