Interesting angles on Federal Circuit's obviousness decision Tokai v. Easton

The recent Tokai v. Easton decision from the Federal Circuit has been getting a lot of buzz in the blogosphere. Here are some blog posts on Tokai which I found to be of particular interest: 

• Reexamination Alert asks: "Was Reexamination the Answer in Tokai v. Easton?"
• "KSR Fears Realized: CAFC Off the Obviousness Deep End" at IP Watchdog says that too many facts were in dispute to make this case appropriate for summary judgment, and that a comparison of the majority opinion and the dissent looks "almost as if they reviewing a different case."
• In a post titled Statements or Need in Patent Applications Risky, the Patent Talk Northwest blog notes that patentee Tokai may have shot itself in the foot by including a statement of unmet need in the Background.

I concur with Patent Talk Northwest. Just this month I wrote two posts about how statements made by an Applicant can lead an Examiner to conclude – rightly or wrongly – that the Applicant has admitted a rationale for combining. These two posts are:

• Examiner uses admissions in a long felt need declaration to provide a rationale for combining
• BPAI says Background discussion of prior art deficiencies is not admission that feature exists

BPAI finds that rejection of "generally circular" had confused written description with indefiniteness

Takeaway: The Applicant appealed written description and indefiniteness rejections for a limitation added during prosecution: "the orifice has generally circular shape and a substantially constant diameter." The BPAI reversed the written description rejection because the specification described “[t]he plate includes an orifice 43, the position of the orifice being indicated by circle 39 in Figure 7A.”  The BPAI also reversed the indefiniteness rejection, finding that “generally” and “substantially” both had an ordinary and customary meaning which denoted approximation.

Details:
Ex parte Albrecht
Appeal 2009011896; Appl. No. 10/885,980; Tech. Center 3600
Decided January 28, 2011

The claim at issue read:

27.  Apparatus for providing a controlled flow of fluid from a first fluid component to a second fluid component, comprising:
    a one-piece orifice plate ... the orifice has a general1y circular shape and a substantially constant diameter ...

The Examiner rejected the emphasized limitation under written description, enablement, and indefiniteness. In the Appeal Brief, the Applicant argued that the written description rejection was flawed because the specification had been amended to provided explicit support for the limitation. The Applicant argued against the enablement requirement by pointing to the drawings, and argued the indefiniteness rejection by explaining that the terms were meant to allow for minor deviations from a perfect shape. 

In the Answer, the Examiner asserted that the written description rejection was proper because the amendment to the specification wasn't entered. In regard to the enablement requirement, the Examiner indicated that

While the Figures may show a circular opening, for example, the disclosure does not define "generally" or a "substantially constant diameter." These limitations imply a range. But the specification is silent as to what that range might comprise, especially since the Figures are not stated as being to scale.

The Examiner provided a similar explanation for the indefiniteness rejection:

As noted above, the Figures are not disclosed as being to scale. Thus it is unclear what ranges would  include the "minor deviations" Appellant is accounting for.

The Board essentially found that the Examiner had confused written description and enablement with indefiniteness.

The Examiner states that “the terms ‘generally’ and ‘substantially’ are not defined.” Ans. 7 (discussing new matter objection). While we agree that Figures 7A and 7B fail to provide any indication of any specific range or scope for these terms of degree, the Examiner’s concern is an issue of claim definiteness, and is not a matter of written description, new matter, or enablement.

The Board found that the specification and figures showed the Applicant had possession of the limitation "the orifice has generally circular shape and a substantially constant diameter" and therefore reversed the written description rejection. The Board also found that the Examiner had not explained why a POSITA could not make and use this feature, and so reversed the enablement rejection.

The Board reversed the indefiniteness rejection too, with the following explanation:

     As to the claim limitations calling for the orifice to have “generally circular shape” and a “substantially constant diameter”, we find the terms “generally” and “substantially” as used in the context of Appellants’ Specification and Figures to take on their ordinary and customary meanings which denote approximation. See Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1366 (Fed. Cir. 2001). As such, the orifice has to have for the most part a circular shape and a largely or approximately constant diameter. See App. Br. 10 (Appellant stating that “generally” is used to encompass “minor deviations from a pure circular shape” and arguing that “substantially” is used to encompass “insignificant deviations from a pure circular shape”).
    As such, we find that the use of the term “generally” to modify the phrase “circular shape” and the use of the term “substantially” to modify the phrase “constant diameter” do not render these phrases so unclear such that there is no means by which to ascertain the claim scope.

