The U.S. Court of Appeals for the Federal Circuit vacated a decision by the Board of Patent Appeals and Interferences’ (the Board) rejecting an application and directed the Board to consider declarations by the applicants regarding secondary consideration of non-obviousness. In re Sullivan, Case No. 06-1507 (Fed. Cir., Aug. 29, 2007) (Lourie, J.).

The application at issue was directed to an antivenom that "neutralizes the lethality of the venom of" the snake genus that includes rattlesnakes. The claimed antivenom includes "Fab fragments," a certain type of antibody fragments. During a first appeal to the Board, the Board found the claims prima facie obvious in view of the combination of two references—Sullivan and Coulter. Sullivan disclosed the use of whole antibodies as a rattlesnake antivenom, and Coulter disclosed using Fab fragments to detect the toxin of the Australian brown snake. However, the Board issued a new rejection and remanded the case. The applicants then amended the claims to address the Board’s rejection and submitted declarations discussing why one of ordinary skill in the art would not expect these Fab antibody fragments to effectively neutralize rattlesnake venom, describing the unique properties of interactions between the antibody fragments and the rattlesnake venom, as well as why one of ordinary skill in the art would have expected the claimed invention to fail. After the examiner again rejected the claims over the same combination, the Board upheld the examiner’s rejection. In doing so, the Board simply found that the claimed intended use, "neutraliz[ing] the lethality of the venom of" the rattlesnake genus, did not render the claim patentable. The Board declined to review the declarations submitted by the applicants. The applicants appealed.

The applicants argued that the Board failed to establish prima facie obviousness based on Sullivan and Coulter or, at the very least, if the Board established prima facie obviousness, it erred by ignoring the extensive rebuttal evidence provided by the applicants. The Federal Circuit agreed, concluding that even assuming that the Board was correct that the combination rendered the claimed invention prima facie obvious, the Board erred by not considering the rebuttal evidence. The Court was unequivocal in its decision: "When a patent applicant puts forth rebuttal evidence, the Board must consider that evidence."

With regard to prima facie obviousness, the Court followed the Supreme Court’s recent KSR v. Teleflex decision and determined that the difference between the claimed invention and the prior art combination was merely a substitution of an antibody fragment that neutralizes one type of snake venom for another, finding prima facie obviousness. However, the Court noted that once a case of prima facie obviousness is present, the burden shifts to the applicants to submit rebuttal evidence and/or argument supporting patentability. The Court reviewed the evidence that the Board had ignored and found that applicants’ declarations showed the prior art teaching away from the claimed invention, described an unexpected property or result of the claimed invention and discussed long-felt need for the claimed invention.

Moreover, in response to the Board’s conclusion that an intended use did not render the claim patentable, the Federal Circuit stated, "the issue here is not whether a claim recites a new use, but whether the subject matter of the claim possesses an unexpected use. That unexpected property is relevant, and thus the declarations describing it should have been considered by the Board." The Court remanded the case to the Board to consider the rebuttal evidence.

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