Categories: 103 Date: Sep 15, 2014 Title: Scientific Plastic Prod., Inc. v. Biotage AB: Determining Analogous Art in an Obviousness Rejection
|Title||Scientific Plastic Prod., Inc. v. Biotage AB, No. 2013-1219, -1220, -1221 (Fed. Cir. Sept. 10, 2014).|
|Issues||The examiner concluded that it would have been obvious to combine the cartridge of Yamada with the cap of either King or Strassheimer. On appeal to the Board, SPP challenged (1) the examiner’s determination that King and Strassheimer were “analogous art” and (2) that it would have been obvious to combine the LPLC cartridge of Yamada with the pressure-resistant resealable cap of either King or Strassheimer.|
Scientific Plastic Prod., Inc., at *5 (emphasis added).
|[(1)] [T]he King and Strassheimer references address the problem of providing a fluid tight seal at elevated pressures, between a container and a resealable cap. This is sufficiently close to the problem addressed by the claimed invention; substantial evidence supports the Board’s finding that King and Strassheimer are available as prior art|
Id. at *9 (text added).
|[(2)] We conclude that the Board did not err in holding that it would have been obvious for a person of ordinary skill in the field of the invention to modify the chromatography cartridge of Yamada with the resealable threaded cap of King or Strassheimer [because by providing for the presence of an O-ring, the Yamada reference implicitly acknowledges that there is a potential leakage issue between the cap and column body of the plastic cartridge that could be cured by either King or Strassheimer]. |
Id. at *11 (text added).
|Procedural History||Scientific Plastics Products, Inc. (SPP) is the owner of the three United States Patents here at issue: No. 7,138,061 (the ’061 patent), No. 7,381,327 (the ’327 pa- tent), and No. 7,410,571 (the ’571 patent), which relate to a resealable cartridge for low pressure liquid chromatography (LPLC). The ’061 patent claims a method of performing LPLC using the cartridge, the ’571 patent claims the cartridge, and the ’327 patent claims a modified cartridge. After SPP filed suit against Biotage AG for patent infringement, Biotage requested inter partes reexamination of the three patents. The district court then stayed the infringement litigation. The patent examiner rejected all claims of the three patents on the ground of obviousness, and the Patent Trial and Appeal Board affirmed the rejections and cancelled all claims.|
Scientific Plastic Prod., Inc., at *2.
|Legal Reasoning (NEWMAN, Wallach)|
|SPP Patents claimed subject matter||The SPP patents discuss the need for a low cost resealable cartridge for LPLC that provides a fluid tight seal under pressure. The claimed cartridge, illustrated at Figure 1 of the ’327 patent, comprises a tubular container 20 having a threaded polymer cap 28 and a sealing flange 40.|
Scientific Plastic Prod., Inc., at *2-3.
|Yamada Reference||Yamada shows an LPLC cartridge having a tubular polymer container with an open upstream end and an outflow at the downstream end. Yamada shows a thread- ed polymer cap for the cartridge that is “detachably” fitted to the corresponding threaded upstream end of the cartridge body. Yamada further shows an O-ring in the cap to ensure liquid tightness. |
Id. at *4.
|King Reference||King relates to “improved seals for container closure assemblies,” and is “especially applicable to the sealing of containers in substantially gas-tight and liquid-tight fashion, such as the sealing of . . . beverage containers.” King shows a “container closure assembly” with a threaded polymer cap that ensures a fluid tight seal. The examiner found that King shows sealing surfaces that have oppositely inclined surfaces with respect to the cap and lip of the container, as in the SPP closure.|
Id. at *4.
|Strassheimer Reference||Strassheimer relates to plastic bottles and closures therefor that are “especially useful for carbonated bever- ages.” Strassheimer shows a plastic threaded cap that ensures a fluid tight seal “even after repeated use.” The examiner found that Strassheimer shows a taper on the lip of the plastic container that corresponds to a taper on the cap, as in the SPP closure.|
Id. at *4.
|(1) Analogous Art|
|legal standard||Criteria for determining whether prior art is analogous may be summarized as “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” […] |
Scientific Plastic Prod., Inc., at *6-7 (internal citations omitted).
