Archive for the ‘Non-obviousness’ Category

Rendering prior art inoperable for its intended purpose

Wednesday, October 16th, 2013

Patent prosecutors are familiar with MPEP sections 2143.01 (V) and 2143.01(VI).  Those sections recite:

2143.01 (V.)   THE PROPOSED MODIFICATION CANNOT RENDER THE PRIOR ART UNSATISFACTORY FOR ITS INTENDED PURPOSE

If proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) (Claimed device was a blood filter assembly for use during medical procedures wherein both the inlet and outlet for the blood were located at the bottom end of the filter assembly, and wherein a gas vent was present at the top of the filter assembly. The prior art reference taught a liquid strainer for removing dirt and water from gasoline and other light oils wherein the inlet and outlet were at the top of the device, and wherein a pet-cock (stopcock) was located at the bottom of the device for periodically removing the collected dirt and water. The reference further taught that the separation is assisted by gravity. The Board concluded the claims were prima facie obvious, reasoning that it would have been obvious to turn the reference device upside down. The court reversed, finding that if the prior art device was turned upside down it would be inoperable for its intended purpose because the gasoline to be filtered would be trapped at the top, the water and heavier oils sought to be separated would flow out of the outlet instead of the purified gasoline, and the screen would become clogged.).

“Although statements limiting the function or capability of a prior art device require fair consideration, simplicity of the prior art is rarely a characteristic that weighs against obviousness of a more complicated device with added function.” In re Dance, 160 F.3d 1339, 1344, 48 USPQ2d 1635, 1638 (Fed. Cir. 1998) (Court held that claimed catheter for removing obstruction in blood vessels would have been obvious in view of a first reference which taught all of the claimed elements except for a “means for recovering fluid and debris” in combination with a second reference describing a catheter including that means. The court agreed that the first reference, which stressed simplicity of structure and taught emulsification of the debris, did not teach away from the addition of a channel for the recovery of the debris.).

2143.01 (VI.)   THE PROPOSED MODIFICATION CANNOT CHANGE THE PRINCIPLE OF OPERATION OF A REFERENCE

If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d 810, 123 USPQ 349 (CCPA 1959) (Claims were directed to an oil seal comprising a bore engaging portion with outwardly biased resilient spring fingers inserted in a resilient sealing member. The primary reference relied upon in a rejection based on a combination of references disclosed an oil seal wherein the bore engaging portion was reinforced by a cylindrical sheet metal casing. Patentee taught the device required rigidity for operation, whereas the claimed invention required resiliency. The court reversed the rejection holding the “suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principle under which the [primary reference] construction was designed to operate.” 270 F.2d at 813, 123 USPQ at 352.).

Surprisingly, the issues of (1) whether a proposed combination of references renders one of the references inoperable for its intended purpose and  (2) whether a proposed combination of references changes the principle of operation of a reference don’t arise that often at oral argument at the Federal Circuit.  In the recent Rambus v. Rea case, however, these issues were discussed.  You can listen to the discussion here: [Listen].

You can listen to the entire oral argument here:  [Oral Argument].

You can read the court’s opinion here:  [Opinion].

Hindsight — In re NTP

Tuesday, August 30th, 2011

The decision in In re NTP, Inc., 2010-1243  (Fed. Cir. April 1,2011) has a good observation about hindsight analysis when a cited combination of  references results in a superfluous component.  While the facts of the opinion dealt with superfluous RF networks, one could see it being persuasive in regard to combinations of references that result in superfluous computer networks, transmitters, etc.  Judge Moore wrote for the panel (Gajarsa, Moore, and Clevenger):

