In a recent case, E.I. DuPont De Nemours & Co. v. Synvina C.V., the Federal Circuit outlined four (4) ways to overcome obviousness rejections based on routine optimization. The patent at issue covered methods for preparing a compound under reaction conditions already described in three prior art references.

The court made reference to the classic rationales to support an obviousness rejection. That is, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation,” and “A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”

The court outlined four (4) ways in which the patentee could respond to the rejection:

1. Argue that the parameters “produce[s] a new and unexpected result which is different in kind and not merely in degree from the results of the prior art.”
2. Argue that the prior art teaches away from the claimed range.
3. Argue that the parameters were not recognized result-effective.
4. Argue that the prior art describes “very broad ranges” which “may not suggest routine optimization.”

In this particular case, however, the court found that a prima facie case of obviousness applied and that none of the reasoning above was discussed.

It is interesting to see that the court outlined four (4) options for overcoming an obviousness rejection based on routine optimization because the current Manual Of Patent Examining Procedure (MPEP) only recognizes two (2) options. In particular, MPEP § 2144.05 only recognizes the following:

• showing that the range is critical for achieving unexpected results
• showing that the prior art teaches away from the claimed parameter(s)

Please contact me at silvia@salvadorilaw.com with questions or comments.

Silvia Salvadori, PhD

www.salvadorilaw.com

silvia@salvadorilaw.com