(Ex parte Fellowes, Inc.)
Ex parte Fellowes, Inc.
Appeal 2010001690, Reexam Control No. 90/010,137, Tech. Center 3900
Decided May 24, 2010
This appeal involved a patent under reexam. The claims at issue were directed to a paper insert for a CD case with a specific pattern of fold lines. The § 103 rejection combined a cassette insert having perforated lines (Ace) with a CD insert having fold lines (Fantone).
The Applicant argued that a POSITA would not be motivated to combine the two references because the cassette insert in Ace was directed to home users, while the CD insert in Fantone was directed to mass production. The Examiner's Answer addressed this argument as follows:
While admittedly, these CD storage boxes could be used manufactured [sic] in a production run of pre-produced and packaged compact discs, they equally could be sold to the home or office consumer for use in storing homemade compact disc media. There is nothing in the Fantone reference that limits the use of the disclosed prior art CD Rom jewel boxes for a commercial production of pre-packaged CDs. Additionally, the current patent claims are not limited to any commercial use or production of the claimed product.
The Board affirmed the obviousness rejection, noting that the Applicant's no-motivation-to-combine argument was "only viable in the context of mass production," and "[did] not address the Examiner’s home or office consumer rationale." The Board further noted that the Applicant's own Background section supported the Examiner's use of a consumer context, since the Background stated that “a need [has grown] to label these disks and their storage containers once they have been produced,” that the disks “are being used for archival data storage,” and there is a need for labels involving “short runs of disks.”
My two cents: This type of motivation to combine argument can be persuasive in some contexts, but simply didn't fit the facts here. That is, if the feature relied on in the Fantone reference really was limited to a mass production context, then it would not make sense to combine it with a feature limited to a home user context. However, the Board found that the feature was not so limited, so the Applicant lost the argument.
The Board didn't address the Examiner's statement "the current patent claims are not limited to any commercial use or production of the claimed product." I think the Examiner's statement misses the mark. The Applicant wasn't arguing features that weren't in the claims, and was instead arguing about why the references didn't make sense to combine. Reasons against combining don't need to be expressed in the claims.