As an initial matter, our construction of “electronic mail [message]” is irrelevant to this basis for rejection because the AAPA is the “Background Art” of the subject specifications that includes the four-item description of electronic mail. Further, the AAPA clearly teaches the other limitations of the claim with the exception of the RF network. Harrison teaches the use of an RF network to deliver data. Thus, the Board’s findings regarding the content of the references are supported by substantial evidence. However, we hold that, as a matter of law, the claims would not have been obvious to one of ordinary skill in the art based on the combination of the AAPA and Harrison. The Board improperly relied on hindsight reasoning to piece together elements to arrive at the claimed invention. “Care must be taken to avoid hindsight reconstruction by using `the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.’” Grain Processing Corp. v. American-Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)). Given any network, we could likely carve out a possible “interface” and combine it with Harrison to hold that the addition of a RF information transmission network would have been obvious. This type of piecemeal analysis is precisely the kind of hindsight that the Board must not engage in. The Board’s position is further weakened by the fact that the AAPA already discloses an RF network that connects portable computers to the system. ‘960 patent col.2 ll.1-4. Thus, adding an RF network to element #2 in the figure would render the RF network connecting the portable PCs in figure 1 superfluous. Because it is based on improper hindsight reasoning, we reverse the Board’s rejections based on the AAPA in view of Harrison.

In addition to the above comment by the panel that the PTO’s reasoning was based on hindsight, there was also a chorus of “hindsight” by the judges during the oral argument when the topic came up for discussion: [Listen].

You can read the entire opinion here: [Read].

You can listen to the oral argument here: [here].  The oral argument is extremely long (over three hours).  It was very well argued by both sides.

Professor David Nimmer excluded as an expert witness in copyright case???

Sunday, June 19th, 2011

Last week the Ninth Circuit decided the appeal in the copyright dispute over the television series “My Name is Earl.”  The panel deemed the case as not requiring an oral argument.

The most interesting aspect of the case is that David Nimmer (of the Nimmer on Copyright treatise) was excluded as an expert witness by the district court judge and the Ninth Circuit panel did not view this as an abuse of discretion.  The panel wrote:

The district court also did not err in excluding expert testimony from David Nimmer and Eric Sherman.1 Some of Nimmer’s testimony contained inadmissible legal conclusions. See United States v. Scholl, 166 F.3d 964, 973 (9th Cir. 1999). According to the district court, although each were recognized to have a separate area of expertise, both Nimmer and Sherman also failed to establish that they had “knowledge, skill, experience, training, or education” relevant to the evidence at issue.  Fed. R. Evid. 702. Determinations of whether a particular witness has such expertise is “peculiarly within the sound discretion of the trial judge” and reviewing courts afford “a high degree of deference to the district court’s findings.” United States v. Chang, 207 F.3d 1169, 1172 (9th Cir. 2000) (citations and internal quotation marks omitted). The district judge in this case did not abuse his discretion in excluding Nimmer’s and Sherman’s testimony.

         (Emphasis added.)

The issue is made more clear by reviewing the district court opinion.  The district court noted that Nimmer is an expert with respect to legal issues of copyright law but was not established to be an expert witness with respect to literary issues.  The district court wrote:

Here, Plaintiff has not demonstrated that Nimmer is qualified to render an expert opinion on the issue of substantial similarity between two literary works. Nimmer’s experience, training, and education establish that Nimmer undoubtedly is an expert in the field of copyright law. He is a graduate of Yale Law School, and a partner at the Los Angeles-based firm of Irell & Manella. He specializes in and teaches copyright law and is the current author of the preeminent copyright treatise Nimmer on Copyright, which is often cited by appellate courts, including the Supreme Court. Over the past three decades, Nimmer has published numerous books and dozens of articles on copyright law, spoken at many copyright law conferences, and taught seminars to federal judges on the issue of substantial similarity in copyright law. Given this extensive background, there can be no question that Nimmer is well-qualified to perform a legal analysis regarding copyright claims. However, as discussed below, an expert cannot offer his legal opinion as to whether a triable issue of fact exists regarding copyright infringement; such an analysis is the exclusive province of the Court.

