United States Court of Appeals 

for the Federal Circuit

______________________ 

SCIENTIFIC PLASTIC PRODUCTS, INC.,

Appellant,

v.

BIOTAGE AB,

Appellee.

______________________ 

2013-1219, -1220, -1221

______________________ 

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Reexamination Nos. 95/000,495, 95/000,496, and 95/000,497. 

______________________ 

Decided: September 10, 2014

______________________ 

FREDERICK C. LANEY, Niro, Haller & Niro, of Chicago, 

Illinois, argued for appellant. With him on the brief was

PAUL K. VICKREY. Of counsel on the brief was DAVID M.

QUINLAN, David M. Quinlan, P.C., of Princeton, New 

Jersey. 

GEORGE C. BECK, Foley & Lardner, LLP, of Washington, DC, argued for appellee. With him on the brief were 

MICHAEL R. HOUSTON, of Chicago, Illinois, and DEBRA D.

NYE, of San Diego, California.

______________________ 
2 SCIENTIFIC PLASTIC PRODUCTS v. BIOTAGE AB

Before NEWMAN, MOORE, and WALLACH, Circuit Judges.

Opinion for the court filed by Circuit Judge NEWMAN. 

Dissenting opinion filed by Circuit Judge MOORE. 

NEWMAN, Circuit Judge. 

Scientific Plastics Products, Inc. (SPP) is the owner of

the three United States Patents here at issue: No. 

7,138,061 (the ’061 patent), No. 7,381,327 (the ’327 patent), and No. 7,410,571 (the ’571 patent), which relate to 

a resealable cartridge for low pressure liquid chromatography (LPLC). The ’061 patent claims a method of performing LPLC using the cartridge, the ’571 patent claims 

the cartridge, and the ’327 patent claims a modified 

cartridge. After SPP filed suit against Biotage AG for 

patent infringement, Biotage requested inter partes 

reexamination of the three patents. The district court 

then stayed the infringement litigation.

The patent examiner rejected all claims of the three 

patents on the ground of obviousness, and the Patent 

Trial and Appeal Board affirmed the rejections and cancelled all claims.1 We affirm the Board’s decisions. 

BACKGROUND

The SPP patents discuss the need for a low cost resealable cartridge for LPLC that provides a fluid tight 

seal under pressure. The claimed cartridge, illustrated at 

Figure 1 of the ’327 patent, comprises a tubular container 

1 Biotage AB v. Scientific Plastic Prods., Inc., No. 

2012-007321, 2012 WL 6043584 (P.T.A.B. Nov. 30, 2012) 

(’327 patent); No. 2012-007322, 2012 WL 6043585

(P.T.A.B. Nov. 30, 2012) (’061 patent); No. 2012-012468, 

2012 WL 6043586 (’571 patent) (P.T.A.B. Nov. 30, 2012). 

The opinion for each appeal is effectively identical; Board 

Op. citations herein are to the ’061 patent decision.

 
SCIENTIFIC PLASTIC PRODUCTS v. BIOTAGE AB 3

20 having a threaded polymer cap 28 and a sealing flange

40.

Claim 1 of the ’327 patent is the broadest cartridge 

claim: 

1. A low pressure liquid chromatographic cartridge having a longitudinal axis, comprising: 

a tubular polymer container adapted to receive a chromatographic packing material, the 

container having an outlet port located at a downstream end of the container and configured for 

connecting to chromatographic equipment during 

use of the cartridge, the container having container threads formed on an upstream end of the container and a lip defining an opening to the 
4 SCIENTIFIC PLASTIC PRODUCTS v. BIOTAGE AB

container with an inward facing inclined sealing 

surface adjacent the lip and facing the longitudinal axis;

a polymer cap having an inlet port located on 

an upstream end of the container, the port being 

configured for connecting to chromatographic 

equipment during use of the cartridge, the cap 

having cap threads located on a skirt of the cap to 

threadingly engage the container threads; 

an annular sealing flange depending from the 

cap and located radially closer to the longitudinal 

axis than the skirt, the flange having an outward 

facing inclined sealing surface facing away from 

the axis with an upstream end of the flange being 

further from the axis than a downstream distal 

end of the flange; the outward facing inclined surface on the flange generally aligned with and located to abut the inward facing inclined surface 

on the container to form a resilient fluid tight seal

between the cap and container suitable for use in 

low pressure liquid chromatography when the cap 

is screwed onto the container.

