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ARTICLE · 04 OCTOBER 2017

PTAB Must Articulate Factual Basis For Obviousness Determination

McDermott Will & Emery
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Addressing whether a claimed feature was the result of routine optimization, as well as the Patent Trial and Appeal Board's (PTAB or Board) obligation to consider factual evidence, ...

United StatesIntellectual Property
Claine Snow
Claine Snow
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Addressing whether a claimed feature was the result of routine optimization, as well as the Patent Trial and Appeal Board's (PTAB or Board) obligation to consider factual evidence, the US Court of Appeals for the Federal Circuit vacated and remanded a PTAB decision finding that the claims of a patent were obvious, and instructed the PTAB to articulate its reasoning for such a finding. In re: Stepan Company, Case No. 16-1811 (Fed. Cir., Aug. 25, 2017) (Moore, J) (Lourie, J, dissenting).

Stepan owns a patent application directed to an herbicidal formulation containing glyphosate salt with a surfactant system. The surfactant enhances the salt's effectiveness as an herbicide by providing better adherence to leaves and thereby enhancing penetration. The claims require using a surfactant system having a cloud point (the temperature at which a chemical becomes insoluble) above 70 °C. During prosecution, the Examiner rejected the claim based on prior art that described an

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