In a Federal Circuit decision this week, the Court affirmed the obviousness of claims involving a supplement ”essentially free of anti-oxidants,” even though the prior art identified some components as having antioxidant activity.

This case, In Re: Devlin, was an appeal to the Federal Circuit, after the Patent Trial and Appeal Board affirmed an Examiner’s rejection during prosecution. The claimed method involved an essentially antioxidant-free multiple-vitamin composition including Vitamin B6. Earlier in prosecution, the Examiner rejected the claims as indefinite, stating that Vitamin B6 can exhibit antioxidant activity. In response, the Applicant convinced the Examiner that compositions with Vitamin B6 could nonetheless be claimed as “essentially free of anti-oxidants.” Then the Examiner rejected the claims as obvious. While the compositions in prior art did not specifically exclude antioxidants, those compositions recited the same components as the composition claimed by the Applicant, including Vitamin B6.

Because the prior art noted that Vitamin B6 can have antioxidant effects, the Applicant tried to argue that the claimed composition was not obvious over the prior art. However, the Court found that where the Applicant defined the claim term “essentially free of anti-oxidants” to allow small amounts of Vitamin B6, which exhibits antioxidant activity, prior art compositions with similar amounts of such vitamins are understood to be “essentially free of anti-oxidants.” The Court additionally found that prior art does not teach away from antioxidant-free compositions merely because the specification provided preferred examples of compositions that include antioxidants, and expressed a preference for including antioxidants.

In many instances in prosecution, Applicants may have more success in drawing a distinction over the prior art based on the actual components within a composition, rather than based mainly on their function. Relying on a difference in how the prior art characterizes the function of the exact same components may not be an ideal strategy, unless the amounts are different in a way that affects the function. Additionally, Applicants should consider that comments made to overcome one rejection may have implications for other types of rejections.