Did I Say That? The Narrow Divide Between § 102 and § 112 Arguments

While a line of argument in an IPR may seem promising to a patent owner addressing one particular ground of rejection, it is critical for the patent owner to analyze how the argument may impact other grounds of rejections. A seemingly necessary position against one ground may result in substantially limited options for the patent owner with respect to other rejections. While IPR proceedings are limited by statute to prior art challenges (novelty and obviousness), contingent amendments (substitute claims) are also subject to further analysis (such as scope and written description support). In a recent decision, the PTAB rejected a patent owner’s §§ 102 and 103 arguments relating to substitute claims, and then proceeded to perform an alternative analysis under § 112 (written description), finding that the outcome would not change, in part, because of the patent owner’s own § 102 argument.

In Nuseed Americas Inc. v. BASF Plant Science GmbH, IPR2017-002176 (P.T.A.B. April 10, 2019), the PTAB found claims relating to enzymes that convert damaging omega-6 fatty acids into beneficial omega-3 fatty acids unpatentable as anticipated. During the trial, the patent owner had submitted a contingent motion to amend that limited the enzymes to being “capable of” performing two desaturating enzymatic reactions. The Board found these claims were also invalid in view of two prior art references, each of which taught one of the two desaturating enzymatic reactions using the same enzyme in different systems.

The analysis hinged on the PTAB’s interpretation of “capable.” In arguing that the proposed substitute claims were patentable over the prior art, the patent owner contended that the functionality of the enzyme is system-specific; that is, just because the enzyme makes the conversion in one system, it will not necessarily perform the conversion in another system. But while the argument was essential to address the prior art, it became detrimental to the patent owner’s subsequent written description arguments.

In its final written decision, the PTAB limited the term “capable” to meaning only that the enzyme is able to perform the conversion, not that it actually performs the conversion. Accordingly, the proposed substitute claims were found unpatentable as anticipated. The PTAB then proceeded to perform an alternative analysis. Under 35 U.S.C. § 316(d), substitute claims must have written description support; however, the PTAB also found the proposed claims invalid for lack of written support. As the patent only disclosed data relating to one enzyme in one system, the PTAB found the patent owner’s argument that the functionality of the enzyme is system-specific to be inconsistent and therefore sufficient to deny entry of the proposed substitute claims.    


This case provides an important reminder to practitioners: consider arguments and statements carefully in light of any and all possible rejections. While the bases for instituting IPRs are novelty and non-obviousness, substitute claims are subject to the same “no new matter” requirement of claims during prosecution, including satisfying the § 112 written description standard. Correspondingly, when making arguments relating to one type of rejection, such as non-obviousness and/or novelty, it is critical to also evaluate how the arguments will relate to other potential rejections, such as written description.