Nexus Analysis – SOUTH ALABAMA MEDICAL SCIENCE V GNOSIS S.P.A.

Certain claims of Appellant’s (“SAMSF”) three patents were reviewed by the Board at the request of Appellee (“Gnosis”). The Board found all contested claims to be obvious due to two prior art references; a European patent application and a US patent. Due to similarity in purpose and disclosure of references, a person having ordinary skill in the art would be “motivated to combine them to arrive at the claimed use.” The Board concluded that SAMSF was unable to “demonstrate an adequate nexus between that evidence and the novel features of the contested claims.” SAMSF appealed.

The first discussion the Federal Circuit made was regarding obviousness. The Federal Circuit stated that underlying findings of fact for obviousness “include the motivation to combine multiple prior art references and any objective indicia of non-obviousness.”

The Federal Circuit concluded that substantial evidence supported the Board’s finding that the commercial success of products listed by the appellant “was inadequately linked to the claimed methods and composition” and agreed with the Board’s finding that appellant was unable to provide an “adequate basis to support the conclusion that other embodiments falling within the claim will behave in the same manner.” Thus, it was found that the novel features of the invention were not adequately tied to the evidence. In the light of these findings, the relevant claims of the patent were invalidated.

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