Monday, September 13, 2010

BPAI not persuaded by argument that reference for home use would not combined with reference for mass production (Ex parte Fellowes)

Takeaway: The BPAI found unpersuasive an Applicant's "no motivation to combine argument" that a primary reference related to a home user context while the secondary reference related to a mass production context. The Board found that the secondary reference was not in fact limited to a mass production context.
(Ex parte Fellowes, Inc.)

Details:
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.

3 comments:

  1. "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."

    I find arguments along these lines unpersuasive because they strike at the spirit of the law. While hard to deal with because of its subjectivity, the concept of obviousness based on a POSITA is at the core of patentability.

    Patents should only go to inventions that have substance. The S of POSITA means something. Any good engineer (viz., someone with SITA) should be able to extrapolate from a home/individual consumer environment to a commercial environment (and vice versa, although that is often harder).

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  2. >someone with SITA) should be able to
    >extrapolate from a home/individual consumer
    >environment to a commercial environment

    Well, that's fact-specific, right? That is, surely you can envision some inventions where there are difficulties in moving from one environment to another?

    And if that's true, this could be a reason not to combine, and thus an indication of non-obviousness.

    In Fellowes, there was no indication that moving from one context to another was inventive. So I think the Board reached the right result.

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  3. Absolutely my point. The applicant was essentially arguing that a POSITA would not be motivated to combine because of the different environments, but to argue this, in this (fact specific) case, one is essentially arguing that a POSITA is a dunce.

    In other cases one might be able to say that someone of skill in, say, mining technology, might not be able to appreciate a reference in, say, aerospace engineering, because of the wide variation in, say, terminology, scale, etc. BUT in Fellowes there is no such chasm.

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