Takeaway: In Ex parte Linzer, the Examiner offered "reduce[s] bandwidth, time, and memory" as a motivation to combine two references. The Board found the motivation deficient because "no evidence on record suggests that the proposed combination / modification would actually reduce the bandwidth, time, and/or memory." In some cases, a generic benefit (i.e., stronger, faster, cheaper) does provide good a reason to combine. But this case suggests that's not enough – the Examiner must explain how the combination actually produces that benefit.
Details: The technology in Ex parte Linzer was digital video discs. The feature at issue was reading two streams of button data from disc, then multiplexing the two button streams. The Examiner relied on one reference to teach reading button streams from disc, and another to teach multiplexing a button stream with an audio/video stream, to produce the combination of multiplexing multiple button streams. As a motivation to combine, the Examiner alleged that this combination "reduce[s] bandwidth, time, and memory."
In the Appeal Brief, the Applicant challenged this allegation as a conclusory statement without the analysis required by KSR. The Applicant then provided a technical explanation as to why the claimed multiplexing did not provide the benefits alleged by the Examiner.
In the Answer, the Examiner further elaborated on his reasoning, explaining that multiplexing saves time because all the data are sent at once rather than one at a time, eliminates the need for a huge buffer to store all the data before playback, and reduces bandwidth because the line is used for a short period of time before playback.
The Applicant filed a Reply Brief including specific rebuttals to the Examiner's newly explained reasoning.
The Board found the motivation to combine to be deficient because "no evidence on record
suggests that the proposed combination/modification would actually
reduce the bandwidth, time, and/or memory." The Board also found that "[t]he Examiner's articulated reasoning in the rejection does not possess a rational underpinning to support the legal conclusion of obviousness."
My two cents: I wish the Board had addressed the enhanced explanation of motivation in the Examiner's Answer, and the Applicant's rebuttal in the Reply Brief. Is this case really about the Examiner not providing detailed reasoning? Or is it also about which side made a more persuasive technical argument about motivation to combine?
The Board also found that the combination of references didn't teach one of the elements. Thus, the rejection could have been reversed on that ground alone. But the Board went farther and (as I read the opinion) reversed on motivation-to-combine grounds also. It's that part of the opinion that I found interesting.
POSTSCRIPT: Several folks have posted comments showing strong disagreement with my interpretation of the case. It seems to me the wording of the opinion leaves plenty of room for reasonable minds to disagree.
"I wish the Board had addressed the enhanced explanation of motivation in the Examiner's Answer, and the Applicant's rebuttal in the Reply Brief. Is this case really about the Examiner not providing detailed reasoning? Or is it also about which side made a more persuasive technical argument about motivation to combine? "
ReplyDeleteSeriously, without getting into the details of the case I can't tell why the board would have reversed or not reversed. Or what they should have done.
Karen, after having read the decision it seems quite apparent that the board did not reverse the rejection based on the motivation not having any evidentiary support, it merely found that the reasoning supplied did not change its determination that neither of the references taught (or suggested) one of the limitations. And without that limitation it simply regarded the motivation as conjecture.
ReplyDeleteI admit that they didn't word that very well in the decision but that's what it seems like happened. This case does not stand for what you are supposing it does so far as I can see.
In relevant part:
"However, we are persuaded by Appellant’s argument (App. Br. 18) that Okada does not teach multiplexing multiple NBI streams with each other."
That is to say, they will reverse based on failure of the prior art to teach multiplexing multiple NBI streams with each other.
"We further agree with Appellant’s argument (App. Br. 21) that the reason to combine the Background section with the teachings of Okada to “reduce bandwidth, time, and memory” is merely a conclusory statement."
That is to say that they agree that the statement is merely conclusory and has no evidenciary support.
"The Examiner’s articulated reasoning in the rejection does not possess a rational underpinning to support the legal conclusion of obviousness."
That is to say that they are inappropriately reviewing the examiner's motivation as if it were simply a KSR "rational" to magic up the missing prior art elements and explain why they'd be common sense for one of ordinary skill to use. This is akin to saying that the reference does not "suggest" to one of ordinary skill to use the claimed elements even though they aren't implicit, explicit or inherent in the reference.
"The Examiner (Ans. 12-13) asserts that multiplexing the button data with the audio/video data saves time because all the data are sent at once rather than one at a time, eliminates the need for a huge buffer for all the data, and reduces bandwidth because the line is used for a short period of time. However, as we stated supra, we do not find on the record before us, the teaching of multiplexing “two or more input button data streams to produce a multiplexed button data stream” which can then be further multiplexed with AV data of Okada as suggested by the Examiner."
That is to say that they reiterate that they have found that the examiner fails to point out where the references even taught one limitation, and they also don't find any evidence to show that the reference would suggest what the examiner proposes be done as a "general concept".
Seems to me like the reviewers here should have just left well enough alone at the first paragraph that I cited. But, I suppose that they're all KSRed up and are uncomfortable simply reversing based on a failure of some art to teach all elements when KSR comes in and refers to things like common sense etc.
Personally I pretty much stick with rejections where all elements are shown or would be implicit/inherent. But, it is far from clear that KSR requires all elements to be explicit, implicit or inherent. The waters are quite grey enough to allow for a combination where one reference would reasonably suggest the claimed differences to one of ordinary skill. But there would at the least need to be evidenciary support for that suggestion having been made by the prior art.
