In re Stepan Co.

Decision Date25 August 2017
Docket Number2016-1811
Citation868 F.3d 1342
Parties IN RE: STEPAN COMPANY, Appellant
CourtU.S. Court of Appeals — Federal Circuit

Thomas J. Wimbiscus , McAndrews, Held & Malloy, Ltd., Chicago, IL, argued for appellant. Also represented by George Wheeler .

Jeremiah Helm , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Joseph Matal. Also represented by Nathan K. Kelley , Thomas W. Krause , Frances Lynch .

Before Lourie, Moore, and O'Malley, Circuit Judges.

Opinion for the court filed by Circuit Judge Moore.

Stepan Company ("Stepan") appeals from a decision of the Patent Trial and Appeal Board ("Board") affirming the examiner's rejection of claims 1–31 of U.S. Patent Application No. 12/456,567 ("the '567 application"). For the reasons discussed below, we vacate and remand.

BACKGROUND

The '567 application is directed to herbicidal formulations containing glyphosate salt with a surfactant system. Surfactants can enhance glyphosate's effectiveness as an herbicide by providing better adherence to leaves, thereby enhancing penetration. According to the specification, "[t]he present invention is based on the unexpected discovery that surfactant systems comprising dialkoxylated alkylamine, water miscible solubilizer and amine oxide allow for formulation of ultra-high loaded (‘high-strength’) glyphosate salt concentrates possessing high or no cloud points." J.A. 29 ¶ 13. A cloud point is the temperature at which a solution becomes cloudy due to the surfactants becoming insoluble and separating into layers. Cloudiness can be avoided if the cloud point is higher than the solution's temperature or if the solution is cooled before adding the surfactant. The specification explains that because glyphosate salt is created at about 75°C, it is advantageous to formulate glyphosate with a surfactant system exhibiting a high cloud point to "obviate the necessity of waiting for the temperature of the glyphosate salt reaction product to cool down." J.A. 27–28 ¶ 7. Surfactant systems with high cloud points or no cloud point, in which the solution never becomes cloudy, allow for quicker formulation of glyphosate concentrates and thus quicker delivery to the market. Id.

Claim 1 is the sole independent claim:

1. An ultra-high load, aqueous glyphosate salt-containing concentrate comprising:
a. water;
b. glyphosate salt in solution in the water in an amount greater than about 39 weight percent of acid equivalent, based on the weight of the concentrate, said glyphosate salt being selected from the group consisting of the isopropylamine salt of glyphosate, the potassium salt of glyphosate, mixtures of the isopropylamine salt and the potassium salt of glyphosate and mixtures of the potassium salt and the ammonium salt of glyphosate;
c. a surfactant system in an amount ranging from about 1 to about 20 weight percent, based on the weight of the concentrate, comprising:
i. from about 10 to about 60 weight percent, based on the weight of the surfactant system, of one or more dialkoxylated alkylamines;
ii. from about 5 to about 30 weight percent, based on the weight of the surfactant system, of one or more water miscible solubilizers; and
iii. from about 30 to about 75 weight percent, based on the weight of the surfactant system, of one or more amine oxides;
said concentrate having a cloud point above at least 70°C. or no cloud point when the concentrate is heated to its boiling point.

Several dependent claims further limit the surfactant system of claim 1. For example, claims 20–24 specify that the dialkoxylated alkylamine is diethoxylated tallow amine. Claim 26 specifies that the water miscible solubilizer is a polyalkylene glycol with a molecular weight from about 200 to about 1000, and claim 27 further limits the water miscible solubilizer to polyethylene glycol

. Claim 29 states the amine oxide is selected from a group of six amine oxides, among which includes lauryl dimethylamine oxide.

The examiner rejected claims 1–25 and 28–31 for obviousness over U.S. Pub. No. 2003/0087764, titled "Stable Liquid Pesticide Compositions" ("Pallas"). Pallas discloses highly-loaded glyphosate compositions containing surfactants having a cloud point of at least 50°C and ideally 60°C. Relevant to Stepan's appeal, the examiner found Pallas teaches preferred surfactants "includ[ing] the amine oxide lauryl dimethylamine oxide (Chemoxide [L70] ) and the dialkoxylated amine diethoxylated tallow amine (Ethomeen T)." J.A. 653 (citing J.A. 750–52 ¶¶ 115–16, 119–20). She found that Pallas teaches a surfactant component "may optionally contain glycols such as polypropylene glycol." J.A. 653 (citing J.A. 757–58 ¶¶ 152–55). For the claimed ranges of the surfactants, she found "it is routine optimization to select and adjust the surfactants to this range since Pallas teaches the surfactant component comprises any combination of surfactants." J.A. 653. The examiner found Pallas does not teach a cloud point above 70°C but that achieving this cloud point would be a matter of "optimizing the formulation" because Pallas teaches the ideal cloud point should be above 60°C. J.A. 653 (citing J.A. 735 ¶ 29).

