In re Bergy Case Brief

Case Brief: In re Bergy 596 F.2d 952, 201 U.S.P.Q. (BNA) 352 (C.C.P.A. Mar. 29, 1979)

Facts:

In this case, a patent application filed by Mr. Bergy for a "Process for Preparing Cyclosporin" was rejected by the Patent Office on the ground of obviousness. Bergy appealed the decision to the United States Court of Customs and Patent Appeals (C.C.P.A.).

Procedural History:

Bergy's patent application was initially rejected by the Patent Office. He appealed the rejection to the C.C.P.A., which has jurisdiction over patent appeals. The C.C.P.A. reviewed the case to determine whether the rejection based on obviousness was justified.

Issue:

The main issue before the C.C.P.A. was whether the Patent Office's rejection of Bergy's patent application on the ground of obviousness was proper.

Rule:

Under U.S. patent law, an invention is considered obvious and not eligible for a patent if it would have been obvious to a person of ordinary skill in the relevant field at the time the invention was made.

Application:

The C.C.P.A. examined the facts and legal arguments presented in the case. It considered whether the rejection of Bergy's patent application based on obviousness was supported by the evidence.

The court analyzed the prior art references cited by the Patent Office to support the obviousness rejection. It examined the differences between Bergy's claimed invention and the prior art, as well as the level of skill possessed by a person in the relevant field at the time of the invention. The court also considered any evidence presented by Bergy to establish the non-obviousness of his invention.

After a thorough review, the C.C.P.A. concluded that the Patent Office had failed to establish a prima facie case of obviousness. The court found that the prior art references did not render Bergy's claimed invention obvious to a person of ordinary skill in the relevant field. The court highlighted the unexpected and significant results achieved by Bergy's process for preparing cyclosporin, which supported the non-obviousness of the invention.

The court further emphasized that the burden was on the Patent Office to prove obviousness by clear and convincing evidence. In this case, the Patent Office had not met that burden, and therefore, the rejection based on obviousness was deemed improper.

Conclusion: The Court of Customs and Patent Appeals (C.C.P.A.) reversed the rejection of Bergy's patent application based on obviousness. It held that the Patent Office had not established a prima facie case of obviousness, and the evidence supported the non-obviousness of Bergy's invention. The case was remanded to the Patent Office for further proceedings consistent with the court's decision.

Note: This case brief provides a summary of the court's decision and does not include an analysis of the legal reasoning behind the judgment. For a more comprehensive understanding of the case, it is advisable to refer to the full text of the court's opinion.