Details:
Ex parte Rhine
Appeal 2010006734, Reexamination Control 90/005,694, Tech. Center 2800
Patent 4,910,652
The claim on appeal was directed to a wristwatch including a light source mounted in the watch case, and further including a timer delay means which turned off the light source after a delay.
The Examiner rejected under § 103, combining a watch having a light controlled by an external switch with a flashlight having a time delay switch. As motivation, the Examiner pointed to a teaching in the flashlight reference that the time delay switch saved battery power. The BPAI characterized this motivation as a "design incentive" or "other market force," citing to KSR.
The Applicant argued that "it would not have been feasible to miniaturize the components of the mechanism taught in Mallory to put them into a wristwatch and still allow them to function." The Board found this unpersuasive:
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981). Appellant does not provide sufficient evidence that those of skill in the art could not have made a smaller version similar to the mechanism of Mallory to work in a watch. Indeed, Wegner teaches using springs in a wristwatch. (Wegner col. 2, ll. 47-50; Fig. 1, element 22). Thus, the Examiner had a reasonable basis for considering that the mechanism of Mallory, which relies on springs and valves, could have been successfully used in a watch. (Ans. 9). Appellant does not point to evidence to the contrary. Thus, we are not persuaded that the Examiner erred.
My two cents: The Board's references to "smaller version" and "miniaturization" makes it sound like there were clear differences between two references — small watch, big flashlight — and that the obviousness rationale was basically "miniaturizing electrical components to fit in a watch is a routine modification." Sounds reasonable, and I agree that this is a prima facie case which shifts the burden to the Applicant to show why that's not a routine modification. [Or to offer some other reason why the combination isn't rational.]
However, I think the Examiner's position — as expressed in the Answer — may be even stronger than as characterized by the Board. According to the Answer:
Applicant's argument that the time delay cutoff switch of Mallory is too large and bulky to be used in a watch is more a matter of scale than function. This is especially true when one notices in Figs. 1 and 3 of Wegner '871 that the electrical switch assembly shown uses a bulky, mechanical spring in the same manner as that of Mallory's '282 automatic time delay switch.Clearly, if the examiner had relied upon the time delay switch feature of an electric toaster or an egg timer then applicant's argument of non-analogous art might have been more persuasive.Here, the Examiner seems to be suggesting that miniaturization of the flashlight mechanism was unnecessary because the electrical switch in the watch already used a "bulky" spring, rather than the miniature spring one usually associates with watches.
If both the watch and the flashlight used a similar-sized spring for the electrical switch, this reduces the amount of difference between the two, and bolsters the conclusion of obviousness.
In that passsage, the Examiner also appears to be specifically targeting the Applicant's non-analogous art argument. As we've discussed before, the standard for non-analogous art is extremely high after KSR etc.
ReplyDelete>the standard for non-analogous art is
ReplyDelete>extremely high after KSR etc.
Yeah, but it was high before KSR: “First, we decide if the reference is within the field of the inventor’s endeavor. If it is not, we proceed to determine whether the reference is reasonably pertinent to the particular problem with which the inventor was involved.” In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986).
KSR didn't literally change this test. As for whether or not there's been a change to how it's applied in practice, I haven't looked at enough old cases to have an opinion on that.
I have noticed that Applicants often lose on the non-analogous argument in the BPAI opinions that I read,. But many of the Applicants don't address the second prong of the test. And some provide no analysis at all on the first prong, only a conclusory statement like "the field of watches is different than the field of lighting."
"the standard for non-analogous art is extremely high after KSR etc."
ReplyDeleteNo it's not.
"Under the correct analysis, any need or problem *known in the field of endeavor at the time of the invention* and addressed by the patent can provide a reason for combining the elements in the manner claimed." KSR, 550 US at 420.
So the examiner has to provide substantial evidence of a need or problem in the field of endeavor that was known at the time of invention, and the reference has to address the known need or problem. If the examiner is making up some need or problem, and not providing substantial evidence that there was a need or problem in the field of endeavor at the time of the invention, or if the reference doesn't address a known need or problem in the field of endeavor, then the rejection's no good.
This strikes me as In re Icon Health & Fitness all over again. Surprised it wasn't cited.
ReplyDelete>any need or problem *known in the field of
ReplyDelete>endeavor at the time of the invention* and
>addressed by the patent can provide a reason
I don't read this cite from KSR as a new formulation of the analogous art standard. Or even a formulation of THE obviousness standard.
I read this cite as merely *one* way to show a rational reason to combine.
>making up some need or problem, and not
>providing substantial evidence that there
>was a need or problem in the field of
>endeavor at the time of the invention,
Agreed that when the Examiner offers a benefit/need/problem as a reason to combine, attacking it is one way to fight an obviousness argument. One which I use frequently.
> ... then the rejection's no good.
Not sure I agree. Depends on what you mean by "substantial evidence there was a need/problem".
Don't think that an obviousness rejection requires a specific showing of a known problem. I say instead that KSR allows for generic rationales such as substitution, predictable combination of known elements, and design needs/market pressures (eg, stronger, faster, cheaper).
It may be that the Examiner is required to tie these generic rationales to the facts of the application. I'd *like* to see a Fed Cir case that says so but I don't know of one. Perhaps the requirement is implicit in the "articulated reasoning with some rational underpinning" requirement - but I'd like to see a more specific requirement in this context.
Karen,
ReplyDeleteYou are right that the same standard for analogous art (which you quoted) existed before KSR. My comment was inspired, I suppose, by the fact that, when the BPAI rejects non-analogous art arguments, they usually cite to KSR (specifically, "When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.").
>BPAI rejects non-analogous art arguments, they
ReplyDelete>usually cite to KSR
Ah, gotcha. I hadn't noticed that.
What I see a lot is BPAI cites to the Fed Cir formulation of the two-prong test for analogous art (e.g, In re Deminski) when the Applicant doesn't use the right test.
Perhaps the BPAI uses the KSR cite you mention for a different circumstance -- when the applicant uses the right test, but simply has a weak non-analogous art argument.
I wonder how often analogous art arguments (using the right test) are successful ...
Karen,
ReplyDeleteI agree that many practitioners don't cite the correct standard. I'll never forget it, because when I made my first non-analogous art argument in an appeal brief, my supervisor scathingly reprimanded me, and corrected me in harsh terms to use the full, exact language.
I don't know how often appeal briefs arguing non-analogous art cite the right standard. In my experience, many practitioners are not aware of it.
I do know that, when I did a westlaw search for all BPAI cases citing non-analogous art across 3 months, about 2 of 30 appellants succeeded with that argument. And most of the Board opinions cited that passage in KSR in rejecting the argument.