Instead, the relevant issue on summary judgment, and indeed the subject matter upon which Nimmer seeks to opine, is whether there is substantial similarity in the objective elements of theme, plot, dialogue, characters, sequence of events, mood, pace, and setting between Karma! and Earl. In short, Nimmer was tasked with performing a literary analysis of two fiction works. However, Nimmer offers little explanation as to how his legal expertise qualifies him to compare a screenplay and a television series on the eight criteria mentioned. Notably absent from Nimmer’s report and declarations is any indication that Nimmer has experience, knowledge, training, or education in the literary field—for example, there is no evidence 834*834 that Nimmer has ever worked as a film critic, a publisher, an. English professor, an editor or director, that Nimmer writes fiction works, or even that Nimmer is an avid movie buff or television-watcher. While the Court recognizes that the task of comparing two fiction works is not highly technical, and indeed requires no specific training, to offer an expert literary analysis there must be some indication that Nimmer has, in one capacity or another, watched, read, written, compared and/or analyzed literary works.[14] See e.g., Stewart v. Wachowski, 574 F.Supp.2d 1074, 1106 n. 130 (C.D.Cal.2005) (expert was an English professor who had previously testified in several matters regarding substantial similarity); West v. Perry, No. 2:07CV200, 2009 WL 2225569, at *5 (E.D.Tex.2009) (among other qualifications, expert had a film degree, was an accomplished screenwriter, and had worked as a screen credit arbitrator for the Writer’s Guild of America); A Slice of Pie Productions, LLC v. Wayans Bros. Entertainment, 487 F.Supp.2d 33, 41 (D.Conn.2007) (expert had extensive experience teaching, evaluating, studying, and writing about screen writing). No such evidence exists here.

Further, Nimmer’s prior experience as an expert witness or consultant, with perhaps one or two exceptions, is not relevant to the literary analysis offered in this case. Nimmer lists several cases in which he previously offered expert testimony regarding the substantial similarity of works such as technical drawings, architectural plans, bingo cards, instructions for the use of pesticides, and computer software. (Supp. Nimmer Decl. ¶¶ 7-10.) Nimmer does not explain the specific analysis he performed; however, his assignments in those cases did not involve fiction works such as television shows, plays, movies, or books. Thus, this prior experience does not inform the literary analysis offered here.[15] There are two instances in which Nimmer may have performed a similar analysis as that offered here, although given the vague descriptions of these assignments, it is difficult to know for certain. First, Nimmer declares that he assisted a publisher in overturning an injunction in a copyright case involving a comparison between 835*835 Margaret Mitchell’s Gone with the Wind and Alice Randall’s The Wind Done Gone. But Nimmer fails to describe the issue that he was asked to analyze or the opinion he ultimately rendered in that case.[16] (Id. ¶ 11.) Nimmer also notes one assignment, in Time Warner Entertainment Co. v. Continental Casualty Co., Case No. 02-01885 R (C.D.Cal.), where he was asked to compare a revised screenplay with the motion picture Contact and concluded that the unlicensed, protectable expression from the screenplay that was used in the film gave rise to a valid copyright claim. (Id. ¶ 6.) While this prior experience appears relevant, the fact that Nimmer testified as an expert once before in a case involving literary works is not a sufficient basis, without more, to accept his testimony here.[17]

In sum, Nimmer’s specialized knowledge of copyright law and his legal expertise does not qualify him as a literary expert. See, e.g., Gen. Battery Corp. v. Gould, Inc., 545 F.Supp. 731, 750 n. 24, 759 n. 30 (D.Delaware 1982) (patent lawyer, although knowledgeable about the patent office procedure, was not qualified to give an expert opinion on infringement where he was not skilled in the relevant art of the patented products); United States v. Chang, 207 F.3d 1169, 1172-73 (9th Cir. 2000) (witness who was “extremely qualified” in international finance was not qualified to render an opinion on the authenticity of a securities certificate where he had no training in identification of counterfeit securities); In re Canvas Specialty, Inc., 261 B.R. 12 (C.D.Cal.2001) (witness not qualified where witness was an architect but had not demonstrated how his training as an architect gave him the necessary expertise to determine whether metal cabanas met contract requirements or had structural defects). As such, Nimmer’s opinions as to the points of similarity between Karma! and Earl are not admissible.