My two cents: I'm glad the Board untangled the confusion in the written description and enablement rejections. In a lot of the file histories I read, Examiners and Applicants alike are guilty of mixing up new matter, written description, enablement and indefiniteness.

BPAI says Background discussion of prior art deficiencies is not admission that feature exists

Takeaway: In Ex parte Burdgick, the Applicant appealed in a case related to steam turbines. The Applicant's background stated that "Conventional turbine casing design techniques were not particularly helpful in identifying those key pipe connections that distort the turbine casing (seals) or in establishing load limits for pipe connections." The Examiner asserted that this Background statement disclosed the method step "identifying a plurality of the pipe connections as key pipe load connections on the turbine casing." The BPAI disagreed, finding that the Background instead taught a "lack of ability to identify" connections as claimed.

Details:
Ex parte Burdgick
Appeal 2009004835; Appl. No. 10/317,192; Technology Center 2100
Decided  November 19, 2009

Method claim 1 recited:

1. A method for establishing load limits for pipe connections to a turbine casing comprising:
a. identifying a plurality of the pipe connections as key pipe load connections on the turbine casing, wherein the key pipe load connections is a subset of all pipe load connections on the turbine casing;
b. developing transfer functions to model deformation of the turbine casing based on loads applied to the key pipe connections;
c. establishing individual load limits for each of the key pipe connections by optimizing solutions to the transfer functions, and
d. establishing a cumulative load limit for the key pipe load connections by optimizing solutions to the transfer functions.

The Examiner asserted the claim was obvious. The primary reference allegedly taught "finite element analysis and optimization of structural designs including turbine housings", but "did not provide much detail about the loading of pipes on turbine". The secondary reference allegedly taught "FEM analysis of pipe loading on pressure vessels including deformation failure and load limit determination." The Examiner then filled in the remainder of the claim using Applicant's background as Admitted Prior Art (APA), as follows:

It would have been obvious to one of ordinary skill in the art at the time of invention to modify the teaching of Oi et al. with the pipe loading analysis teachings of Meier et al. for the following reasons. Applicants have admitted (page 2, specification) that it was known to obtain pipe load limits on turbines:

[0005] Excessive piping loads can also distort the turbine casing during turbine transient operations. Piping loads during transients, especially when cooling occurs in the pipes, tend to distort the turbine casing to reduce the clearances between the seals and buckets. If these clearances become too small, the stationary seals may "rub-out" as they scrap against the rotating buckets. Seals that rub-out do not provide effective sealing as they allow excessive steam leakage during steady state turbine operating conditions. Accordingly, excessive piping loads may damage and distort the seals between the casing and the buckets such that turbine performance is degraded.
[0006] Piping load limits are imposed on the turbine design to avoid excessive piping loads that unduly distort the casing. In the past, these limits have been based on empirical and historical information regarding prior piping loads on similar turbine casing. It was common for piping load limits to be developed using simple calculations of the loads on the casing. Conventional turbine casing design techniques were not particularly helpful in identifying those key pipe connections that distort the turbine casing (seals) or in establishing load limits for pipe connections. Accordingly, there is a long felt need for methods to establish pipe load limits on turbine casings that avoid excessive casing distortion.

On appeal, the Applicant argued that APA did not disclose "identifying key pipe connections":

Applicant's Admission are statements in the application describing problems associated with excessive piping loads (para. 0005) and the prior art practice of developing piping load limits based on "empirical and historical information regarding prior piping loads on similar turbine casing[s]". [Para. 00061. These prior art techniques do not suggest the above highlighted steps of claim 1. Instead of suggesting the obviousness of the invention, Applicant's Admission indicates that persons of ordinary skill determined acceptable pipe loads using techniques starkly different than those recited in the method claims of this application. Applicant's Admission indicates that persons of ordinary skill would have not viewed the invention as being obvious.

