Not Just a Base, Use of “Swelling Agent” in a Claim for Emulsion Polymerization Patents: A Lesson from Organik Kimya AS v. Rohm

Abstract

Rohm & Haas Co. successfully defended the validity of their patents for manufacturing a core-shell polymer in Organik Kimya AS v. Rohm & Haas Co., 873 F.3d 887 (Fed. Cir. 2017). Relying on the specification and expert testimony, the Federal Circuit construed a key claim term, ‘‘swelling agent,’’ as a base capable of permeating the shell to swell the core. The construction distinguished the swelling agent from the same base use in the prior art. This article is intended to explore the Federal Circuit’s reasoning. In conclusion, two lessons can be learned from Organik Kimya AS. First, a claim may recite a functional description (e.g., ‘‘swelling agent’’) to describe an ingredient (e.g., potassium hydroxide). Second, the specification must describe a mechanism achieved by the function of the ingredient. Process conditions affecting the mechanism must also be specified. So, the same ingredient used in the claimed invention and prior art can be distinguishable because of different mechanisms involved.