Here, for instance, multiplexing signals and all the various signals involved were elements found in the prior art. They simply hadn't been combined in the manner claimed. If the reference suggested, generally, multiplexing those types of signals (without being explicit or implicit that it was "multiple NBI streams" that were to be multiplexed) then there may very well have been a 103 concern under KSR, at least is what it seems this board has held here.
>This case does not stand for what you are
ReplyDelete>supposing it does so far as I can see.
Disagree. I read the case as having multiple grounds for reversal.
We both agree that the Board found that a limitation wasn't taught. And that since that's one element of a prima facie case of obviousness, they could have stopped there.
But they didn't stop at "does not teach", they went on to state "The Examiner’s articulated reasoning in the rejection does not possess a rational underpinning to support the legal conclusion of obviousness."
I read this as a specific finding that a second element of a prima facie case wasn't met: motivation to combine, as explained by KSR.
.. and they also don't find any evidence to
>show that the reference would suggest what the
>examiner proposes be done as a "general
>concept".
Really? The Board's discussion of "evidence" is always in the context of motivation-to-combine, rather than does-not-teach.
So I don't read this statement by the Board the way you do. I see "motivation to combine" as completely separate from "does not teach". In this case, the Board specifically addressed DNT and then specifically addressed MTC. The Board could have reversed on either of those bases.
>Seems to me like the reviewers here should
>have just left well enough alone at the first
>paragraph that I cited.
Agreed that the Board could have stopped at "does not teach".
>But, I suppose that they're all KSRed up and
>are uncomfortable simply reversing based on a
>failure of some art to teach all elements when
>KSR comes in and refers to things like common >sense etc.
Hadn't thought of it that way. Have to think some more on this.
"I read this as a specific finding that a second element of a prima facie case wasn't met: motivation to combine, as explained by KSR. "
ReplyDeleteIt could be, but the context just doesn't fit. The language they used simply doesn't support that. Perhaps they wrote improperly, but if I had to bet dollars to sense the examiner was saying something along the lines of "it's obvious because [one of the] reference suggests that we multiplex these signals to save time etc. etc." That's how it seems to me anyway.
Lizner is a bad case study of a BPAI rejection of an Examiner's 'motivation to combine' argument. Specifically, the final sentence of the relevant section seems to garble the analysis of the two elements of a prima facie case for obviousness together.
ReplyDeleteI used to practice criminal defense. Every once in a while, I would win a hail-mary motion to suppress evidence on some strange ruling from a magistrate. When my client would ask me to explain why we won, I would simply reply, "Get out of the court house as fast as you can, before the judge realizes what he just said."
"I used to practice criminal defense. Every once in a while, I would win a hail-mary motion to suppress evidence on some strange ruling from a magistrate. When my client would ask me to explain why we won, I would simply reply, "Get out of the court house as fast as you can, before the judge realizes what he just said." "
ReplyDeleteIncompetence FTW baby, yeah.
>If the reference suggested, generally,
ReplyDelete>multiplexing those types of signals (without
>being explicit or implicit ...) then there
>may very well have been a 103 concern under KSR,
Agreed that KSR as currently interpreted by Perfect Web Tech. allows for obviousness even when elements are completely missing from the refs, as long as the elements can be filled in with "common sense" and/or "inferences and creative steps".
But I don't get why you think that matters.
You seem to be suggesting that the Board felt it had to buttress its finding of NON-obviousness by saying not only does it not teach, it wouldn't be common sense either. I can see that to cover all bases, an Applicant might make such an argument. But why does the Board need to do that? The Board's finding of NON-obviousness can't be challenged at the Fed Cir, right?
>the final sentence of the relevant section
ReplyDelete>seems to garble the analysis of the two
>elements of a prima facie case for obviousness
together.
Yeah, the last sentence is confusing. I certainly didn't understand why the opinion switched from discussing motivation-to-combine back to does-not-teach.
Your idea that the opinion is actually conflating the two didn't occur to me.
"The Board's finding of NON-obviousness can't be challenged at the Fed Cir, right? "
ReplyDeleteWell idk about that, but the office could appeal and the Fed Circ could find the claim to be obvious...
>the office could appeal and the Fed Circ
ReplyDelete>could find the claim to be obvious...
Nah, that's what I'm saying. I don't think the PTO can appeal from the BPAI to the Fed. Cir.
I can't find anything *directly* on point. 35 U.S.C. 142 and 37 CFR 1.302 only mention appeals from the Applicant. MPEP 1216.01 says: "applicant, the owner of a patent involved in a reexamination proceeding, or a party to an interference proceeding."
If you can point to a specific case where the PTO has appealed from the BPAI, or point to statutory authority, then let me know. I'm certainly not an expert on appeals to the Fed. Cir.
"Well idk about that, but the office could appeal and the Fed Circ could find the claim to be obvious..."
ReplyDeleteOnly in 6's fantasy world could this happen.
You guys are probably right that the PTO can't appeal in that fashion, that's why I said idk. But reflecting further it seems like there was something I read on this issue awhile back and the PTO can only seek reconsideration by the board of the decision by the board. However, the director can stack the board with whatever members he wants to, including himself so if he wants the decision to go one way or another he can rig the decision sometimes. That happened in a case a long time ago, the board did what the director didn't like and he stacked the board panel and included himself. I can't recall if he got away with it or if the applicant did appeal his decision (and his method of getting the board to make that decision) and get it overturned.
ReplyDeleteI was just playing on the whole "finding of "non-obviousness"" being used by Karen in my comment above. Because one cannot really appeal a "finding of "non-obviousness"" one would be appealing the decision not to hold the claim obvious if such an appeal were possible. A subtle difference but a difference nonetheless.