To overcome obviousness rejection you need evidence of nonobviousness. IN RE GORRIS

A patent is a government granted monopoly on an invention for a limited period of time. A patent grants its owner the exclusive right to make, use, sell and import an invention within the country that granted the patent. To be granted a patent in the United States an inventor must file a patent application with the United States Patent and Trademark Office. The patent application must meet many requirements to be granted. The most important requirements are that the invention is new, useful and not obvious. The patent law definition of obviousness is not the same as the dictionary definition.

Whether an invention is obvious under patent law depends on the prior art and the knowledge of an ordinary person skilled in the area of technology related to the invention. To be obvious every aspect of an invention must be described in the prior art or would have been obvious to a person having ordinary skill in the art. Prior art is any published information that is available to the public. Patents and patent applications are the most commonly cited forms of prior art, however research papers and sales brochures can also qualify as prior art. During the patent application process the United States Patent and Trademark Office will review publicly available publications for relevant pieces of prior art.

When examining patent claims, the initial burden rests with the patent examiner to set out a prima facie case that the claims at issue are obvious over the prior art. The burden then shifts to the applicant to produce evidence or argument supporting patentability. The examiner weighs the prima facie evidence against the rebuttal evidence to determine whether the entirety of the evidentiary record supports a finding of obviousness by a preponderance of the evidence.

IN RE: MARK GORRIS, 2020-1682 (C.A.F.C. 2021) is an example of a case where a patent applicant failed to overcome a prima facie finding of obviousness because they failed to submit evidence.

Mark Gorris filed U.S. Patent Application No. 12/639,882 (the “’882 application”) in 2009. The ’882 application describes the formulation of a “chewable consumable” that contains a “medicinal dose” of cinnamon. The application explains that “[c]innamon is believed to act as an appetite suppressant as well as providing other health benefits when taken in a sufficient dose.” The patent examiner rejected the patent as obvious in light of a Patent Application by Nair, in combination with a book about food chemistry by Lan Su. The Patent Trial and Appeal Board (PTAB) affirmed the rejection finding that Nair expressly identifies cinnamon as an ingredient intended to provide health benefits and a person having ordinary skill in the art would have been motivated to maximize the cinnamon content of a food product.

Gorris appealed the PTAB’s decison to the Court of Appeals for the Federal Circuit. Gorris’s primary point on appeal was that the cited prior art references did not disclose, separately or in combination with each other, the amount or percentage of cinnamon claimed in his invention.

The Federal Circuit found that the PTAB correctly determined that a person of ordinary skill in the art would reasonably have expected to succeed in formulating a “chewable consumable” product that contained a medicinal dose of cinnamon comprising at least 1 gram and at least 2.5% of the total mass of said chewable consumable. The
normal desire of artisans to improve upon what is already generally known, can provide the motivation to optimize variables such as the percentage of a known ingredient for use in a known product. Both Nair and Su tout the health benefits of cinnamon and that Nair specifically teaches that a powder containing a concentration of cinnamon as high as twenty percent by weight. Based on these finding the Federal Circuit affirmed the PTAB’s decision because it was supported by substantial evidence.

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