In the Answer, the Examiner put forth a lengthy defense of his rationale as follows:

   Note that in claim 1 that "identifying key pipe connections" is an arbitrary 'identification' of some of the connections as more important ('key') than others. This depends upon the particular design, common sense and experience of the mechanical engineer (or possibly a program written by the engineer - the claim does not specify), and intended use.
   The first limitation of claim 1 only requires that certain of the pipe connections be 'identified' as key pipe connections. There is no requirement that the identification be carried out using any program or special technique; allowing for a skilled artisan to arbitrarily choose the connections based upon experience, for example, satisfies the limitation in the context of the claim.
   The engineer in 'identifying' the key connections is 'identifying' the pipes which will cause the most deformation. Since the claim does not require any special technique (at least prior to step 1), the 'identification' appears to be based upon experience, and in fact is satisfied by par. 6 of the specification .... Applicants have admitted (par. 6, as specified in the rejection) that it was known to impose load limits, and that there was a long felt need to establish better techniques to identify connections. Therefore, by Applicant's admission, it was known to identify key pipe connections and pipe load limits on turbines, in the same context using, at the least, a less than better technique.

The Board reversed the obviousness rejection, finding that the Background did not teach "identifying" as claimed, and in fact taught the lack of this ability to identify:

However, we find that Appellants’ statement, although found in the Background of the Invention section, is not an “admission” but rather a statement regarding the need to identify key pipe connections. Defining a need suggests something that does not yet exist. While the above-noted statement is in the Specification’s Background section, we find that this is not enough to launch such a statement into an admission of prior art. Thus, the record does not contain evidence that supports the Examiner’s position that Appellants’ Specification admits that it was known to identify key pipe
connections. As such, we find that Appellants’ disclosure does not teach the claimed identifying step, but instead stresses the need to develop such a step. Therefore, we disagree with the Examiner that AAPA teaches identifying key pipe connections as a subset of all pipe connections. Given that the Examiner also has not shown, and we do not readily find, how the Oi, Meier, and Tsai references teach the “identifying” limitation, we cannot sustain this rejection.

My two cents: I found the Examiner's rejection to be a little unclear, because he didn't map to the claim language.

The Board treated the rejection as relying on AAPA for teaching the "identifying" feature. And it's true that the rejection didn't clearly assert that one of the other references taught that feature. So maybe that's the most plausible reading.

But the final rejection kinda reads like AAPA is used as a rationale for combining: "would have been obvious to modify .. for the following reasons. Applicants have admitted it was known". Then the Answer made it sound like the rejection relied on the knowledge of a POSITA: "engineer in 'identifying' the key connections is 'identifying' the pipes" ; "allowing for a skilled artisan to arbitrarily choose the connections based upon experience, for example, satisfies the limitation".

In the Appeal Brief, the Applicant treated the rejection as alleging that AAPA disclosed the identifying step. Guess that was the right reading, because it convinced the Board that the Examiner's rejection was flawed.

Maybe there's another takeaway here: be aware that everything you say in your Background can, and probably will, be used against you by the Examiner.

BPAI says "in thermal contact" doesn't apply to reference material simply because "all materials are thermally conductive to some degree"

Takeaway: The application on appeal was directed to semiconductor manufacturing techniques involving plasma. The Examiner asserted that the claim limitation "a stem, the stem being in thermal contact with the gas distribution portion" read on the reference structure because "rudimentary thermodynamics requires all tangible materials .. to be 'in thermal contact' via ... conduction, convection [or] radiation." The BPAI found that the Examiner didn't show that a person of ordinary skill in the art of plasma processing would have understood "thermal conduction" to have this idealized meaning. The BPAI reversed the anticipation rejection on this and other grounds.

Details:
Ex parte Srivastava
Appeal 2009013335, Appl No. 10/755,617, Tech. Center 1700
November 22, 2010

The claim at issue read:

1. A baffle plate assembly for distributing gas flows into an adjacent process chamber containing a semiconductor wafer to be processed, comprising:
     a single generally circular planar gas distribution portion having a plurality of apertures therein;
     a flange surrounding the gas distribution portion; and
     an apertureless impingement device centrally attached to the gas distribution portion,
     wherein the device includes
          a generally circular cap and a stem,
          the stem being in thermal contact with the gas distribution portion.