|Determining Pertinent References||The question here is whether King or Strassheimer meets the second criterion. Precedent provides guidance as to when a reference is reasonably pertinent to the problem: “A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection.” Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) [...]|
Id. at *7 (some internal citations omitted).
|Board Affirmed||“The Board found that the central purpose of the SPP inventors was to form “an LPLC cartridge that ‘would allow a user to easily vary and access the cartridge’s contents without destroying its ability to be sealed and function under LPLC pressures.’” […] The Board concluded that a person of ordinary skill seeking such a cartridge would reasonably look to sealing arrangements for other pressurized systems.” Id. at *7. “[S]ubstantial evidence supports the Board’s finding that King and Strassheimer are available as prior art.” Id. at *9 (internal citation omitted).|
|Legal Standard||In KSR, the Court explained: [A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known de- vices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.|
Scientific Plastic Prod., Inc., at *9-10.
|identification of 'potential leakage problem'||[T]he Board concluded that the “known problem of leakage in threaded connections of plastic LPLC cartridges under pressure identified in the [patents] provides a reason for one of ordinary skill in the art to have turned to King or Strassheimer to improve the sealing arrangement set forth in Yamada.” Board Op. at *8. The Board cited a statement in the SPP patents that explained that because prior art LPLC cartridges “leak at the seams[,] [t]hreaded connections are thus not used to form the body of [LPLC cartridges] when the body is made out of polymers.” Id. at *6. The Board noted SPP’s argument that Yamada, a polymer cartridge with threaded connections, does not explicitly disclose a leakage problem. However, the Board found that “by providing for the presence of an O-ring, Yamada implicitly acknowledges that there is a potential leakage issue between the cap and column body of the plastic cartridge.” […] We conclude that the Board did not err […].|
Id. at *10-11.
|[T]he Board did not err in holding that it would have been obvious for a person of ordinary skill in the field of the invention to modify the chromatography cartridge of Yamada with the resealable threaded cap of King or Strassheimer.|
Scientific Plastic Prod., Inc., at *11.
|MOORE, Circuit Judge, dissenting. Scientific Plastic Prod., Inc., Moore Op., at *9-10.|
No "potential leakage issue" in Yamada
|The Board concluded that one of skill in the art would have been motivated to modify the Yamada structure by using the sealing structure disclosed in King or Strassheimer, both of which are directed to container closures for soda pop bottles. I dissent from the majority because this record does not contain substantial evidence that one of skill in the relevant art would have modified the chromatography cartridge in Yamada by replacing its sealing configuration with that of a soda pop bottle.|
Scientific Plastic Prod., Inc., Moore Op., at *2.
|This conclusion—that Yamada’s use of an O-ring “implicitly acknowledges” a “potential leakage issue,” and that the inventors’ statements in the patents allegedly identify a prior art leakage problem. […] Neither factual finding is supported by substantial evidence. These were contested inter partes reexaminations with experts on both sides, yet there is no testimony or other evidence of a known leakage problem in prior art cartridges that would have motivated one of skill in the art to modify Yamada. The Board’s finding regarding Yamada’s O-ring, […], ignores the reality of the situation, which is that Yamada did not have a leakage problem. Yamada does not disclose leakage problems.|
Id. (internal citations omitted).
level of skill in the art unaddressed
|I dissent for a second, independent reason. The Board found the claims obvious without resolving the level of skill in the art. […] It is axiomatic that this is a “basic factual inquir[y]” required of any obviousness determination. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). In most cases, there is no dispute over the level of the skilled artisan. But in this case, the parties contested this factual issue throughout the proceedings, and inexplicably the Board never resolved it. |
Id. at *4.
|The Board’s failure to make this determination is especially pernicious where the analogous art question is far from clear. Soda pop bottles and methods for using chromatography cartridges are clearly not in the same field of endeavor. Instead, the dispute on appeal is whether the soda pop bottle references are both reasonably pertinent to the inventors’ problem. |
Id. at *5.
Image Attribution Statement: portion of FIG. 1 of U.S. Patent No. 7,381,327.