U.S. Court of Appeals Vacates Decision of the Patent Trial and Appeal Board
Chicago, August 28, 2017- On August 25, 2017, the U.S. Court of Appeals vacated a decision of the Patent Trial and Appeal Board (“PTAB”) that had rejected all of the claims of a patent application owned by Stepan Company. The inventions of the Stepan application relate to an improved herbicidal surfactant formulation that provides significant manufacturing and processing benefits.
Here, the PTAB rejected the applications claims on a prior art reference that the dissenting judge found “almost anticipates” (i.e., identically shows) the Stepan invention. Stepan, however, successfully showed that the PTAB’s decision was infected with numerous errors. Importantly, the Court held that the PTAB could not simply select, as “routine optimization,” from amongst a large disclosure of components taught in this single reference to show that the Stepan invention would have been “obvious” from the art. Rather, the Court agreed with Stepan that the PTAB did not articulate why one would have a “reasonable expectation of success” in formulating the claimed surfactant system. The Court also agreed with Stepan that the PTAB failed to establish a prima facie case and erred by improperly shifting the burden to Stepan.
“Our client is very pleased with the result,” said Thomas Wimbiscus, counsel for Stepan. “Importantly, the decision shows that the PTO’s assertions, such as a reasonable expectation of success, must in fact be supported by specific factual findings that are sufficiently targeted to the issue.”
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