The Examiner rejected the claim as being anticipated by Kinnard.  On appeal, the Applicant argued a three claim limitations, and distinguished the "thermal contact" limitation as follows:

Further, though the sapphire impingement plate 62 in [Kinnard] does "prevent the radially inward portion of the wafer 22 from overheating", it is essentially floating from a thermal perspective, and hence gets heated up by the hot plasma impinging on it, thereby serving as a site for recombination of active species. In contrast, Applicant's claims include, inter alia, a generally circular cap and a stem, the stem being in thermal contact with the gas distribution portion, which serves to minimize and/or prevent species recombination since thermal contact with the gas distribution portion serves to cool the generally circular cap and stem.

In the Answer, the Examiner further explained his reasoning as follows:

To this end, the Examiner emphasizes that rudimentary thermodynamics requires all tangible materials (solid, liquid, and gas) to be "in thermal contact" via any one of the three modes of heat transfer: conduction, convection, and radiation. Thus, not only are Applicant's claimed elements "in thermal contact", but also are Kinnard's equivalents, as well as all other apparatus made by man.

The BPAI reversed the anticipation rejection, finding that the Examiner erred on all three disputed limitations. In particular, the Examiner's interpretation of "thermal contact" as covering all materials was "not well taken" by the Board:

We also note that the Examiner has not come forward with any evidence that Kinnard standoffs 54 are thermally conductive. The Examiner’s argument, based on “rudimentary thermodynamics,” that all tangible materials are in “thermal contact” via some mode of heat transfer with everything else is not well taken. The Examiner has failed to come forward with credible evidence that persons having ordinary skill in the art would have understood the “thermal contact” limitation in such an idealized fashion that it would have no meaning in the plasma-processing laboratory or workplace. Glass or ceramic rods, for example, when heated at one end, will eventually get hot, but they are very poor heat conductors, and hence very poor “thermal contacts” compared to metal rods. While it might be possible to show it that a person having ordinary skill in the art would have recognized that Kinnard used metal rods as standoffs (or, in an obviousness rejection, that it would have been obvious to do so), the Examiner has failed to make such arguments.

My two cents: Though the Board did not explain its analysis in these terms, I think the issue is best framed as claim construction rather than what the reference did or did not teach.

I don't work with semiconductors, and I don't know if the reference disclosed the thermal contact limitation. But this looks to me like a case of overreaching by the Examiner: the Examiner's overly broad interpretation doomed the rejection at the Board, even if the reference would anticipate the limitation under a more reasonable interpretation.

Mistake #7.0 when arguing at the BPAI: Using attorney argument when evidence is required

This post continues with my series of "Top 10 Mistakes in Arguing on Appeal to the BPAI." (Complete list here.) Today I'll discuss Mistake #7: Using attorney argument when evidence is required. Actually, I'll take two posts to cover this topic, so consider this to be a post on Mistake 7.0. (Update: The second half of this post can be found here: Mistake #7.5 when arguing at the BPAI: Using attorney argument when evidence is required.)

The MPEP discusses the use of declaration evidence to refute a prima facie case of obviousness. Therefore, some practitioners have the mistaken impression that this is the only time evidence is required. Not so. Other types of arguments that may require evidence instead of attorney argument include:

• Whether a specification is enabling
• Whether a reference is enabling
• Meaning of a claim term
• Knowledge of a POSITA
• Teachings of a reference
• Modifying or combining references

I'll talk about the first four of these in today's post. I'll save teachings of a reference and modifying  / combining references for the next post in the series. A general guideline for all situations is that the Board may require evidence when your argument relies on more than the plain teachings of the reference.

Applicants often respond to enablement or written description rejections by pointing to portions of the specification and arguing that the claims are enabled in view of these teachings. If these teachings are self-explanatory, then attorney argument is probably sufficient. However, if one needs to go beyond the explicit teachings of the specification to see that the claim is enabled, evidence may be required.