 You can read the “My Name is Earl” Ninth Circuit opinion here: [Read].

You can read the district court opinion here: [Read].

It is interesting to consider this case in comparison to KSR v. Teleflex.  In the aftermath of KSR, one has seen “common sense” asserted with reckless abandon in regard to obviousness.  Yet, under copyright law, the seemingly simple issue of deciding if there is “substantial similarity” between a screenplay and a television series requires not only expert evidence but evidence from a highly specialized expert.

In re Klein

Tuesday, June 14th, 2011

Many of the other blogs have gone into detail about the recent Federal Circuit decision in In re Klein.  So, I won’t go into detail about it here.  The opinion in the case noted that the references that were applied in the 103 rejection at issue were non-analogous references insufficient for 103 purposes.

While the word “hindsight” does not make its way into the issued opinion of the court, it is interesting to note this comment that Judge Linn made to the Associate Solicitor for the PTO in regard to hindsight: [Listen].

You can listen to the entire oral argument here: [Listen].

You can read the court’s opinion here: [Read].

Failure to Establish a Prima Facie Case

Sunday, May 22nd, 2011

During the oral argument of In re Kao, the panel had some tough questions for the Associate Solicitor from the PTO.  The issue concerned an obviousness rejection that had been made by the Patent Office and whether there had been a sufficient prima facie case made to reject the claim at issue.  The issue turned on whether the testing method that was used as part of the cited prior art (the “basket” method) was proved by substantial evidence to be equivalent to the testing method recited in the claim (the “Paddle” method). 

The panel took issue with the Office’s contention that it need only make the assertion that the cited references were combinable in order to establish a prima facie case.  At one point Judge Linn asked whether the Office is entitled to make a prima facie case by saying: “Black is white; now [Applicant] go prove otherwise.”  You can listen to this exchange here: [Listen].

You can listen to the entire oral argument here: [Listen].

You can read the court’s opinion here: [Read].

Impromptu Comments on Software Patents During Oral Argument

Sunday, April 24th, 2011

If you practice in the software patent arena, you might find the following comments by Judge Moore of interest with respect to section 101 and 103 issues.

In Classen Immunotherapies v. Biogen-Idec, et al., 2006-1634 (Fed. Cir. Dec. 19, 2008), she commented about applying a mental process exception so broadly under 35 U.S.C. §101 that it would lead down a slippery slope to invalidate all software patents:  [Listen].  Classen was decided prior to the Supreme Court’s opinion in Bilski.

In In re Rackman, 2009-1217 (Fed. Cir. Nov. 4, 2009), she pushed back on the PTO’s assertion that it was obvious to combine references if they merely enhanced functionality of the underlying reference, as to do so would arguably make every software invention obvious: [Listen].

You can read the court’s opinions in Classen and Rackman [here] and [here], respectively.

You can listen to the entire oral arguments in Classen and Rackman [here] and [here], respectively.

She also made this comment in the en banc oral argument for Tivo v. Echostar: [Listen].

Should proximity in time play a role in a “common sense” obviousness analysis

Sunday, March 13th, 2011

In the recent oral argument of Cimline, Inc. v. Crafco, Inc., Chief Judge Rader raised an interesting issue with respect to the timing of an obviousness analysis when the analysis turns on the application of “common sense.”  As you will hear in the following excerpt, the references issued at least ten years before the date of invention.  Chief Judge Rader inquired whether it really was “common sense” to combine the references if it took ten years for someone to make the combination. [Listen].

While historically one thinks of timing as being irrelevant when it comes to combining references, perhaps there should be a requirement that gaps in time be considered when a party or a court takes the intellectually easy road of relying on ”common sense.”

You can read the court’s opinion here: [Read].

