Interference No. 105,174 Paper 86
Henkel v. P&G Page 8
Whether an invention would have been obvious is a legal conclusion based on
the totality of the evidence, see Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1446,
1483, 44 USPQ2d 1181, 1187 (Fed. Cir. 1997), including underlying factual inquiries of
(1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the
differences between the claimed invention and the prior art; and (4) objective evidence
of nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17-18, 146 USPQ
459, 467 (1966).
B. Burden of proof on P&G
Our withdrawn decision (Paper 78) held that the subject matter of P&G’s claims
were patentably distinct from the subject matter of Henkel’s ‘434 application claim 41
and ‘578 application claim 44. Specifically, we held that P&G’s express claim limitation
that “the compressed portion dissolves at a faster rate than the non-compressed portion
on a weight by weight basis, measured using a SOTAX dissolution method” was not
anticipated or rendered obvious by the limitation “the dissolution rate of the compressed
region is greater than the dissolution rate of the solidified solution or melt region”
appearing in Henkel’s ‘434 application claim 41 and ‘578 application claim 44. As
Henkel pointed out in its request for reconsideration (Paper 79), these limitations were
in the parties’ respective claims when the interference was declared. Thus, a
presumption existed that the limitations did not patentably distinguish the parties’
claims. Chiong v. Roland, 17 USPQ2d 1541, 1544 (Bd. Pat. App. & Int. 1990). A party
challenging this status quo has the burden of proof. 37 CFR § 41.121(b). As P&G
asserts that there is no interference-in-fact, it bears the burden of proof.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007