This point is illustrated in Ex parte Roche (BPAI, 2009). 

The Examiner has presented a facial case that determining a threshold value for a particular fuel rod is not predictable. The Examiner has further presented a logical basis to conclude that one of ordinary skill in the art would be required to conduct undue experimentation to determine the threshold value. In opposing the Examiner’s reasoning, Compagnie chose not to rely upon evidence in the appeal. Instead, Compagnie relies upon unsupported attorney argument that the specification provides examples of how the threshold might be determined and postulates a manner in which one of ordinary skill in the art could potentially determine a threshold value. We do not credit Compagnie’s attorney argument as it is not commensurate with the teachings of the specification. See, Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).

Similarly, when an Applicant takes the position that a reference is not enabling, evidence may be required, especially when the position contradicts the reference itself.

This issue arose in Ex parte Kim (BPAI, 2009). The application claimed a semiconductor manufacturing method which included the step "performing a non-selective etching from said substantially planar surface to a said predetermined structure formed thereon." The Applicant argued that the reference did not explain how to make the etching process non-selective as claimed, i.e., that the disclosure in the reference was not enabling. The Applicant noted that the reference did not include any details for non-selectivity, while the Applicant's own non-selective etching was described in detail.

The Board disagreed:

   IBM has offered no credible argument nor evidence that the RIE of Hummler is “selective” as to certain materials shown in Fig. 9 versus “non-selective”. To the contrary, Fig. 10 illustrates that the nitride layer 42, as well as the insulating material 50, and the pad nitride 14, are all removed in the RIE to present a substantially uniform planar surface in Fig. 10A.
   IBM's remarks regarding the alleged non-enabling disclosure of Hummler are not well taken. Hummler is presumed to be enabling for all that it describes and IBM has proffered no evidence to the contrary. See, In re Sasse, 629 F.2d 675, 681 (CCPA 1980)

Attorney argument may not be appropriate in explaining the meaning of a claim term. Instead, a dictionary definition or other evidence of what the term means to a person in the art may be required.

This point is illustrated by Ex parte Pettinato. The Examiner read the claim term "stenocapturing device" as being "broad enough to include a voice recognition transcription device," while the Applicant asserted that "it is known to those skilled in the art of closed captioning that a stenocaptioning machine is operated by a human being." The Board agreed with the Examiner's interpretation, noting that "Appellant has not provided a definition from a recognized source in the art, but has only provided attorney argument."

Statements about the knowledge of a person of ordinary skill in the art can be another instance where evidence rather than attorney argument is required. Ex parte Cobb involved an indefiniteness rejection for the term "standard size magnetic stripe gift card." The Applicant asserted that "there is a standard size for magnetic strip gift cards, and that is the size of a credit card, namely 54 mm by 86 mm."

The Board affirmed the indefiniteness rejection, explaining that:

Appellant presents only argument and but no evidence indicating that a person of ordinary skill in the art would have known that there was at the time of invention a standard size for magnetic strip gift cards, or that that size is the same as credit cards. Appellant does not argue that the Specification offers any clarification as to what constitutes a “standard” size gift card.

As another example of assertions about the understandings of a POSITA, in Ex parte Rosenberg the Applicant argued that if the changing pad disclosed in one reference were modified to absorb urine per the teachings of another reference, "it would quickly become stinky and unusable."

The Board found this statement to be mere speculation unsupported by evidence:

The Appellant, however, does not explain the basis for the assertion that a pad with absorbed urine is “unusable.” The argument amounts simply to speculation by the Appellant that is unsupported by the prior art or any other objective evidence, such as declaration testimony. Mere argument cannot take the place of evidence lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).

My two cents: In most of the file histories I've read, the Examiner never said "evidence is required." It was only in the decision on appeal that the Applicant learned his "mere attorney arguments" weren't entitled to consideration. All is not completely lost, since you can re-open the case after appeal in order to introduce evidence. But clearly it's better to know this the first time, to avoid a second trip to the BPAI.

Another good rule of thumb: if your inventor gives you information about how the technology works, or what a reference teaches, you should probably introduce this as declaration evidence rather than pasting this into your response.

