621 F. App'x 667
Fed. Cir.2015Background
- Appellant Lawnie H. Taylor owns U.S. Patent No. 7,582,597 covering products (or methods) containing an alkali-metal hypochlorite (bleach) and an alkali-metal hydroxide (e.g., NaOH) with claimed weight-concentration ratios.
- Within two years of issuance Taylor sought a broadening reissue under 35 U.S.C. § 251, replacing “consists of” with open-ended “comprises,” adding a "weight concentration ratio" limitation, and changing claimed ratios (e.g., originally ≥1:12.5 to 1:30–1:1).
- Representative reissue claim 19 recites an aqueous hypochlorite bleach product with a weight-concentration ratio of hydroxide over hypochlorite of 1:30 to 1:1 and a correlation of that ratio to fabric-safety (damaging to cotton-safe).
- The USPTO examiner rejected the reissue claims as anticipated by three prior patents (Scialla, Agostini, Grande); the Patent Trial and Appeal Board affirmed.
- Taylor appealed to the Federal Circuit, which reviewed anticipation as a factual question under the substantial-evidence standard and upheld the Board’s decision.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether reissue claim 19 is anticipated by prior art | Taylor argued his reissue claim is novel due to the changed ratio ranges and the ‘‘correlating’’ fabric-safety limitation | PTO/Board argued each cited prior patent discloses products with the claimed components and ratios, meeting claim 19 | Affirmed — Scialla, Agostini, and Grande each disclose products with the claimed components and ratios, anticipating claim 19 |
| Whether the "weight concentration ratio correlating to fabric safety" avoids anticipation | Taylor asserted that claiming the correlation to fabric safety adds patentably distinguishing functional/semantic limitation | PTO/Board argued that stating an association between composition and performance does not change the product’s physical characteristics and cannot render old products new | Affirmed — a newly discovered or claimed property/association of an old composition does not make the composition patentably new |
Key Cases Cited
- In re Schreiber, 128 F.3d 1473 (Fed. Cir.) (anticipation is a question of fact)
- In re Jolley, 308 F.3d 1317 (Fed. Cir.) (substantial-evidence standard for Board factual findings)
- Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775 (Fed. Cir.) (a claim is anticipated if any prior-art composition falls within claimed ranges)
- Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342 (Fed. Cir.) (discovery of an unappreciated property of a prior-art composition does not render it patentably new)