Wherein Unexpected Results are Limiting
In Allergan Sales, LLC v. Sandoz, Inc. the Fed. Cir. affirmed the District Court’s claim interpretation to an ocular treatment method, comprising administering an ocular composition comprising active agents, wherein relative efficacy and safety results were claimed. Prior rulings would have rendered the claims obvious, unless the “wherein” clauses were construed as claim limitations. The majority concluded that the “wherein clauses” were material to patentability as the specification demonstrated increased efficacy and safety and the Patentee and the Examiner relied upon such evidence. In a concurring opinion Judge Prost reached the same conclusion based on the plain language of the claim. Practice tip, when claiming unexpected results, clearly argue your reliance and try to get the Examiner’s indication of reliance. When simply arguing unexpected results, adding a dependent claim to the observed result could provide a fallback position.