If a Claim Limitation Is Inherent, There Is No Question of a Reasonable Expectation of Success in Achieving It

Does a claim that merely recites an inherent property of an otherwise obvious claim require an additional analysis to demonstrate that a person of ordinary skill in the art would have had a reasonable expectation of success in arriving at the claim? In Cytiva BioProcess R&D AB v. JSR Corp., the U.S. Court of Appeals for the Federal Circuit concluded that this additional showing is not required. 122 F.4th 876, 889 (Fed. Cir. 2024).

The claims at issue in Cytiva relate to chromatography matrices that contain a protein having a specific amino acid substitution (a G29A substitution in Domain C of Protein A). (See, for example, claim 1 of U.S. Patent No. 10,213,765 (the ’765 patent)). Certain dependent claims, including claim 4 of the ’765 patent, specify that the protein is capable of binding to a specific portion of an antibody. The Patent Trial and Appeal Board (the Board) found that the independent chromatography matrix claims were obvious and the dependent “binding” claims were inherent. (Id. at 884-885).

On appeal, Cytiva argued that the Board erred by not analyzing whether a person of ordinary skill in the art would have had a reasonable expectation of success in combining the disclosures of the prior art to arrive at the binding claims. (Id. at 889). JSR, on the other hand, argued that “the natural result of the … modification is the capability to bind to the Fab part of the antibody.” (Id.).

The Federal Circuit noted that “reasonable expectation of success is a question about the expectation of success in combining the references to meet the limitations of the claimed invention. (Id.; internal quotations removed). But the court concluded that “[n]o reasonable expectation of success argument or analysis is required where the sole disputed limitation was an inherent property of the claimed composition already determined to be obvious.” (Id. at 890-891). Thus, regarding the dependent claims that specify that the antibody binds to the protein, the court held that because those claims recite only a property that under the proper construction is an undisputedly inherent property, “there is no question of a reasonable expectation of success in achieving [the claimed invention].” (Id. at 891; internal quotations removed).