The opinion of the court was delivered by: James Robertson United States District Judge
Inventor Earnest A. Voisin of Innovatit Seafood discovered that subjecting shellfish to high pressure can rid them of harmful pathogens without cooking them. Voisin applied for a patent on his pressure-pasteurization process (the '725 application), as well as for the product that this process produced (the '704 application). The patent examiner rejected both applications. It seems that, although the pasteurization achieved by Voisin's method of applying pressure to shellfish is novel, the idea of applying pressure to shellfish, and a process for producing a pasteurized, shucked oyster, are not. A Japanese patent to Yasushi (JP '156) teaches mollusk pressurization as a means of relaxing the adductor muscle and shucking the shellfish, and a U.S. patent issued to Tesvich (the '064 patent) produces an oyster that is pasteurized and shucked. The first question presented in this case is whether the application of the old process to the new purpose, without any meaningful change in the procedure, is patentable over the Japanese reference. The second question is whether a product is patentable if disclosed by an earlier reference to a different process. The answer to both questions is No.
These cases arise under 35 U.S.C. § 145, which authorizes a patent applicant to sue for a patent in this district when "dissatisfied" with the final decision of the Board of Patent Appeals and Interferences.*fn1 In such a suit, the PTO is treated as an administrative agency and its decisions are afforded the deference that other agencies receive when adjudicating facts within their zone of competence. See Mazzari v. Rogan, 323 F.3d 1000, 1004-05 (Fed. Cir. 2003). Findings of fact are subject to the "substantial evidence" standard. Id. at 1005. Under the Federal Circuit's somewhat elusive precedents, anticipation is regarded as a question of fact, see In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997), while obviousness is regarded as "a question of law based on underlying findings of fact." In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). In short, the presumption is that the technical expertise of the PTO and the Board is entitled to substantial deference -- its finding of anticipation will be upheld if there is substantial evidence in the record to support it, and its finding of obviousness will be affirmed if appropriate based on its own findings of fact regarding the state of the art.
No. 06-0822 -- The '725 Process Patent Claim
1) Anticipation as to Claims 6 and 27
The applicable standard of review drives the answers to many of the preliminary arguments that Innovatit raises in attempting to refute the PTO's finding that Claims 6 and 27 of its patent application are anticipated by the Japanese reference. A finding of anticipation under 35 U.S.C. § 102 "requires that all of the elements and limitations of the claimed subject matter must be expressly or inherently described in a single prior art reference." Elan Pharm. Inc., v. Mayo Found., 304 F.3d 1221, 1227 (Fed. Cir. 2002). Innovatit claims that its patent contains two limitations different from JP '156: (1) it discloses a different range of times and pressures for the prescribed mollusk pressurization, and (2) it teaches doing the process at ambient temperature, whereas JP '156 is silent as to temperature. There is substantial evidence in the record to support the Board's conclusion that these limitations do not distinguish the '725 application from the Japanese reference.
First, the time-pressure envelope disclosed by JP '156 is covered almost entirely by the range taught in Innovatit's application. See  at 15, fig. 1, for a helpful visual display. While the Federal Circuit has declined to find anticipation in cases of very slight overlap, see Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 1000 (Fed. Cir. 2006), it has routinely found anticipation where a claimed range substantially overlaps with ranges disclosed in the prior art. See, e.g., Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1377 (Fed. Cir. 2005); Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1345 (Fed. Cir. 1999); Titanium Metals Corp. v. Banner, 778 F.2d 775, 781 (Fed. Cir. 1985). Moreover, the holding in Atofina was expressly predicated on the fact that the prior art reference did not disclose any point in particular that would be encompassed by the range claimed in the application. See 441 F.3d at 1000 ("The disclosure is only that of a range, not a specific temperature in that range."). Here, it is beyond dispute that the range claimed by Innovatit's application encompasses not only the vast majority of the range claimed in JP '156, but also the particular pressure-time value taught in its specific embodiment. Deference is due to the PTO's conclusion that the range claimed by Innovatit is anticipated in light of its overlap with the range in the prior art, and that conclusion is supported by more than substantial evidence.
Innovatit also argues that it limits its process by requiring that it be conducted "without application of heat," a claim limitation absent from JP '156. But such a "negative limitation," -- an instruction in the patent not to do something -- has only limited power to bring novelty to an otherwise anticipated patent. See Upsher-Smith Labs., Inc. v. Pamlab, 412 F.3d 1319, 1322 (Fed. Cir. 2005) (a patent that optionally includes a step can anticipate a patent that specifically excludes it). Novelty is not created by a negative limitation where one skilled in the art would have read the prior art reference to exclude the relevant step. Cf. In re Baxter Travenol Labs., 952 F.2d 388, 390-91 (Fed. Cir. 1991). Here, there is no indication that JP '156 contemplates the addition of heat, and indeed, when the inventor of the Innovatit process himself tried to recreate the results of the process taught in the Japanese reference, he performed his trial at ambient temperature. The Board thus concluded that one skilled in the art would have understood the process in JP '156 to have been carried out at ambient temperature, and there is substantial evidence to support that factual finding. The negative, ambient-temperature limitation of the Innovatit application thus cannot create patentable novelty.
This brings us to Innovatit's main line of argument -- that its process is distinguished by the fact that it is used, not to shuck the shellfish, but to pasteurize them. The question presented by this purposive argument is interesting, but ultimately simple. The clearest indication that the '725 application is not patentable over JP '156 is that it is plain that the practice of the specific embodiment in the prior reference would infringe the claims of the '725 application if the '725 application were granted, and it is a very old maxim of patent law that "that which infringes if later anticipates if earlier." E.g., Brown v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001) (citing Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889)).
Claim 6 of the '725 application is representative and comprises:
exposing raw oysters to hydrostatic pressure of between 20,000 p.s.i. and 80,000 p.s.i. for 1-15 minutes at ambient temperature, without causing thermal or mechanical damage to the raw oysters, thereby eliminating pathogenic Vibriones bacteria in said raw oysters, preventing deterioration of said raw oysters, while retaining sensory characteristics of said raw oysters.
The specific embodiment of JP '156 teaches placing oysters and seawater into a pressure processing device, whereupon "a high pressure at 3000 normal atmospheres [44087.85 p.s.i.] is applied for 3 minutes." All the process steps of Claim 6 are thus met by the embodiment in JP '156: the oysters are "exposed" to pressure "between 20,000 p.s.i. and 80,000 p.s.i." for a period of "1-15 minutes." The claim limitation of "eliminating pathogenic Vibriones bacteria" is not a process step; it is an outcome which "thereby" results when the specified pressure is applied for the specified period of time. As the PTO points out, the '725 application would not be enabling if elimination of the bacteria did not inevitably result from pressurization within the ranges taught, because the application teaches no other method for completing the claimed step of "eliminating pathogenic Vibriones bacteria." Thus, a person practicing the embodiment taught in JP '156 would infringe the '725 application if it were granted, and so the Japanese patent, being earlier in time, anticipates the Innovatit invention.
This is exactly what is at stake in the parties' disagreement over "inherency." The PTO argues that the '725 application is not distinguished from JP '156 because the added claim limitation -- elimination of pathogenic bacteria -- was an inherent element of the already patented process. See  at 16-17 (citing In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002)). Innovatit responds that in order to show inherency, the PTO must "make clear that the missing descriptive matter [elimination of bacteria] is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill" in the art. See Cont'l Can Co. v. Monsanto, 948 F.2d 1264, 1268 (Fed. Cir. 1991) (emphasis added). It further argues that there ...