Whither The CCPA? Hindsight Is 20/20: Examining CCPA Decisions And Their Continued Importance In Modern Obviousness Inquiries

Published date13 June 2022
Subject MatterIntellectual Property, Patent
Law FirmFinnegan, Henderson, Farabow, Garrett & Dunner, LLP
AuthorMs Emma N. Ng, Amanda K. Murphy, Stacy Lewis and Thomas L. Irving

Introduction

In United States patent law, a patent may not be obtained on a claimed invention if the differences between the claimed invention and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the pertinent art at the pertinent time. 35 U.S.C. ' 103. Section 103 establishes obviousness as a legal inquiry with factual underpinnings including: (1) the scope and content of the prior art; (2) differences between the prior art and the claims at issue; and (3) the level of ordinary skill in the pertinent art. Graham v. John Deere Co., 383 U.S. 1, 18 (1966). Secondary considerations such as "commercial success, long felt but unsolved needs, failures of others, etc. . . . may have relevancy" in the obviousness or nonobviousness inquiry. Id. at 18−19; see also KSR Intern. Co. v. Telefex, Inc., 550 U.S. 398, 401 (2009) (affirming the Graham analysis and the secondary considerations inquiry for obviousness).

While modern case law continues to expand our understanding of obviousness, it is important to consider early United States Court of Customs and Patent Appeals ("CCPA") cases, and how these decisions shaped and continue to influence current patent law jurisprudence. CCPA cases are still found regularly throughout the Manual of Patent Examining Procedure ("MPEP"), revealing these cases still provide a solid foundation of jurisprudence in patent law. This article summarizes key CCPA decisions that continue to hold merit and remain binding precedent that should be considered when strategizing for obviousness and nonobviousness inquiries.1

Case Summaries

In re Papesch, 315 F.2d 381 (C.C.P.A. 1963)

In In re Papesch, the Board affirmed the examiner's obviousness rejection of claims to a compound that was structurally similar to a prior art compound. The claimed compound differed by only three -CH2groups, and it was presumed these compounds shared many common properties. The CCPA reversed the Patent Office's obviousness finding, citing evidence of record showing that the representative compound possessed unexpected anti-inflammatory properties that were not possessed by the prior art compound. The Court held that, from the standpoint of patent law, "a compound and all of its properties are inseparable; they are one and the same thing." In re Papesch, 315 F.2d at 391; see also In re Antonie, 559 F.2d 618, 619 (CCPA 1977) (holding that "[j]ust as we look to a chemical and its properties when we examine...

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