The primary issue on reexamination concerned the 

obviousness of combining the LPLC cartridge shown in 

the Yamada reference with the King or Strassheimer 

pressure-resistant caps. These references are: 

U.S. Patent No. 5,693,223 (Yamada): 

Yamada shows an LPLC cartridge having a tubular 

polymer container with an open upstream end and an

outflow at the downstream end. Yamada shows a threaded polymer cap for the cartridge that is “detachably” fitted 

to the corresponding threaded upstream end of the cartridge body. Yamada further shows an O-ring in the cap 

to ensure liquid tightness. The examiner found that 

Yamada discloses all of the features of the SPP cartridge 
SCIENTIFIC PLASTIC PRODUCTS v. BIOTAGE AB 5

except for the complementary inclined sealing surfaces of 

the cap and the lip of the container.

PCT publication WO 2002/42171A1 (King):

King relates to “improved seals for container closure 

assemblies,” and is “especially applicable to the sealing of 

containers in substantially gas-tight and liquid-tight 

fashion, such as the sealing of . . . beverage containers.” 

King shows a “container closure assembly” with a threaded polymer cap that ensures a fluid tight seal. The examiner found that King shows sealing surfaces that have 

oppositely inclined surfaces with respect to the cap and lip 

of the container, as in the SPP closure.

U.S. Patent No. 5,100,013 (Strassheimer):

Strassheimer relates to plastic bottles and closures 

therefor that are “especially useful for carbonated beverages.” Strassheimer shows a plastic threaded cap that

ensures a fluid tight seal “even after repeated use.” The

examiner found that Strassheimer shows a taper on the 

lip of the plastic container that corresponds to a taper on 

the cap, as in the SPP closure. 

The examiner concluded that it would have been obvious to combine the cartridge of Yamada with the cap of 

either King or Strassheimer. On appeal to the Board, 

SPP challenged (1) the examiner’s determination that 

King and Strassheimer were “analogous art” and (2) that 

it would have been obvious to combine the LPLC cartridge 

of Yamada with the pressure-resistant resealable cap of 

either King or Strassheimer.

To be deemed “analogous art,” a reference outside an 

inventor’s field of endeavor must be “reasonably pertinent” to the particular problem with which the inventor is 

involved, such that a person of ordinary skill would reasonably have sought a solution to the problem in that 

outside field. The Board stated that “[h]ere, Patent 

Owner identifies one of the purposes of the ’061 Patent as 
6 SCIENTIFIC PLASTIC PRODUCTS v. BIOTAGE AB

forming an LPLC cartridge that ‘would allow a user to 

easily vary and access the cartridge’s contents without 

destroying its ability to be sealed and function under the 

LPLC pressures.’” Board Op. at *6 (quoting Appellant Br. 

11). The Board found that King and Strassheimer were 

relevant to SPP’s identified purpose, and therefore were 

analogous art: 

Therefore, it was reasonable for the Examiner to 

find that one of ordinary skill in the art would 

have found the disclosures of King and Strassheimer relevant in constructing a plastic container that achieves a fluid tight seal at elevated 

pressure, while preserving access to the container 

in order to easily vary its contents.

Board Op. at *7. 

The Board also addressed SPP’s argument that the 

examiner failed to provide adequate reasoning for combining Yamada with King or Strassheimer. The Board found

that the specification of the SPP patents identified a 

leakage problem associated with threaded connections 

between the polymer cap and polymer body in LPLC 

cartridges, and that Yamada’s use of an O-ring in the 

cartridge “implicitly acknowledges” potential leakage. Id. 

The Board concluded that this known problem “provides a 

reason for one of ordinary skill to have turned to King or 

Strassheimer to improve the sealing arrangement set 

forth in Yamada.” Id.

