{"id":2373,"date":"2010-05-20T18:16:37","date_gmt":"2010-05-21T00:16:37","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=2373"},"modified":"2010-05-20T18:16:37","modified_gmt":"2010-05-21T00:16:37","slug":"in-re-zurko-re-emphasized","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=2373","title":{"rendered":"In re Zurko re-emphasized"},"content":{"rendered":"

With the CAFC’s decision in Perfect Web Technologies, Inc. v. InfoUSA, Inc.<\/span>, 2009-1105 (Fed. Cir. Dec. 2, 2009), it struck me\u00a0that the court was easing away from its precedent in In re Zurko<\/span>, 258 F.3d1379 (Fed. Cir. 2001) that required some factual underpinning for an assertion of “common sense.”\u00a0 Indeed, in the oral argument of Perfect Web<\/span>, the panel (Judges Linn, Dyk, and Prost)\u00a0seemed curious about the applicability of In re Zurko<\/span> in light of the Supreme Court’s KSR Int’l Co.\u00a0v. Teleflex, Inc.<\/span>, 550 U.S. 398 (2007)\u00a0decision:\u00a0 [Listen<\/a>].<\/p>\n

Yesterday, a panel of the court in In re Ravi Vaidyanathan<\/span>, 2009-1404 (Fed. Cir. 2010)\u00a0re-emphasized the principles of In re Zurko<\/span>.\u00a0 Judge Newman writing for\u00a0herself and Chief Judge Michel\u00a0wrote:<\/p>\n

\n

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<\/em>, 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: <\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/p>\n

With respect to core factual findings in a determination of patentability, . . . the Board cannot simply reach conclusions based on its own understanding or experience\u2014or 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. <\/span><\/span><\/p>\n

Id. <\/span><\/em>at 1386. <\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/p>\n

The PTO Solicitor argues that the Court in KSR <\/em>held that a combination of elements from different prior art references is likely to be unpatentable if it would involve nothing more than \u201cthe predictable use of prior art elements according to their established functions,\u201d KSR<\/em>, 550 U.S. at 417, and that the Board applied this reasoning to the combination of Biggers and Johnson. KSR <\/em>also clarified that recourse to \u201ccommon sense,\u201d viewed through the perspective of a person of ordinary skill, is not barred in the obviousness inquiry. As the applicant states, while KSR <\/em>relaxed some of the formalism of earlier decisions requiring a \u201cteaching, suggestion, or motivation\u201d 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.<\/em>, id. <\/em>at 417 (\u201cIf a person of ordinary skill can implement a predictable variation, \u00a7103 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.\u201d). <\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/p>\n

The applicant complains that the Board simply reasoned from the hindsight knowledge of his successful invention; he stresses that, unlike the facts in KSR<\/em>, 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. <\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/p>\n

Obviousness is determined as a matter of foresight, not hindsight. See id. <\/em>at 421 (citing Graham<\/em>, 383 U.S. at 36). KSR <\/em>did not free the PTO\u2019s 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 <\/em>37 C.F.R. \u00a71.104(c)(2) (\u201cIn rejecting claims for want of novelty or obviousness, the examiner must cite the best references at his or her command.\u201d); Manual of Patent Examining Procedure (MPEP) \u00a7706.02 (8th ed., rev. July 2008) (\u201cPrior 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.\u201d). 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\u2019s own personal knowledge (as a person approximating one of ordinary skill in the art) of the technology in question. See <\/em>37 C.F.R. \u00a71.104(d)(2) (\u201cWhen 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.\u201d). Where, as here, prior art references are cited to support an obviousness rejection, the references themselves need not in every case provide a \u201cspecific hint or suggestion\u201d of the alteration needed to arrive at the claimed invention; the examiner\u2019s analysis \u201cmay 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.\u201d Perfect Web Techs. v. InfoUSA, Inc.<\/em>, 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<\/em>, 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<\/em>, 550 U.S. at 418, citing In re Kahn<\/em>, 441 F.3d 977, 988 (Fed. Cir. 2006) (\u201c[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.\u201d).<\/span><\/span><\/p>\n<\/blockquote>\n

It is interesting to note that Judge Dyk, who seemed somewhat concerned about the viability of In re Zurko<\/span> after KSR<\/span> during the oral argument of Perfect Web,<\/span> merely concurred in the\u00a0judgment of the panel in In re Vaidyanathan<\/span> rather than joining in the opinion.\u00a0 I wonder if that signals that \u00a0there is more to come in regard to the viability of In re Zurko<\/span>.\u00a0<\/p>\n

My two cents:\u00a0In re Zurko<\/span> is the public’s best defense against\u00a0\u00a0the arbitrary use of a “common sense” analysis under\u00a0KSR<\/span>.<\/p>\n

You can read the court’s decision in In re Vaidyanathan<\/span> here:\u00a0 [Read<\/a>].<\/p>\n

You can read the court’s decision in Perfect Web Technologies, Inc. v. InfoUSA, Inc.<\/span> here: [Read<\/a>].<\/p>\n

You can read the court’s decision in In re Zurko<\/span> here: [Read<\/a>].<\/p>\n","protected":false},"excerpt":{"rendered":"

With the CAFC’s decision in Perfect Web Technologies, Inc. v. InfoUSA, Inc., 2009-1105 (Fed. Cir. Dec. 2, 2009), it struck me\u00a0that 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.”\u00a0 Indeed, in the oral argument of […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[8],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/2373"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2373"}],"version-history":[{"count":21,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/2373\/revisions"}],"predecessor-version":[{"id":2396,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/2373\/revisions\/2396"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2373"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2373"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2373"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}