Federal Circuit Reverses PTAB’s Conclusion that Claims Challenged in Reexamination Would Have Been Obvious

Sep 13, 2016

Reading Time : 1 min

The 330 Patent is directed to a composition for deicing road surfaces using a natural product known as “desugared sugar beet molasses” (DSBM). DSBM was previously considered a waste product and it costs less than half the cost of regular molasses. Univar, a licensee of the 330 Patent, filed three requests for reexamination of the 330 Patent. An examiner found a substantial new question of patentability, merged the reexaminations and ultimately found the challenged claims unpatentable in light of three prior art references. The PTAB agreed. On appeal, Natural argued that the examiner and the PTAB never established a prima facie case of obviousness because they failed to address the differences between the references and the challenged claims. Natural further argued that the PTAB failed to consider objective evidence of nonobviousness.

The Federal Circuit agreed with Natural and reiterated that, in a patent reexamination, it is the examiner’s burden to demonstrate a prima facie case of obviousness. The first reference taught making molasses in the traditional sugared form. It did not teach making DSBM. The PTAB ignored the fact that the second reference was directed to a substantially different problem and failed to explain why the teachings would be reasonably pertinent to deicing road surfaces. Similarly, the PTAB failed to address the differences between the third reference and the invention taught in the 330 Patent. Finally, the PTAB erred in finding no nexus between the objective evidence of record and the claimed invention; the prior art taught using molasses in general, not using DSBM specifically (which the prior art considered a waste product). Accordingly, the Federal Circuit reversed the PTAB’s judgment that the challenged claims were unpatentable as obvious.

In re: Natural Alternatives, LLC, No. 2015-1911 (Fed. Cir. Aug. 31, 2016).

Share This Insight

Previous Entries

IP Newsflash

October 1, 2025

In a recent final written decision, the PTAB determined that a reference patent was not prior art, despite the petitioner’s post‑filing attempt to correct its petition. While the petitioner argued that it intended to rely on the patent application’s earlier date of publication, both the corrected petition and the expert declaration continued to reference the issued patent rather than the published application.

...

Read More

IP Newsflash

September 30, 2025

The USPTO Director recently granted a petitioner’s request for rehearing of the decision discretionarily denying institution of inter partes review, ultimately vacating the original decision, and referring the petition to the board for an institution decision.

...

Read More

IP Newsflash

September 25, 2025

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.

...

Read More

IP Newsflash

September 24, 2025

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.

...

Read More

IP Newsflash

September 17, 2025

A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the magistrate judge rejected the patentee’s argument that the preamble of the claim disclosed a second element that satisfied the combination requirement of Section 112, paragraph 6 because the preamble simply recited a descriptor of the very apparatus that was the subject of the means-plus-function limitation in the body of the claim. The district court judge presiding over this case has scheduled a hearing to review the magistrate’s ruling.

...

Read More

IP Newsflash

September 9, 2025

The Federal Circuit has affirmed the PTAB’s determination that a patent challenger did not show the challenged claims were unpatentable for obviousness. The Federal Circuit concluded that substantial evidence, which included expert testimony, showed there was no motivation to combine the references.

...

Read More

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.