In re Devlin, No. 2020-1351, 2020 WL 6437962 (Fed. Cir. Nov. 3, 2020), nonprecedential, the Federal Circuit (Judges Moore, O'Malley, and Taranto) affirmed the Board's decision affirming an Office's rejection of claims 1-4 of U.S. Pat. Appl. No. 15/078,167.
The '167 application claims a method of treating psoriasis by administering a vitamin supplement composition that is "essentially free of anti-oxidants." The Office rejected claims 1-4 of the '167 application as obvious over Serfontein (EP 0 595 005). In particular, the Office cited Serfontein's claim 1 for disclosing elements claimed in the '167 application.
Claim 1 of the '167 application and Serfontein each recites:
claim 1 of the '167 application
claim 1 of Serfontein
A method of treating psoriasis by administering to a person a vitamin supplement composition comprising
at least about 25 micrograms to about 2,200 micrograms of folic acid,
at least about 25 micrograms to about 2,500 micrograms of vitamin B12,
and at least about 0.5 milligrams to about 20 milligrams of vitamin B6,
wherein said composition is essentially free of anti-oxidants.
The use in the manufacture of a pharmaceutical preparation for lowering levels of homocysteine or for the prophylaxis or treatment of elevated levels of homocysteine or of clinical conditions associated therewith in a patient of a combination comprising
a) vitamin B6;
b) folate or a suitable active metabolite of folate or a substance which releases folate in vivo;
c) vitamin B12, with or without intrinsic factor.
See claim of the '167 application (emphasis added); claim 1 of Serfontein (emphasis added). This brings to mind Judge Rich's classic opinion in In re Benno, 768 F.2d 1340 (Fed. Cir. 1985), in which the Federal Circuit emphasized that a patent claim is no measure of what a patent actually discloses:
The scope of a Patent's claims determines what infringes the patent; it is no measure of what it discloses. A patent discloses only that which it describes, whether specifically or in general terms, so as to convey intelligence to one capable of understanding. While it is true, as the Solicitor suggested at oral argument, that "a claim is part of the disclosure," that point is of significance principally in the situation where a patent application as filed contains a claim which specifically discloses something not disclosed in the descriptive part of the specification (claims being technically part of the "specification," . . .
Id. at 1346. While the Federal Circuit did not cite to Benno, the court looked beyond claim 1 of the '167 application and claim 1 of Serfontein. After 35 years to be reminded of In re Benno, it is still one the Editor's favorite cases. Knowledge is power, no?
Returning to Devlin, the Office found that, while Serfontein discloses compositions that "optionally" or "preferably" include antioxidants, it discloses examples of compositions without any antioxidants. In re Devlin, at Slip Op. 2. The Office therefore found that it would have been obvious to treat psoriatic patients with the claimed composition based on Serfontein. See id. at Slip Op. 2-3. Devlin appealed to the Board, which upheld the Office's rejection. Id. at Slip Op. 3. Develin appealed to the Federal Circuit. Id.
The Federal Circuit Discussion
On appeal, Devlin did not dispute that claim 1 of Serfontein recites the same components as claim 1 of the '167 application. Id. Devlin argued, however, that a POSITA would understand that claim 1 of Serfontein teaches a composition including antioxidants because Examples 4 and 8 of Serfontein contain pyridoxal, a form of an antioxidant. Id.
The Federal Circuit disagreed. Id. at Slip Op. 4. The Federal Circuit pointed out that, in response to the Office's indefiniteness rejection, Devlin argued that, even if vitamin B12, vitamin B6, and folic acid are generally considered antioxidants as established by Serfontein and others, "[i]t is quite clear that as used in [Devlin's] claims, folic acid, vitamin B12 and vitamin B6 are not anti-oxidants." Id. Accordingly, the Office withdrew the indefiniteness rejection, explaining he would "constru[e] the claims as including folic acid, vitamin B6, and vitamin B12 in the amounts claimed but that those amounts are within the scope of 'essentially free of anti-oxidants.'" Id.
Devlin's arguments that vitamin B6 is not an antioxidant "inform the meaning of the claim language by demonstrating how [he] understood the invention." Id. (citing Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005)). Therefore, the Federal Circuit determined that Serfontein's teaching of pyridoxal (vitamin B6) as an antioxidant should still be considered as within the meaning of "essentially free of anti-oxidants." Id.
Devlin also argued that Serfontein teaches away from antioxidant-free compositions because it "preferably" includes antioxidants in the disclosed compositions and discloses increased efficacy with antioxidants. Id. The Federal Circuit disagreed with this argument and concluded that Serfontein's "preferred" or "optional" inclusion of antioxidants is an "alternative teaching," rather than a requirement to include antioxidants. Id.
Therefore, the Federal Circuit concluded that Serfontein discloses a composition "essentially free of antioxidants" and affirmed the Board's decision. Id. at Slip Op. 4-5.
This decision is yet another reminder of how the underlying specification and the prosecution history impact claim construction. Claim construction cannot contradict the specification and the prosecution history "inform[s] the meaning of the claim language by demonstrating how [he] understood the invention." Further, "preferred" or "optional" embodiments in prior art may not necessarily "teach away" from less preferred embodiments, and any disclosed embodiment can be applied in the calculus of an obviousness rejection.
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