You can listen to the entire oral argument here: [Read].

Alice in Wonderland — Part II

Friday, September 17th, 2010

Alice in Wonderland made an encore appearance at the Federal Circuit recently during the oral argument of Daiichi Sankyo Co. v. Mylan Pharma, 2009-1511 (Fed. Cir. Sept. 9, 2010).  The panel was trying to assess whether one would have chosen an example in a patent reference as a motivation to modify another reference, when the example was the 118th example in the patent reference.  This prompted Judge Friedman to make the following analogy to Alice in Wonderland: [Listen].

References to Alice in Wonderland are made quite often in judicial opinions.  If you have access to Lexis, see “Wondering about Alice: Judicial References to Alice in Wonderland and Through the Looking Glass,” Parker B. Potter, Jr., 28 Whittier L. Rev. 175 (2006).

You can listen to the entire oral argument here: [Listen].

You can read the opinion here: [Read].

Oral Arguments for the “2010 KSR Guidelines Update”

Saturday, September 11th, 2010

The USPTO recently published its 2010 KSR Guidelines Update  in view of case law that has developed since KSR Int’l, Co. v. Teleflex, Inc. was decided by the US Supreme Court. Listed below are the charts from the guidelines with some additional information. Namely, I’ve added a  hyperlink to the court’s opinion, a column for the judges on the panel with the author of the opinion underlined, whether the teaching point could be deemed pro-inventor, and a link for listening to the oral argument.

Combining Prior Art Elements

 

 

In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir. 2008).

 

Even where a general method that could have been applied to make the claimed product was known and within the level of skill of the ordinary artisan, the claim may nevertheless be nonobvious if the problem which had suggested use of the method had been previously unknown

Lourie

Bryson

Gajarsa

 Yes

 Listen

Crocs, Inc. v. U.S. Int’l Trade Comm’n., 598 F.3d 1294 (Fed. Cir. 2010).

A claimed combination of prior art elements may be nonobvious where the prior art teaches away from the claimed combination and the combination yields more than predictable results.

Lourie

Rader

Prost

 Yes

Listen 

Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 356 (Fed.Cir. 2008).

A claimed invention is likely to be obvious if it is a combination of known prior art elements that would reasonably have been expected to maintain their respective properties or functions after they have been combined. 

Dyk

Prost

Moore

 No

 Listen

 Ecolab, Inc. v. FMC Corp., 569 F.3d 1335 Fed. Cir. 2009).

A combination of known elements would have been prima facie obvious if an ordinarily skilled artisan would have recognized an apparent reason to combine those elements and would have known how to do so. 

Rader

Gajarsa

Dyk

 No

Listen 

 

Wyers v. Master Lock Co., No. 2009–1412, — F.3d—, 2010 WL 2901839 (Fed. Cir. July 22, 2010). 

The scope of analogous art is to be construed broadly and includes references that are reasonably pertinent to the problem that the inventor was trying to solve. Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning. 

Lourie

Linn

Dyk

No/Yes

 Listen

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009).

Predictability as discussed in KSR encompasses the expectation that prior art elements are capable of being combined, as well as the expectation that the combination would have worked for its intended purpose.  An inference that a claimed combination would not have been obvious is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements. 

Newman

Bryson

Linn

 No

 Listen

 

 Substituting One Known Element for Another 

In re ICON Health & Fitness, Inc., 496 F.3d 1374 (Fed. Cir. 2007).

 

When determining whether a reference in a different field of endeavor may be used to support a case of obviousness (i.e., is analogous), it is necessary to consider the problem to be solved.

 

Mayer

Schall

Prost

Yes

Listen

Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337 (Fed. Cir. 2008).

 

Analogous art is not limited to references in the field of endeavor of the invention, but also includes references that would have been recognized by those of ordinary skill in the art as useful for applicant’s purpose.

 

Bryson

Moore

Wolle*

No

Listen

Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir.

2008).