DISCUSSION

Criteria for determining whether prior art is analogous may be summarized as “(1) whether the art is from 

the same field of endeavor, regardless of the problem 

addressed, and (2) if the reference is not within the field 

of the inventor’s endeavor, whether the reference still is 

reasonably pertinent to the particular problem with which 

the inventor is involved.” In re Clay, 966 F.2d 656, 658–
SCIENTIFIC PLASTIC PRODUCTS v. BIOTAGE AB 7

59 (Fed. Cir. 1992). The question here is whether King or 

Strassheimer meets the second criterion. Precedent 

provides guidance as to when a reference is reasonably 

pertinent to the problem: 

“A reference is reasonably pertinent if . . . it is one 

which, because of the matter with which it deals, 

logically would have commended itself to an inventor’s attention in considering his problem. If a 

reference disclosure has the same purpose as the 

claimed invention, the reference relates to the 

same problem, and that fact supports use of that 

reference in an obviousness rejection.”

Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 

1314, 1321 (Fed. Cir. 2011) (quoting Clay, 966 F.2d at 

659); see also In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 

2011) (same standard). The pertinence of the reference as 

a source of solution to the inventor’s problem must be 

recognizable with the foresight of a person of ordinary 

skill, not with the hindsight of the inventor’s successful 

achievement. See In re Oetiker, 977 F.2d 1443, 1447 (Fed. 

Cir. 1992) (“Patent examination is necessarily conducted 

by hindsight, with complete knowledge of the applicant’s 

invention . . . .”); see also KSR Int’l Co. v. Teleflex Inc., 550 

U.S. 398, 421 (2006) (“A factfinder should be aware, of 

course, of the distortion caused by hindsight bias and 

must be cautious of arguments reliant upon ex post reasoning.”).

The Board found that the central purpose of the SPP 

inventors was to form “an LPLC cartridge that ‘would 

allow a user to easily vary and access the cartridge’s 

contents without destroying its ability to be sealed and 

function under LPLC pressures.’” Board Op. at *6 (quoting Appellant Br. 11). The Board concluded that a person 

of ordinary skill seeking such a cartridge would reasonably look to sealing arrangements for other pressurized 

systems. Thus the Board held that replacement of the 
8 SCIENTIFIC PLASTIC PRODUCTS v. BIOTAGE AB

sealing arrangement of Yamada with the sealing arrangement of King or Strassheimer was an obvious solution to the problem of providing a resealable cartridge 

that achieves a fluid tight seal at elevated pressures.

SPP disagrees with the Board’s characterization, and 

states that the purpose of its invention is to “provide

chemists with a low cost disposable chromatography 

cartridge that can function under LPLC pressures and 

simplify the chemist’s ability to control the chromatographic packing material and the introduction of fluids 

into the cartridge under pressure.” Appellant Br. 25–26. 

SPP argues that the needs identified in the specification 

are specific to flash chromatography, and that chemists in 

laboratories would not look to “soda-pop” bottle caps to 

solve problems with flash chromatography cartridges. 

However, the analogous art inquiry does not exclude 

references “not within the field of the inventor’s endeavor,” if a person of ordinary skill would reasonably look to 

that reference in order to solve the problem confronting 

the inventor. In re Clay, 966 F.2d at 659. 

SPP states that the purposes of the invention and the

prior art must be considered as a whole, in contrast to 

focusing on specific components. SPP argues that “[b]y 

focusing just on sealing issues, the Board improperly 

narrowed its focus to commonality for particular features 

instead of answering the central question of whether the 

reference’s field itself is even one a skilled artisan would 

have reasonably looked to, which requires a focus on the 

claimed invention.” Appellant Br. 33.

The Board observed that when the problem an invention is designed to solve is not unique to the specific field 

of the invention, it is not improper for the trier of fact to 

consider whether a person of ordinary skill would consult 

a different art in order to solve the problem. See In re 

Paulsen, 30 F.3d 1475, 1481–82 (Fed. Cir. 1994) (affirming rejection of a laptop computer hinge as obvious over 
SCIENTIFIC PLASTIC PRODUCTS v. BIOTAGE AB 9

hinged cabinets, piano lids, etc., because the “problem is

not unique to portable computers”); Pentec, Inc. v. Graphic 

Controls Corp., 776 F.2d 309, 314 (Fed. Cir. 1985) (affirming invalidation of a patent for a hinged pen arm because 

a person skilled in pen art would have looked to hinge and 

fastener art for a way to attach a pen to a pen arm).