New Examination Guidelines for Definiteness and Functional Language

The PTO has released new Examination Guidelines for Definiteness under 112 Second and for "Computer Implemented Functional Claim Limitations." You can find the Guidelines here.

PharmaPatents blog has a summary of the guidelines here, along with some commentary. IPWatchdog has a summary here, along with a discussion of how they fit in with other Kappos initiatives.

BPAI finds disclosure of two options for building a system is not selective disablement of options during system operation

Takeaway: In Ex parte Khayrallah, one of the claims at issue included "wherein selectively varying the gain of the secondary receiver comprises disabling one or more components of an analog-to-digital converter." The BPAI reversed an obviousness rejection because the reference relied on by the Examiner did not teach this feature. Instead, the reference taught two different receivers, one with a single A/D converter and another with two converters. Thus, disclosure of two options for building a system is not the same as selective disablement of those two options during operation of the system.

Details:

Ex parte Khayrallah
Appeal 2009007971; Appl. No. 10/427,872; Tech. Center 2600
Decided  October 15, 2010

15. A method for improving the performance of a portable wireless device in a wireless network, the portable wireless device comprising a front-end and a front-end controller, wherein the front-end comprises a primary antenna connected to a primary receiver and a secondary antenna connected to a secondary receiver, the method comprising:
    activating the primary antenna; and
    selectively varying the gain of the secondary receiver to maintain a desired performance and to reduce power consumption.

21. The method of claim 15 wherein selectively varying the gain of the secondary receiver comprises disabling one or more components of an analog-to-digital converter.

In the Appeal Brief, the Applicant didn't even make arguments to distinguish over the prior art for dependent claim 21. Instead, the Applicant argued that the rejection was legally deficient because the rejection didn't even address the specific limitations of the dependent claim. Instead, the Examiner discussed features in the prior art related to adjusting sampling rate. Those limitations were present in a different dependent claim. 

In the Examiner's Answer, the Examiner alleged for the first time that:

Schumutz teaches of using one of the A-D converter when there is no diversity capability is required (see column 6 and lines 60-64) in which means one of the A-D converter is disable when there is not need for it in which does make sense of power reduction.

The Applicant filed a Reply Brief, but did not address the Examiner's new argument. Instead, the Applicant referred to the deficient rejection in the last Office Action, and mistakenly stated that "the Examiner's Answer does not address this point."

The relied-upon section of reference disclosed:

This multichannel baseband signal is preferably coupled to high-speed A-D converters 52-1 and 52-2 operating in parallel for diversity receive capability. Where no diversity capability is required, a single A-D 52-1 could be utilized. 

The BPAI found that this section taught "design choices for different systems", but "does not teach disabling one or more components of an analog-to-digital converter for varying the gain of a secondary receiver."

Takeaway: The BPAI reached the right outcome, but only because the Board read the reference. This case could have easily gone the other way, because the Applicant did not actually address the grounds of rejection which appeared for the first time the Examiner's Answer.

A safer bet would be for the Applicant to use the Reply Brief to make the same point the Board did: that the reference merely disclosed two options for building a receiver(use two converters when diversity is desired and one when diversity is not required), which is not the same as selective enabling one or more components during operation of the receiver.

Perhaps you are thinking that selectively enabling converters during operation of a receiver is still obvious. What about this for a prima facie case ... Adding selective enablement of an A/D converter to a receiver produces a predictable result. Any required design modifications are within the skill of a POSITA. The motivation is to reduce power consumption, a benefit that would a POSITA would readily appreciate.  

Finally, one minor quibble. If you read the claim closely, it says disabling one or more components of an A/D converter. The reference described, and the Board discussed, options for building a receiver using one or two A/D converters. There's a difference, right?

Now, the reference certainly didn't teach disabling components of an A/D converter, so the Board properly reversed. But was that an accident? Did the Board go down the wrong track because they didn't read the claim carefully? Makes me wonder.

Related Posts:  This case says disclosing two alternatives for components when building a system is not the same as disclosing selective disablement of the components during operation. I blogged about another case, Ex parte Keller, and made a related point: a reference that discloses the presence of a particular feature in one embodiment along with the absence of the same feature in another embodiment does not teach selectively enabling the feature.

