Written by Mark Terry

In an educational decision yesterday, the Board of Patent Appeals and Interferences decided in Ex Parte Nakamura that an already-existing, but unacknowledged, characteristic in a prior art composition is obvious under 35 U.S.C. 103(a) but rebuttable if there is evidence to the contrary. As a patent attorney in Florida with an active patent prosecution docket, I’m always on the lookout for decisions of the BPAI that divulge methods for fighting rejections.

In this case, the Appellant claimed a composition of nickel and tin that has a characteristic of preventing copper from diffusing. The problem was that the Examiner found a patent reference that disclosed the identical composition.

Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). “[W]hen the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). In Ex Parte Nakamura, the Examiner, having found the same composition in the prior art, made a prima facie case of anticipation or obviousness.

But, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. Best, 562 F.2d at 1255; see also MPEP § 2112.01. Unfortunately, the Appellant in this case didn’t provide any evidence that the claimed characteristic was not present in the prior art reference.

Responding to this fact, the BPAI stated: “On the record before us, Appellant has not presented any evidence to show that the prior art product does not necessarily possess the characteristics of the claimed product. Best, 562 F.2d at 1255. Thus, the Examiner has established that Tsukada’s Ni-Sn layer possesses the characteristic of preventing diffusion of Cu from the base layer into the solder.”

Thus, Appellant’s claim fell into the following tenet: “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). Thus, the claiming of a new use, new function, or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. Best, 562 F.2d at 1254.

Lessons Learned: The moral of the story here is that if you are claiming a new or otherwise unknown characteristic of an already-known composition, then you must provide some evidence to support the argument that the characteristic is not found in the reference being used against you. A well-crafted 37 C.F.R. 1.132 Affidavit can help in this regard.