Other cases have found that a particular reference 

was not analogous art when the field was not an obvious 

area to be consulted. In In re Oetiker, the court held that 

a person of ordinary skill, seeking to solve the problem of 

fastening a hose clamp, would not reasonably be expected 

to look to the field of fasteners for women’s garments. See

977 F.2d at 1446–47 (“The Board apparently reasoned 

that all hooking problems are analogous.”). The analogous art inquiry is a factual one, requiring inquiry into 

the similarities of the problems and the closeness of the 

subject matter as viewed by a person of ordinary skill. 

Here, the King and Strassheimer references address 

the problem of providing a fluid tight seal at elevated 

pressures, between a container and a resealable cap. This 

is sufficiently close to the problem addressed by the 

claimed invention; substantial evidence supports the 

Board’s finding that King and Strassheimer are available 

as prior art. 

The question remains as to whether combining the 

cartridge of Yamada with the pressure-resistant cap of 

King or Strassheimer would have been obvious to a person of ordinary skill in the field of liquid chromatography 

devices. In KSR, the Court explained:

[A] patent composed of several elements is not 

proved obvious merely by demonstrating that each 

of its elements was, independently, known in the 

prior art. Although common sense directs one to 

look with care at a patent application that claims 

as innovation the combination of two known devices according to their established functions, it 
10 SCIENTIFIC PLASTIC PRODUCTS v. BIOTAGE AB

can be important to identify a reason that would 

have prompted a person of ordinary skill in the 

relevant field to combine the elements in the way 

the claimed new invention does.

550 U.S. at 418. 

Applying these principles, the Board concluded that 

the “known problem of leakage in threaded connections of 

plastic LPLC cartridges under pressure identified in the 

[patents] provides a reason for one of ordinary skill in the 

art to have turned to King or Strassheimer to improve the 

sealing arrangement set forth in Yamada.” Board Op. at 

*8. The Board cited a statement in the SPP patents that 

explained that because prior art LPLC cartridges “leak at 

the seams[,] [t]hreaded connections are thus not used to 

form the body of [LPLC cartridges] when the body is made 

out of polymers.” Id. at *6. The Board noted SPP’s argument that Yamada, a polymer cartridge with threaded 

connections, does not explicitly disclose a leakage problem. However, the Board found that “by providing for the 

presence of an O-ring, Yamada implicitly acknowledges 

that there is a potential leakage issue between the cap 

and column body of the plastic cartridge.” Id. at *7.

SPP argues that the Board improperly relied on the 

inventors’ description of the problem solved in order to 

find the solution obvious, an analytic procedure that relies 

on hindsight by using the inventors’ own reasoning

against them. SPP points out that the statement in the

patents that threaded connections are not used with 

plastic LPLC cartridges was actually incorrect, as evidenced by the Yamada reference, which shows a plastic 

LPLC cartridge with threaded connections. SPP argues

that a person of ordinary skill would not have perceived 

any need to improve such cartridges, and that only 

through improper hindsight was the Board able to justify 

its finding of a known leakage problem.
SCIENTIFIC PLASTIC PRODUCTS v. BIOTAGE AB 11

SPP is correct that obviousness is not determined by 

hindsight. However, the issue here is not whether the 

Yamada cartridge leaked, but whether there was a concern with leakage in LPLC cartridges such that a person 

of ordinary skill would have provided a known pressureresistant cap, as in King or Strassheimer, to the cartridge 

of Yamada. Substantial evidence supports the Board’s 

finding that there was such a concern.

We conclude that the Board did not err in holding 

that it would have been obvious for a person of ordinary 

skill in the field of the invention to modify the chromatography cartridge of Yamada with the resealable threaded

cap of King or Strassheimer. This applies to the three 

patents whose reexamination decisions are here appealed. 

The Board’s decisions are

AFFIRMED. 
United States Court of Appeals 

for the Federal Circuit

______________________ 

SCIENTIFIC PLASTIC PRODUCTS, INC.,

Appellant,

v.

BIOTAGE AB,

Appellee.

______________________ 

2013-1219, -1220, -1221

______________________ 

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Reexamination Nos. 95/000,495, 95/000,496, 95/000,497. 

