In Re: Stepan Company
868 F.3d 1342
| Fed. Cir. | 2017Background
- Stepan appeals a Board decision affirming examiner’s rejection of claims 1-31 of the ’567 application.
- The invention covers ultra-high load aqueous glyphosate salt concentrates with a specified surfactant system and cloud point limitations.
- Claim 1 recites water, glyphosate salt >39 wt% acid equivalent, a surfactant system (1-20 wt%) with dialkoxylated alkylamines (10-60% of surfactant), water miscible solubilizers (5-30%), and amine oxides (30-75%), and a cloud point above 70°C or no cloud point at heating.
- Pallas (US 2003/0087764) and Parker are cited as primary references leading to the Board’s obviousness conclusions.
- The Board found the claimed cloud-point limitation insufficiently justified and shifted the burden to Stepan to prove patentability, then vacated and remanded.
- Stepan challenges the Board’s reasoning on motivation, reasonable expectation of success, and burden-shifting.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Obviousness over Pallas/Parker | Stepan argues claims would not have been obvious. | Pallas/Parker teach similar surfactant systems; cloud point optimization is routine. | Vacate and remand; not clearly obvious as framed. |
| Reasonable expectation of success | Stepan contends the Board failed to show a reasonable expectation to achieve >70°C cloud point. | Pallas teaches surfactant flexibility and cloud-point goals; routine optimization supports expectation. | Remand to articulate rationale for reasonable expectation. |
| Burden shifting | Board improperly shifted burden to Stepan without adequate reasoning. | PTO argued routine optimization; Board’s analysis insufficiently detailed. | Board erred; burden allocation on remand. |
Key Cases Cited
- In re Van Os, 844 F.3d 1359 (Fed. Cir. 2017) (requires articulate rationales for obviousness findings)
- In re Lee, 277 F.3d 1338 (Fed. Cir. 2002) (reasoned review requires detailed agency reasoning)
- Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348 (Fed. Cir. 2007) (reasonableness of expectation must go beyond trial-and-error)
- Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1165 (Fed. Cir. 2006) (explanation of reasonable expectation and path to invention)
- In re Deuel, 51 F.3d 1552 (Fed. Cir. 1995) (burden shifting in obviousness determinations)
- In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) (articulation of basis for combining prior art)
- Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016) (cannot substitute common-sense reasoning for factual analysis)
- Ethicon, Inc. v., 844 F.3d 1344 (Fed. Cir. 2017) (reasonable expectation of success requires concrete rationale)