 

Because Internet and Web browser technologies had become commonplace for communicating and displaying information, it would have been obvious to adapt existing processes to incorporate them for those functions.

 

Gajarsa

Plager

Prost

No

Listen

Aventis Pharma Deutschland v. Lupin, Ltd., 499 F.3d 1293 (Fed.

Cir. 2007).

A chemical compound would have been obvious over a mixture containing that compound as well as other compounds where it was known or the skilled artisan had reason to believe that some desirable property of the mixture was derived in whole or in part from the claimed compound, and separating the claimed compound from the mixture was routine in the art.

 

Mayer

Linn

Robertson*

No

Listen

Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353 (Fed. Cir. 2008).

 

A claimed compound would not have been obvious where there was no reason to modify the closest prior art lead compound to obtain the claimed compound and the prior art taught that modifying the lead compound would destroy its advantageous property. Any known compound may serve as a lead compound when there is some reason for starting with that lead compound and modifying it to obtain the claimed

compound.

 

Rader

Linn

Prost

Yes/No

Listen

Procter & Gamble Co. v. Teva Pharmaceuticals USA, Inc., 566 F.3d 989 (Fed. Cir. 2009).

 

It is not necessary to select a single compound as a ‘‘lead compound’’ in order to support an obviousness rejection. However, where there was reason to select and modify the lead compound to obtain the claimed compound, but no reasonable expectation of success, the claimed compound would not have been obvious.

 

Mayer

Dyk

Huff*

No/Yes

Listen

Altana Pharma AG v. Teva

Pharms. USA, Inc., 566 F.3d 999

(Fed. Cir. 2009).

 

Obviousness of a chemical compound in view of its structural similarity to a prior art compound may be shown by identifying some line of reasoning that would have led one of ordinary skill in the art to select and modify a prior art lead compound in a particular way to produce the claimed compound. It is not

necessary for the reasoning to be explicitly found in the prior art of record, nor is it  necessary for the prior art to point to only a single lead compound.

 

Newman

Gajarsa

Ward*

No

Listen

 

 

*Visiting judge sitting by designation

 

 

 

 

 

The Obvious to Try Rationale

In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009).

 

A claimed polynucleotide would have been obvious over the known protein that it encodes where the

skilled artisan would have had a reasonable expectation of success in deriving the claimed

polynucleotide using standard biochemical techniques, and the skilled artisan would have had a reason

to try to isolate the claimed polynucleotide. KSR applies to all technologies, rather than just the ‘‘predictable’’

arts.

 

Rader

Friedman

Linn

No

Listen

Takeda Chem. Indus. v.

Alphapharm Pty., Ltd., 492 F.3d 1350 (Fed. Cir. 2007).

 

A claimed compound would not have been obvious where it was not obvious to try to obtain it from a

broad range of compounds, any one of which could have been selected as the lead compound for further

investigation, and the prior art taught away from using a particular lead compound, and there was

no predictability or reasonable expectation of success in making the particular modifications necessary

to transform the lead compound into the claimed compound.

 

Lourie

Bryson

Dyk

Yes

Listen

Ortho-McNeil Pharmaceutical, Inc. v. Mylan Labs, Inc., 520  F.3d 1358 (Fed. Cir. 2008).

 

Where the claimed anti-convulsant drug had been discovered somewhat serendipitously in the course of

research aimed at finding a new anti-diabetic drug, it would not have been obvious to try to obtain a

claimed compound where the prior art did not present a finite and easily traversed number of potential

starting compounds, and there was no apparent reason for selecting a particular starting compound from

among a number of unpredictable alternatives.

 

Michel

Rader

Linn

Yes

Listen

Bayer Schering Pharma A.G. v. Barr Labs., Inc., 575 F.3d 1341 (Fed. Cir. 2009).

 

A claimed compound would have been obvious where it was obvious to try to obtain it from a finite and

easily traversed number of options that was narrowed down from a larger set of possibilities by the prior

art, and the outcome of obtaining the claimed compound was reasonably predictable.