______________________ 

MOORE, Circuit Judge, dissenting.

I would find for the patentee. This is a two-reference 

obviousness rejection (Yamada and King or Yamada and 

Strassheimer), which I would reverse. The Board failed to 

provide substantial evidence that it would have been 

obvious to modify Yamada and it failed to determine the 

level of ordinary skill in the art. 

The claims at issue are directed to a flash chromatography cartridge to be used in low pressure liquid chromatography (LPLC). The primary reference, Yamada, is 

directed to a column device for use in LPLC. The Board 

determined that Yamada disclosed all the elements of the 
2 SCIENTIFIC PLASTIC PRODUCTS v. BIOTAGE AB

claims at issue except the inclined abutting surfaces of 

the cap and the lip of the container. The Board concluded 

that one of skill in the art would have been motivated to 

modify the Yamada structure by using the sealing structure disclosed in King or Strassheimer, both of which are 

directed to container closures for soda pop bottles. I 

dissent from the majority because this record does not 

contain substantial evidence that one of skill in the relevant art would have modified the chromatography cartridge in Yamada by replacing its sealing configuration 

with that of a soda pop bottle. 

The Board concluded that “known problem of leakage 

in threaded connections of plastic LPLC cartridges . . . 

provides a reason for one of ordinary skill in the art to 

have turned to King or Strassheimer to improve the 

sealing arrangement [of] Yamada.” Board Op. at *8. The 

majority cites two factual findings in support of this 

conclusion—that Yamada’s use of an O-ring “implicitly 

acknowledges” a “potential leakage issue,” and that the 

inventors’ statements in the patents allegedly identify a 

prior art leakage problem. Maj. Op. at 6; see also Board 

Op. at *7. Neither factual finding is supported by substantial evidence. These were contested inter partes 

reexaminations with experts on both sides, yet there is no 

testimony or other evidence of a known leakage problem 

in prior art cartridges that would have motivated one of 

skill in the art to modify Yamada. 

The Board’s finding regarding Yamada’s O-ring, 

Board Op. at *7, ignores the reality of the situation, which 

is that Yamada did not have a leakage problem. Yamada 

does not disclose leakage problems. Id. Even Biotage’s 

expert admitted that Yamada’s configuration did not have 

leakage problems at the pressures identified by the patents-at-issue. J.A. 501 ¶ 9, 613 ¶ 9, 713 ¶ 9. In fact, the 

Board found that Yamada’s configuration “ensure[s] 

liquid tightness.” Board Op. at *5. The time delay be-
SCIENTIFIC PLASTIC PRODUCTS v. BIOTAGE AB 3

tween the Yamada configuration and the inventions at 

issue also supports the fact that one of skill in the art 

would not have modified Yamada because it did not have 

a leakage problem. Yamada’s earliest priority date is 

more than ten years before the earliest filing date of the 

patents-at-issue. There is absolutely no evidence even 

suggesting that one skilled in the art was aware of a 

leakage problem in Yamada’s design during those ten 

years. The Board’s conclusion that Yamada’s O-ring 

“implicitly” acknowledges a “potential” leakage problem

such that one of skill in the art would have been motivated to modify Yamada is pure conjecture. We cannot rely 

on the Board’s speculation about a “potential” problem 

that, according to all of the evidence on record, never 

actually existed, to support a finding of obviousness. One 

of skill in the art would not have modified Yamada to fix a 

leakage problem that never existed in the first place. You 

wouldn’t seek to “improve [a] sealing arrangement” that 

doesn’t leak. 

The patents at issue do say: “This operating pressure 

is sufficiently high that these cartridges, which have 

relatively large diameter bodies, leak at the seams. 

Threaded connections are thus not used to form the body 

when the body is made of polymer.” ’061 patent col. 1 ll. 

16–19. As a preliminary matter, the statement, as the

parties acknowledge, is inaccurate. Yamada, for example,

uses threaded connections. This statement, in the patents, is not a recognition of a known prior art problem 

that would have motivated one of skill in the art to want 

to modify the Yamada design. It was a problem identified, not in the prior art, but by these inventors.

It is troubling that the majority and the Board rely on 

the inventors’ disclosure of the problem their inventions 

solve as the primary basis for modifying the prior art. 