The examiner rejected claims 26 and 27 over Pallas in view of U.S. Patent No. 5,843,866, titled "Pesticidal Compositions Comprising Solutions of Polyurea and/or Polyurethane" ("Parker"). The examiner found Pallas does not teach the specific water miscible solubilizer polyethylene glycol

with a molecular weight from about 200 to about 1000, but Parker discloses polyethylene glycol 600 in a surfactant system mixed with tallow amine and used with glyphosate. She found a skilled artisan "would have been motivated to make the formulation because Parker et al. teach that surfactant systems for glyphosate were known to have polyethylene glycol 600 with tallow amine surfactants." J.A. 656–57.

The Board adopted the examiner's findings in support of rejection and agreed with her conclusion that claims 1–31 would have been obvious. It determined Stepan failed to rebut the examiner's prima facie case of obviousness and affirmed the examiner's rejections. Stepan appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

We review the Board's factual findings for substantial evidence and its legal determinations de novo. In re Van Os , 844 F.3d 1359, 1360 (Fed. Cir. 2017). Obviousness is a question of law based on subsidiary findings of fact. Id. An obviousness determination requires finding both "that a skilled artisan would have been motivated to combine the teachings of the prior art ... and that the skilled artisan would have had a reasonable expectation of success in doing so."1 Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd. , 821 F.3d 1359, 1367–68 (Fed. Cir. 2016). Whether a person of ordinary skill in the art would have been motivated to modify or combine teachings in the prior art, and whether he would have had a reasonable expectation of success, are questions of fact. Id. at 1366.

The Board found Stepan failed to provide evidence that it would not have been routine optimization for a skilled artisan to select and adjust the claimed surfactants to achieve a cloud point above at least 70°C "since Pallas teaches the surfactant component comprises any combination of surfactants" and "teaches the ideal cloud point should be above 60[°C]." J.A. 8–9. It rejected evidence in Pallas that certain surfactant combinations failed the cloud point test at 60°C because it concluded that these failures did not involve the claimed surfactants. J.A. 9. It found Stepan failed to establish the criticality of its claimed range of surfactants, showing neither that a 70°C cloud point was unexpectedly good nor that the prior art was silent on the connection between optimizing surfactants and cloud point. J.A. 10. Because the Board failed to adequately articulate its reasoning, erroneously rejected relevant evidence of nonobviousness, and improperly shifted to Stepan the burden of proving patentability, we vacate the Board's decision that claims 1–31 of the '567 application would have been obvious.

The Board failed to explain why it would have been "routine optimization" to select and adjust the claimed surfactants and achieve a cloud point above at least 70°C. See J.A. 8–9. "The agency tribunal must make findings of relevant facts, and present its reasoning in sufficient detail that the court may conduct meaningful review of the agency action." In re Lee , 277 F.3d 1338, 1346 (Fed. Cir. 2002). Stating that a person of ordinary skill in the art would have arrived at the claimed invention through routine optimization falls short of this standard. Missing from the Board's analysis is an explanation as to why it would have been routine optimization to arrive at the claimed invention. Similar to cases in which the Board found claimed inventions would have been "intuitive" or "common sense," the Board must provide some rational underpinning explaining why a person of ordinary skill in the art would have arrived at the claimed invention through routine optimization. See, e.g. , Van Os , 844 F.3d at 1361 ("Absent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’ "); Arendi S.A.R.L. v. Apple Inc. , 832 F.3d 1355, 1362 (Fed. Cir. 2016) ("[R]eferences to ‘common sense’ ... cannot be used as a wholesale substitute for reasoned analysis and evidentiary support...."). Absent some additional reasoning, the Board's finding that a skilled artisan would have arrived at the claimed invention through routine optimization is insufficient to support a conclusion of obviousness.

The PTO argues substantial evidence supports the Board's finding that formulating the claimed surfactant system with a cloud point above at least 70°C would have been a matter of routine experimentation. It argues the thousands of...