 

Mayer

Friedman

———–

Newman(dissent)

No

Listen

Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075 (Fed. Cir. 2008).

 

A claimed isolated stereoisomer would not have been obvious where the claimed stereoisomer exhibits unexpectedly

strong therapeutic advantages over the prior art racemic mixture without the correspondingly

expected toxicity, and the resulting properties of the enantiomers separated from the racemic mixture

were unpredictable.

 

Newman

Lourie

Bryson

Yes

Listen

Rolls-Royce, PLC v. United Technologies Corp., 603 F.3d 1325

(Fed. Cir. 2010).

 

An obvious to try rationale may be proper when the possible options for solving a problem were known

and finite. However, if the possible options were not either known or finite, then an obvious to try rationale

cannot be used to support a conclusion of obviousness.

 

Michel

Rader

Schall

Yes

Listen

Perfect Web Techs., Inc. v. InfoUSA, Inc.,  587 F.3d 1324

(Fed. Cir. 2009).

 

Where there were a finite number of identified, predictable solutions and there is no evidence of unexpected

results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness. Common

sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient

reasoning.

Linn

Dyk

Prost

No/Yes

Listen

 Consideration of Evidence

PharmaStem  Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342 (Fed. Cir. 2007).

 

Even though all evidence must be considered in an obviousness analysis, evidence of nonobviousness

may be outweighed by contradictory evidence in the record or by what is in the specification. Although a reasonable expectation of success is needed to support a case of obviousness, absolute predictability is

not required.

 

Bryson

Prost

——–

 

Newman (dissent)

No

Listen

In re Sullivan, 498 F.3d 1345 (Fed. Cir. 2007).

 

All evidence, including evidence rebutting a prima facie case of obviousness, must be considered when

properly presented.

 

Newman

Lourie

Gajarsa

Yes

Listen

Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357 (Fed. Cir. 2010).

 

Evidence that has been properly presented in a timely manner must be considered on the record. Evidence

of commercial success is pertinent where a nexus between the success of the product and the

claimed invention has been demonstrated.

 

Lourie

Rader

Schall

Yes

Listen

Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310 (Fed. Cir. 2008).

 

Evidence of secondary considerations of obviousness such as commercial success and long-felt need may

be insufficient to overcome a prima facie case of obviousness if the prima facie case is strong. An argument

for nonobviousness based on commercial success or long-felt need is undermined when there is a

failure to link the commercial success or long-felt need to a claimed feature that distinguishes over the

prior art.

 

Michel

Newman

Bryson

No

Listen

 

 

 

In re Zurko re-emphasized

Thursday, May 20th, 2010

With the CAFC’s decision in Perfect Web Technologies, Inc. v. InfoUSA, Inc., 2009-1105 (Fed. Cir. Dec. 2, 2009), it struck me that the court was easing away from its precedent in In re Zurko, 258 F.3d1379 (Fed. Cir. 2001) that required some factual underpinning for an assertion of “common sense.”  Indeed, in the oral argument of Perfect Web, the panel (Judges Linn, Dyk, and Prost) seemed curious about the applicability of In re Zurko in light of the Supreme Court’s KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) decision:  [Listen].

Yesterday, a panel of the court in In re Ravi Vaidyanathan, 2009-1404 (Fed. Cir. 2010) re-emphasized the principles of In re Zurko.  Judge Newman writing for herself and Chief Judge Michel wrote:

We agree with the Solicitor that an explicit statement of the level of ordinary skill is not always necessary in evaluating the obviousness of a new technologic advance. But whether or not stated explicitly, the perspective of a person of ordinary skill must frame the obviousness inquiry, and assertions of what such a person of ordinary skill would have found to be obvious require sufficient explanation to permit meaningful appellate review. In this case, not only the Board but also the examiner announced their conclusions of obviousness without providing any evidentiary support or reasoning for why a person of ordinary skill in the field of the invention would have deemed it obvious to select and combine various steps from different references, in the manner of the applicant. This court explained in In re Zurko, 258 F.3d 1379 (Fed. Cir. 2001), that the entry of the PTO into the deferential review of the Administrative Procedure Act requires the agency to provide support for its findings:

 

With respect to core factual findings in a determination of patentability, . . . the Board cannot simply reach conclusions based on its own understanding or experience—or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings. To hold otherwise would render the process of appellate review for substantial evidence on the record a meaningless exercise.

