Ex parte Reisinger
Appeal 2009-007401, Appl. No. 10/1797,494, Tech. Center 3600
Decided August 31, 2010
The technology for this application was postage metering. The claims on appeal were directed to a postage metering device which receives delivery options (e.g., overnight delivery, signature required, etc.), determines a specific postage code representing these options, and prints a barcode which includes the postage code.
The Examiner rejected for obviousness, combining three references: the Uno patent, which disclosed a mail processing device receiving delivery options and selecting a postage class; the Guenther patent, which disclosed printing a barcode; and a Technical Advisory memo to the U.S. Postal Service which noted that postage code barcodes were under consideration for adoption by the USPS.
The Applicant noted that the USPS memo which discussed possible adoption of the bar codes predated the priority date of the application by six years. The Applicant then used this fact to argue the secondary consideration of "long felt need" / "failure by others":
As the Examiner stated [in the Answer], "contentions that the referenced patents are old are not impressive absent a showing that the art tried and failed to solve the same problem notwithstanding its presumed knowledge of the references. The reason why Appellant argued that the USPS minutes and the Uno reference are supportive of patentability, rather than a basis for precluding patentabilty, is precisely because they demonstrate a long standing problem with no solution.
The USPS minutes are evidence that the use of product codes has been considered as a requirement by USPS for many years, without implementation. Since the Uno reference precedes the USPS minutes, this is also evidence that those of ordinary skill in the field, having knowledge of the USPS minutes, are also presumed to have knowledge of the Uno reference. Nevertheless, no implantation of requirements for product codes in the United States has occurred, and the Examiner has been unable to cite any more relevant prior art that is more contemporaneous with the filing date of the present application, that even considers such implementation.
Appellant's point is not simply that the Uno reference has an old filing date, and is not simply that the USPS has many years ago proposed the use of product codes but still has not implemented any requirements relating thereto. Appellant's point is that if this (alleged) evidence of obviousness is the only evidence of obviousness that the Examiner has been able to compile, the aforementioned circumstances associated with both of those references are more persuasive in support of patentability than in support of precluding patentability.
The Board was not persuaded by the "long felt need" / "failure by others" argument, primarily because the Applicant had not tied the lack of adoption of the product codes by the USPS to a "problem in using the codes."
We find the Appellant's argument that the claims on appeal are patentable because they demonstrate a long standing problem with no solution unpersuasive. This argument appears to implicate the doctrine of long felt need. Evidence of long felt need must show that the problem solved by appellant's invention was known but not solved prior to the invention. See Al-Site Corp. v. VSI Int '1, Inc., 174 F.3d 1308, 1325 (Fed. Cir. 1999). To show failure of others, the evidence must establish that others skilled in the art tried and failed to find a solution for the problem solved by the appellant. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983).The Board then affirmed the obviousness rejection.
In the instant case, Appellant argues that despite a decade of considering the product code, it is still not required by the USPS as of today. However, this is not evidence that there is a "problem" in using product codes. Appellant has not established that the reason product codes are not used today is because there is a problem in using the codes. Also, the Appellant has not established that others skilled in the art tried and failed to find a way to use product codes.
My two cents: I agree with the result, though not the Board's particular phrasing of its rationale. Sure, the lack of adoption of the claimed used of product codes does show a problem, of some kind. But that's so vague as to be useless. There are all kinds of "problems" with adopting new features, i.e., reasons why particular features might not be adopted by industry. Cost and the feasability of implementation are probably the two biggest "problems" with adoption of new features. Yet those two "problems" point away from patentability / toward obviousness.
So, though the Board didn't come out and say it, seems to me that your evidence of long felt need / failure of others had better show that the reason others failed is something other than commercial considerations.
In this case, I think the Applicant missed on several counts. First, the Applicant merely showed that no solution was adopted -- which isn't the same as showing that anyone actually tried. Second, the Applicant didn't show any reason for failure at all.