Sunday, August 1, 2010

Arguments guaranteed to lose: not obvious because the references are old

Takeaway: The BPAI has held in a number of decisions that the mere fact that the references used in an obviousness rejection are old does not indicate non-obviousness. Federal Circuit precedent requires actual evidence of a long felt need.
  • Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1324-25 (Fed. Cir. 2004) (absent a showing of long-felt need or the failure of others, the mere passage of time without the claimed invention is not evidence of nonobviousness); and
  • In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (the mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem).

In Ex parte West, the Applicant argued that the two references had been around for nearly 40 years without being combined as proposed by the Examiner “militates against the Examiner’s conclusion.” The Board found the argument "not persuasive, as the record is devoid of evidence showing a long-felt need or unsuccessful efforts by others to solve the problem." (Emphasis added.)

In Ex parte A.L.S. Enterprises, Inc., the Applicant argued that "the relative age of these references suggests that these references were not so easily combined as suggested by the Examiner." The Board disagreed, stating that "[t]he present record lacks the required persuasive evidence that establishes previous attempts and failure in providing a bag for garments that absorb odor."

In Ex parte Bourhis, the Applicant even explained why the age of the reference should have been considered an indication of non-obviousness:
No motivation would have existed to use Kim’s compositions in Curry’s two compartment devices. Specifically, Kim was filed about 26 years after Curry. Thus, Curry’s two compartment devices were well-known at the time Kim filed his application. Yet, Kim neither teaches nor suggests using his compositions in a two-compartment device.
The Board was not persuaded, because the Applicant did not provide any evidence of long-felt need or failure by others.

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