Id. at 1386.

 

The PTO Solicitor argues that the Court in KSR held that a combination of elements from different prior art references is likely to be unpatentable if it would involve nothing more than “the predictable use of prior art elements according to their established functions,” KSR, 550 U.S. at 417, and that the Board applied this reasoning to the combination of Biggers and Johnson. KSR also clarified that recourse to “common sense,” viewed through the perspective of a person of ordinary skill, is not barred in the obviousness inquiry. As the applicant states, while KSR relaxed some of the formalism of earlier decisions requiring a “teaching, suggestion, or motivation” to combine prior art references, it did not remove the need to anchor the analysis in explanation of how a person of ordinary skill would select and apply the teachings of the references. See, e.g., id. at 417 (“If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).

 

The applicant complains that the Board simply reasoned from the hindsight knowledge of his successful invention; he stresses that, unlike the facts in KSR, the various steps that he combined were not known to be combinable, and the result of increased precision in missile guidance to the target was not previously known or predictable.

 

Obviousness is determined as a matter of foresight, not hindsight. See id. at 421 (citing Graham, 383 U.S. at 36). KSR did not free the PTO’s examination process from explaining its reasoning. In making an obviousness rejection, the examiner should not rely on conclusory statements that a particular feature of the invention would have been obvious or was well known. Instead, the examiner should elaborate, discussing the evidence or reasoning that leads the examiner to such a conclusion. Generally, the examiner cites prior art references to demonstrate the state of knowledge. See 37 C.F.R. §1.104(c)(2) (“In rejecting claims for want of novelty or obviousness, the examiner must cite the best references at his or her command.”); Manual of Patent Examining Procedure (MPEP) §706.02 (8th ed., rev. July 2008) (“Prior art rejections should ordinarily be confined strictly to the best available art. [citing exceptions] Such rejec-tions should be backed up by the best other art rejections available.”). If it is not possible for the examiner to provide this type of information, the examiner might choose instead to provide an affidavit detailing the examiner’s own personal knowledge (as a person approximating one of ordinary skill in the art) of the technology in question. See 37 C.F.R. §1.104(d)(2) (“When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.”). Where, as here, prior art references are cited to support an obviousness rejection, the references themselves need not in every case provide a “specific hint or suggestion” of the alteration needed to arrive at the claimed invention; the examiner’s analysis “may include recourse to logic, judgment, and common sense available to a person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). In these cases the examiner should at least explain the logic or common sense that leads the examiner to believe the claim would have been obvious. Anything less than this results in a record that is insulated from meaningful appellate review. Zurko, 258 F.3d at 1386. If the examiner is able to render a claim obvious simply by saying it is so, neither the Board nor this court is capable of reviewing that determination. See KSR, 550 U.S. at 418, citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).

It is interesting to note that Judge Dyk, who seemed somewhat concerned about the viability of In re Zurko after KSR during the oral argument of Perfect Web, merely concurred in the judgment of the panel in In re Vaidyanathan rather than joining in the opinion.  I wonder if that signals that  there is more to come in regard to the viability of In re Zurko

My two cents: In re Zurko is the public’s best defense against  the arbitrary use of a “common sense” analysis under KSR.

You can read the court’s decision in In re Vaidyanathan here:  [Read].

You can read the court’s decision in Perfect Web Technologies, Inc. v. InfoUSA, Inc. here: [Read].

You can read the court’s decision in In re Zurko here: [Read].