Int’l Flavors and Fragrances, Inc. v. U.S. as Represented by Secretary of Agriculture


Paper 12, May20, 2014

IPR2013-00124 (JL) (Patent 7,579,016 B2)

[Motion to Amend may not be used to broaden claims; Patent Owner must show support for the proposed substitute claims in the original disclosures and bears the burden to demonstrate by preponderance of the evidence patentability of the proposed claims over prior art]

FACTS

Petitioner challenged Patent Owner’s claims for obviousness and anticipation. The Board instituted an IPR, and Patent Owner filed Motion to Amend Claims. Petitioner contended that Patent Owners claims as to an arthropod-repellent compound and its derivatives were anticipated by prior art teaching that the compounds may be used to repel mosquitos and cockroaches. To overcome claims of anticipation and obviousness, Patent Owner pointed out that prior art did not provide any experimental data that the compound could repel arthropods and did not tech anything about derivatives of the compound. Further, Patent Owner’s proposed substitute claims limited the number of claimed derivatives and limited its claim by specifying that the claimed compound and its derivatives may be used to repel ticks and mites.

HOLDING

The Board stated that Motion to Amend may not be used to broaden original claims per 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii). The Board found that proposed substitute claims met this requirement because they provided additional limitations on original claims by reducing the number of claimed derivatives and limiting claims to ticks and mites. The Board further noted that Patent Owner in its Motion pointed to sufficient written description support in the original disclosure as required by 37 C.F.R. § 42.121(b)(1).

As to patentability over prior art, the Board stated that it is insufficient to distinguish proposed claims over the prior art references applied to the original claims. Rather, Patent Owner bears the burden to demonstrate by preponderance of the evidence patentability over prior art in general. In this respect, a patent owner should discuss the level of ordinary skill in the art and what was known regarding the features being relied on to demonstrate patentability of the proposed claims.

The Board found that with respect to proposed claims limiting the number of derivatives, Patent Owner met its burden by demonstrating that the closest prior art did not provide any data that the compound was arthropod repellent and by providing evidence that even slight modification in chemical structure may lead to loss of repellant qualities. Thus, Patent owner demonstrated that one with ordinary skill in the art would not expect these derivatives to also be arthropod repellent.

With respect to limiting claims to ticks and mites, the Board acknowledged that Patent Owner demonstrated that one of ordinary skill in the art would not necessarily expect a compound that repels e.g. mosquitos to also repel mites. However, the Board reasoned that if applied per teachings of the prior art, the compound would also repel ticks and mites. Therefore, Patent Owner’s proposed amended claim amounted to claiming a new benefit of an old process and could not render that old process patentable again.

Therefore, the Board granted in part and denied in part Patent Owner’s Motion to Amend.

TAKEAWAY

The Board reiterated the standard for amending claims by pointing out that: (1) Motion to Amend may not be used to broaden claims; (2) patent Owner must show support for the proposed substitute claims in the original disclosures; (3) Patent Owner bears the burden to demonstrate by preponderance of the evidence patentability of the proposed claims over prior art in general and not merely over prior art applied to the original claims.

 

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