Board Reverses Examiner for Improper Reliance on Inherency in an Obviousness Rejection

March 28, 2012 – Blog Post

Claims to compositions frequently include properties exhibited by the claimed compositions in addition to limitations to the components of the compositions. In making obviousness rejections against such claims, Examiners often combine references disclosing the various components of the claimed compositions and assert that these hypothetical compositions would inherently exhibit the claimed properties. The Board's decision in Ex Parte Vigano et al. (Appeal No. 2010-007666; Application No. 12/044,623) should remind Examiners that such arguments from inherency asserted in obviousness rejections are improper.

The claims at issue in Ex Parte Vigano et al. are to polymer compositions comprising (a) metallocene-catalyzed linear low density polyethylenes ("mLLDPE") and (b) and high density polyethylene ("HDPE"), where the polymer compositions exhibit "a die shrinkage upon extrusion that is at least 10% lower than the composition, prior to grafting and crosslinking of the mLLDPE" (independent claim 1).

The Examiner rejected claim 1 and several dependent claims as obvious over Allermann (WO 2004/014971) and Farley (US 2004/0014895), arguing that Allermanndiscloses component (a) but conceding that component (b) and the claimed die shrinkage are absent from this applied reference. The Examiner relied on Farley for a disclosure of HDPE that qualifies as component (b). Id. As Allermann discloses that that polyethylenes in general can be mixed with the mLLDPE disclosed therein, the Examiner reasoned that it would have been obvious to include the Farley HDPE in the Allermann compositions, thereby arriving at hypothetical polymer compositions having the same components as the claimed polymer compositions. Last, the Examiner reasoned that these hypothetical polymer compositions are "identical to" the claimed polymer compositions and therefore would inherently exhibit the claimed die shrinkage property. Id.

The Board reversed. The Board stated that arguments from inherency, while proper in anticipation rejections, are improper in obviousness rejections, citing to In re Rijckaert,9 F.3d 1531 (Fed. Cir. 1993) for support ("That which may be inherent is not necessarily known. Obviousness cannot be predicated on what is unknown.") (internal quote and citation omitted). Since Vigano's claimed polymer compositions were not known, i.e. anticipated by Allermann or Farley, then the claimed die shrinkage is not necessarily known or disclosed by the applied art (inherency "cannot be based on what is not known"). Therefore the Board reversed the Examiner because of "legal error."