This is hindsight of the worst kind, “wherein that which 

only the invention taught is used against its teacher.” 
4 SCIENTIFIC PLASTIC PRODUCTS v. BIOTAGE AB

W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 

1553 (Fed. Cir. 1983). The patents do not indicate that 

leakage was a problem identified in the prior art or a 

problem known to those of skill in the art. Rather they

indicate that the claimed design will avoid leakage. 

These inventors identified a design problem, articulated 

it, and solved it. There is absolutely no evidence of the 

existence of a known leakage problem that would have 

motivated skilled artisans to modify Yamada. The Board 

is taking the ingenuity of these inventors and, without 

any record basis, attributing that knowledge to all skilled 

artisans as the motivation to make the inventions at 

issue. Hindsight, hindsight, hindsight. 

These were inter partes reexamination proceedings

between sophisticated parties. Both parties put on expert 

testimony regarding obviousness. Yet there is no evidence that the chromatography cartridges in Yamada had 

a leakage problem that skilled artisans would have been

motivated to address. There is simply no evidence that 

one of skill in the art would have modified the Yamada 

cartridge using the soda pop bottle sealing mechanisms of 

King or Strassheimer to prevent a leakage problem that 

the Yamada cartridge did not have. 

I dissent for a second, independent reason. The Board

found the claims obvious without resolving the level of 

skill in the art. Oral Argument at 24:59–25:31, available 

at http://oralarguments.cafc.uscourts.gov/default.aspx?fl=

2013-1219.mp3. It is axiomatic that this is a “basic factual inquir[y]” required of any obviousness determination. 

Graham v. John Deere Co., 383 U.S. 1, 17 (1966). In most 

cases, there is no dispute over the level of the skilled 

artisan. But in this case, the parties contested this factual issue throughout the proceedings, and inexplicably the 

Board never resolved it. Oral Argument at 19:57–20:32, 

23:21–23:56, 24:59–25:31. The parties still dispute this 

issue on appeal. Compare Appellant’s Br. 21 (“A chemist
SCIENTIFIC PLASTIC PRODUCTS v. BIOTAGE AB 5

analyzing organic compounds would not look to soda-pop 

bottles to solve problems with flash chromatography 

cartridges.”) (emphasis added), with Appellee’s Br. 28–29 

(“SPP[] mischaracterizes the relevant person of ordinary 

skill to whom knowledge of analogous art would be attributable . . . . [T]he relevant person of ordinary skill in 

the art . . . would include a designer . . . skilled in mechanical engineering.”) (emphasis added). 

The Board’s failure to make this determination is especially pernicious where the analogous art question is far 

from clear. Soda pop bottles and methods for using chromatography cartridges are clearly not in the same field of 

endeavor. Instead, the dispute on appeal is whether the 

soda pop bottle references are both reasonably pertinent 

to the inventors’ problem. Maj. Op. at 6–7; see also In re 

Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). “Reasonably pertinent” means “which fields a person of ordinary 

skill would reasonably be expected to look for a solution to 

the problem facing the inventor.” Oetiker, 977 F.2d at 

1447 (emphasis added). An ordinarily skilled chemist 

would have likely looked to a different body of prior art 

than an ordinarily skilled mechanical engineer with 

industrial design experience. Even Biotage recognizes 

that the determination of the person of ordinary skill is 

inextricably linked to what art would have been analogous. Oral Argument at 25:31–25:43. We cannot answer 

the analogous art question without knowing who the 

person of ordinary skill is. 

I would reverse because I conclude that the Board’s 

cancellation of the claims at issue was based entirely on 

hindsight reconstruction—there is no record evidence that 

one of skill in the art would have been motivated to 

modify Yamada with soda pop bottle sealing closures. 

And the Board cannot transfer the inventors’ identification of the motivation for their patented design to the 

skilled artisan when there is no record evidence that the 
6 SCIENTIFIC PLASTIC PRODUCTS v. BIOTAGE AB

skilled artisan possessed that knowledge. Finally, where 

the level of ordinary skill, as here, is hotly contested and 

would affect the scope of the analogous art, the Board 

must decide that factual issue. I respectfully dissent.