Board of Patent Appeals Rejects Dow Chemical’s Patent Application

MARK TERRY, ESQ.

In a decision involving Dow Chemical Company, the Board of Patent Appeals and Interferences affirmed an anticipation rejection under 35 U.S.C. 102 directed to crystalline drug particles designed to improve bioavailability and dissolution rates.

The examiner relied on a prior patent and identified where each claimed element appeared. Once that prima facie showing was made, the burden shifted to Dow to demonstrate that the prior-art particles did not inherently possess the claimed crystalline characteristics.

Dow responded that the reference did not teach particles with the claimed crystalline domains, but it did not provide scientific evidence, technical literature, or a detailed explanation supporting that conclusion.

The Board held that the response misplaced the burden. Because the examiner had supplied significant evidence and Dow offered no proof that the prior-art particles differed from the claimed particles, the rejection was affirmed.

Practical takeaway: Once an examiner establishes a prima facie case of anticipation, a conclusory disagreement is rarely enough. Applicants should directly address each disputed element and support technical assertions with evidence.