By Donald Zuhn --
On November 22, the Federal Circuit reversed a determination by the Patent Trial and Appeal Board affirming the rejection of the claims 1, 8-11, and 14 of U.S. Application No. 11/145,716 as anticipated by DE Patent No. 10053155 A1 ("Jungkeit") and as obvious in view Jungkeit and U.S. Patent No. 6,107,349. The '716 application is directed to a method of treating psoriasis by administering a multiple vitamin supplement composition, wherein the claims at issue in the appeal recite a vitamin supplement composition of folic acid, vitamin B12, and vitamin B6. Representative claim 1 recites:
1. A method of treating psoriasis by administering to a person a vitamin supplement composition comprising at least about 25 micrograms to about 2,200 micrograms of folic acid, at least about 25 micrograms to about 2,500 micrograms of vitamin B12, and at least about 0.5 milligrams to about 20 milligrams of vitamin B6, wherein said composition is essentially free of anti-oxidants.
With respect to the limitation that the composition be "essentially free of anti-oxidants," the '716 application discloses that:
By "essentially free" it is meant that the vitamin composition should not contain an amount of antioxidants which would tend to damage and inactivate some of the vitamin B12 and/or folic acid of the vitamin supplement. The presence of lower amounts of antioxidants would not render the vitamin composition of the present invention ineffective or of reduced effectiveness.
The '716 application also discloses that "among the antioxidants especially to be avoided is added vitamin C."
The Examiner rejected the claims at issue as anticipated by Jungkeit, which discloses the use of a multivitamin preparation for the treatment of psoriasis, wherein the multivitamin preparation contains vitamin B1, vitamin B2, nicotine amide, dexpanthenol, biotin, folic acid, vitamin B6, vitamin B12, vitamin C, and vitamin E (vitamin C and vitamin E being known antioxidants). The Examiner also rejected the claims at issue as being obvious in view of Jungkeit and the '349 patent, the latter of which discloses the use of a composition comprising vitamin E, evening primrose oil, and B-complex vitamins to treat psoriasis. The Board affirmed the Examiner's rejections, finding that the '716 application defines the phrase "essentially free of anti-oxidants" to "allow antioxidants as long as they do not damage or inactivate the B12 or folic acid," adding that the '716 application could be "reasonably interpreted to allow for 200 μg of vitamin C" because "Jungkeit's composition containing 200 μg of vitamin C was effective [at] treat[ing] psoriasis."
In reversing the Board's affirmance of the Examiner's rejections, the Federal Circuit begins by noting that "Jungkeit actually discloses 200 mg of Vitamin C" (emphasis in opinion), and not 200 μg as asserted by the Examiner and repeated by the Board. Momentarily setting aside this "clear factual error," the opinion indicates that the Board's affirmance, and the Examiner's rejections, turn on the meaning of the claim limitation "essentially free of antioxidants." While the opinion acknowledges that "the Board correctly determined that 'essentially free' of antioxidants means a composition that 'should not contain an amount of antioxidants which would tend to damage and inactivate some of the vitamin B12 and/or folic acid of the vitamin supplement," and that "[t]he Office appears to agree that the construction further requires that the amount of antioxidant 'would not render the vitamin composition of the present invention ineffective or of reduced effectiveness,'" the panel states that "[a] review of the Board's decision reveals that the Board was not faithful to this construction." In particular, the opinion indicates that:
To anticipate, it is not enough for the prior art composition to have an amount of antioxidant that merely allows the composition to be "effective." To anticipate, the prior art compositions must have an amount of antioxidant that does not result in "reduced effectiveness." Substantial evidence supports the Board's finding that "Jungkeit treated psoriasis with a composition comprising B6, B12, and folic acid in the requisite amounts." . . . However, substantial evidence does not support the Board's finding that Jungkeit's composition is "essentially free of antioxidants." The Board and the examiner have not analyzed the prior art for reduced effectiveness.
• • •
In short, the fact that Jungkeit's composition is not "ineffective" does not mean that it reads on the "essentially free of antioxidants" limitation. To fall within the scope of the claims, the prior art composition must also not have a reduced effectiveness due to the presence of antioxidants. The Office has not established that the cited references disclose compositions whose effectiveness is not reduced at all due to the presence of the antioxidants.
(emphasis in original).
According to the Court, "[t]he Board's decision is particularly problematic given a clear factual error appearing in both the examiner's and the Board's analysis of Jungkeit." In particular, the panel notes that "Jungkeit discloses 200 milligrams of vitamin C -- not 200 micrograms, as stated by the examiner," and adopted by the Board. The opinion points out that "[w]hen the reasoning repeatedly adopts such a misstatement, substantial evidence cannot support a finding that Jungkeit met the 'essentially free of antioxidants' element," adding that "the Board's factual error regarding the amount of antioxidant present in Jungkeit [also] taints its obviousness conclusion." As a result of this factuial error, and the Office's failure to establish that the amount of antioxidants used in the prior art compositions did not reduce their effectiveness in treating psoriasis, the panel reversed the Board's anticipation and obviousness determinations, and remanded the case.
In re Eaton (Fed. Cir. 2013)
Panel: Chief Judge Rader and Circuit Judges Lourie and Moore
Per curiam opinion