To continue reading

Request your trial
150 cases
  • Alcon Research, Ltd. v. Watson Labs., Inc.
    • United States
    • U.S. District Court — District of Delaware
    • March 1, 2018
    ...The court disagrees and finds that a POSA would not have selected HPγCD through routine experimentation. In re Stepan Co., 868 F.3d 1342, 1346 (Fed. Cir. 2017); (D.I. 149, ¶ 36.) First, Bhowmick would not have motivated a POSA to select a cyclodextrin to solubilize olopatadine because it di......
  • Tile, Inc. v. Linquet Techs.
    • United States
    • United States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board
    • November 16, 2022
    ...combines disparate embodiments in Teller-a premise that we reject. See PO Resp. 12-13. Similarly, Patent Owner argues In re Stepan Co., 868 F.3d 1342 (Fed. Cir. 2017) is "instructive," but again does so based only on the rejected premise that Petitioner combines disparate embodiments in Tel......
  • One World Techs. v. Chervon (HK) Ltd., IPR2020-00886
    • United States
    • United States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board
    • November 3, 2021
    ...... reference. See KSR, 550 U.S. at 418 ("[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."); In re. Stepan Co., 868 F.3d 1342, 1345-46 n.l (Fed. Cir. 2017). ("Whether a rejection is based on combining disclosures. from multiple references, combining multiple embodiments from. a single reference, or selecting from large lists of elements. in a single reference, there must be a ......
  • Genzyme Corp. v. Zydus Pharms. (Usa) Inc.
    • United States
    • U.S. District Court — District of Delaware
    • August 8, 2018
    ...varyPage 99 all parameters or try each of numerous possible choices until one possibly arrived at a successful result." In re Stepan Co., 868 F.3d 1342, 1347 (Fed. Cir. 2017) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1365 (Fed. Cir. 2007)). 40. Although a person of ordinary skil......
  • Request a trial to view additional results
3 firm's commentaries
  • Plural Unreduced Selections With Unpredictable Effect Not Necessarily Routine Optimization
    • United States
    • Mondaq United States
    • March 9, 2022
    ...molecules with the cyclodextrin, in the particular amounts – in the applicant's claim was unpredictable. Citing to In re Stepan Co., 868 F.3d 1342 (Fed. Cir. 2017) the PTAB restated that "a conclusion of obviousness cannot stand where there is a failure to provide an appropriately supported......
  • Plural Unreduced Selections With Unpredictable Effect Not Necessarily Routine Optimization
    • United States
    • Mondaq United States
    • March 9, 2022
    ...molecules with the cyclodextrin, in the particular amounts – in the applicant's claim was unpredictable. Citing to In re Stepan Co., 868 F.3d 1342 (Fed. Cir. 2017) the PTAB restated that "a conclusion of obviousness cannot stand where there is a failure to provide an appropriately supported......
  • How Sweet It Smells: Examiner Rejection Of Composition Claims Reversed
    • United States
    • Mondaq United States
    • April 8, 2022
    ...to establish the obviousness of using those materials in the amounts recited in claims 1 and 13. Id. at 7-8 (citing In re Stepan Co., 868 F.3d 1342, 1345-46 (Fed. Cir. The Board held that the examiner's rejection could not be sustained and therefore reversed. Id. at 8-9. Take-Aways Sturgis ......
7 books & journal articles
  • Ten Years after KSR, Motivation to Combine Moves Back into the Spotlight
    • United States
    • ABA General Library Landslide No. 10-3, January 2018
    • January 1, 2018
    ...as merely inherent, without further consideration as to unpredictability and unexpectedness, erred as a matter of law. In re Stepan Co. , 868 F.3d 1342, 123 U.S.P.Q.2d 1838 (Fed. Cir. 2017). The Federal Circuit reversed the PTAB’s decision affirming the examiner’s rejection of the claims as......
  • Navigating through the Obviousness-Type Double Patenting Minefield
    • United States
    • ABA General Library Landslide No. 10-3, January 2018
    • January 1, 2018
    ...as merely inherent, without further consideration as to unpredictability and unexpectedness, erred as a matter of law. In re Stepan Co. , 868 F.3d 1342, 123 U.S.P.Q.2d 1838 (Fed. Cir. 2017). The Federal Circuit reversed the PTAB’s decision affirming the examiner’s rejection of the claims as......
  • All Patents Are Not Created Equal: Sovereign Immunity
    • United States
    • ABA General Library Landslide No. 10-3, January 2018
    • January 1, 2018
    ...as merely inherent, without further consideration as to unpredictability and unexpectedness, erred as a matter of law. In re Stepan Co. , 868 F.3d 1342, 123 U.S.P.Q.2d 1838 (Fed. Cir. 2017). The Federal Circuit reversed the PTAB’s decision affirming the examiner’s rejection of the claims as......
  • To Create and Own a Nontraditional Trademark, Just Follow Tradition
    • United States
    • ABA General Library Landslide No. 10-3, January 2018
    • January 1, 2018
    ...as merely inherent, without further consideration as to unpredictability and unexpectedness, erred as a matter of law. In re Stepan Co. , 868 F.3d 1342, 123 U.S.P.Q.2d 1838 (Fed. Cir. 2017). The Federal Circuit reversed the PTAB’s decision affirming the examiner’s rejection of the claims as......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT