“Sufficiently Interrelated”

You might recall that in the KSR v. Teleflex opinion that the Supreme Court used the language “interrelated teachings.”  To the best of my knowledge, the Federal Circuit has not yet weighed in on the meaning of that phrase.  In the recently decided appeal of Sirona v. Kappos, a Federal Circuit panel actually had an opportunity to address the meaning of “interrelated teachings” as well as the phrase  “sufficiently interrelated.”  But, the panel opted not to write an opinion and issued a Rule 36 opinion instead.

Sirona v. Kappos concerned an appeal of a Board decision from an inter partes reexamination.  The Board found some of the claims under reexam patentable.  So, the appeal to the Federal Circuit pitted the inter partes reexam requestor against the patent owner (3M) and the Solicitor’s Office of the USPTO.

Because the Board found in favor of the patentee with respect to some claims by finding those claims patentable, the Solicitor’s Office was in the unique position of arguing in favor of patentability at the CAFC. Had 3M cross-appealed the Board’s rejection of other claims, I suppose the Solicitor’s Office would have been in the even more unique position of  having to argue in favor of the patentability of the allowed claims and in favor of unpatentability of the rejected claims!  I wonder which counsel’s table the PTO sits at in that instance.

With respect to the “interrelatedness” issue, the Board stated the following in its “Decision on Request for Rehearing”:

Sirona misunderstands the basis of our decision. Rather than determining that JP ‘966 and US ‘585 were not analogous art, our statement merely highlighted the deficiencies in Sirona’s attempt to establish a prima facie case of obviousness.

As we pointed out in our decision (Dec. 14 ), “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.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007). The Supreme Court made it abundantly clear that an obviousness analysis “must ask whether the improvement is more than the predictable use of prior art elements according to their established function.” !d. at 417. “Often, it will be necessary … to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” !d. at 418 (emphasis added).

Sirona did not provide any meaningful analysis on any of these factors. For example, other than conclusory statements that wholly disregard significant differences in the teachings of the prior art references and a vague reference to a “vast body of prior art pertaining to crowns, frameworks, and similar items” designed to fill the gaps (TPR Req. Reh’g 6), Sirona did not establish that JP ‘966 and US ‘585 are sufficiently interrelated to support their combination in the manner claimed in view of the differences present in the evidence and reasoning of record.

Specifically, while Sirona argues that the ‘694 Patent under reexamination describes the coloring of ceramics generally (TPR Req. Reh’g 4 ), such argument ignores the fact that the claims are not directed to the coloring of ceramics generally but rather the coloring of translucent dental ceramics obtained from a “pre-sintered dental ceramic workpiece” (claim 1 ). Here, neither Sirona nor the Examiner demonstrated that the prior art “greenware” or ”bisque phase of the ceramic article” would inherently or . necessarily be suitable as a pre-sintered dental ceramic workpiece (JP ‘966, ,-r,-r [0012], [0013]).  Sirona’s failure to satisfy its initial burden stands in stark contrast to the detailed analysis provided by 3M on this matter (Patent Owner’s Appeal Brief filed March 15, 2010 at 9-13; Patent Owner’s Opposition 1-4 ).

Sirona’s reliance on cases such as Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 201 0) and In re ICON Health and Fitness, Inc., 496 F .3d 1374 (Fed. Cir. 2007) is misplaced. Those cases involved simple mechanical inventions in which a person of ordinary skill in the art would have reasonably expected that the element in dispute (e.g., the gas spring designed to stably retain a structure in the vertical position as in ICON Health) would serve the same or similar function in either the invention or the prior art. In this case, in light of the deficiencies in Sirona’ s position that JP ‘966 and US ‘585 are sufficiently interrelated as discussed supra, Sirona did not persuasively demonstrate that a person of ordinary skill in the art would have predicted that the metal salt solutions of JP ‘966 would impart the same chemical and/or physical effects on dental products of the type here claimed, as explained by 3M (Opposition at 2-3). Accordingly, Sirona failed to articulate some reasoning with some rational underpinning to support its proposed obviousness rejection. KSR at 418.

The panel at the Federal Circuit (Judges Newman, Prost, and Moore) issued a Rule 36 opinion in this case.  That was surprising because there were a number of interesting issues that could have been addressed in a written opinion:

1)  Is the interrelatedness of references a question of law or fact and accordingly what is the proper standard of review on the issue?

2) Is interrelatedness relevant to “motivation to combine”?

3)  Is a “lacks interrelatedness” argument different from a “non-analogous art” argument?

4)  What is the test for determining when two references are interrelated “enough” to be deemed “sufficiently interrelated”?

5)  How should the Federal Circuit review a compound finding of fact by the Board?

You can listen to the Solicitor’s Office for the PTO argue here: [Listen].

You can listen to the counsel for the third party requestor argue here: [Listen].

The entire oral argument is available here: [Listen].

One takeaway from the Board decision is that “interrelatedness” is different from a non-analogous art argument.  Thus, even if all cited references are determined to be analogous art, one might still want to argue that the references are not sufficiently interrelated to establish a prima facie case of obviousness.

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