Examiner uses admissions in a long felt need declaration to provide a rationale for combining

Takeaway: During an ex parte reexamination, the Examiner used statements in a secondary considerations declaration as a rationale for combining references. "The admissions by the applicant in his declaration and remarks show that a one piece design was considered desirable by those of skill in the art and would predictably result in preventing the loss of game calls, maintaining a true sound, and reducing the cost of the game call." We won't know if the Examiner's position was tenable, since the issue before the BPAI was not the obviousness rejection itself, but whether the Examiner had presented a substantial new question of patentability.


Details:
Ex parte Muzzy Products Corp.
Appeal No. 2009-011350, Reexam 90/008,081, Tech. Center 3900
Decided September 1, 2010

Muzzy Products obtained a patent with claims directed to a device for calling game. A reexamination request was filed on the patent during litigation. The Examiner adopted the requester's position that the claims were obvious over a previously considered reference, in combination with admissions made during prosecution of the original patent.


Specifically, the Examiner contended that the reference taught all limitations except for a "one piece construction." The Examiner further asserted that the Applicant's statements in a declaration of long felt need were admissions showing that a one piece design was desirable and provided specific benefits, as follows:

3. During the earlier concluded examination, a declaration was presented to show that the claimed invention satisfied a long-felt need. As noted by the requester, the inventor admitted in this declaration "I developed the present game call device after noting several complaints by others in the art that a separate game call and holding device was disadvantageous."
4. The inventor makes an admission as to those of ordinary skill in the art: "those using my father's '091 game call holder." In a response, the applicant further admitted that customers, i.e., those using the '091 game call holder, apparently recognized that having separate game calls and holders was disadvantageous. Since those using the '091 game call holder are also of ordinary skill in the art, it appears that the itemized explanations in the remarks also relate to the knowledge of those skilled in the art.
5. Thus, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the game call device of Musacchla '091 to a one-piece game call and elevating device because the admissions by the applicant in his declaration and remarks show that a one-piece design was considered desirable by those of skill in the art for the purpose of preventing the loss of game calls, maintaining a true sound, and reducing the cost of the game call.

The patentee appealed, but not on the obviousness rejection. Instead, the patentee appealed on an issue specific to reexam – whether the Examiner had shown a substantial new question (SNQ) of patentability, which as of June 2010 is an appealable issue.

The Applicant argued that the question presented in reexam was not a new question, because prosecution of the original patent involved the same issue: a single reference obviousness rejection using the same reference.

The Examiner contended that original prosecution considered the 1.132 declaration only as evidence of long felt need, used to rebut the prima facie case. The original Examiner did not appreciate the admissions in the same declaration as a motivation to combine. This new appreciation cast the reference in a "new light," and thus raised a new question in reexam.

The Board held that a substantial new question was not presented:

[T]he CRU Examiner does not apply the statements in the Declaration to gain any new understanding as to the teachings of the Musacchia reference, but rather, uses the statements merely to reach a different legal conclusion as to obviousness. While the CRU Examiner asserts that the statements in the Declaration casts Musacchia in a "new light" (Ans. 14), the CRU Examiner's position suggests that the CRU Examiner is viewing the Declaration, not the Musacchia reference, in a new light.

The Board remanded the application back to the Examiner for termination of reexamination proceedings.

My two cents: What caught my attention was not the reexam-specific SNQ issue, but instead the idea that declarations can be used against an applicant. Statements about what the inventors understood as deficiencies in the prior art can't be used as a motivation to combine. However, statements about long felt need must be about what POSITAs perceive as a deficiency, in order to be effective. In re Gershon, 372 F.2d 535, 538 (CCPA 1967) (in order to show a long-felt but unmet need for the claimed invention, the objective evidence must show that the need was a persistent one that was recognized by those of ordinary skill in the art). Therefore, I think that the Examiner's use of the declaration admissions was proper.

A problem in the prior art can usually act as a rationale for combining, if the Examiner can also show that the claimed combination solves the problem in a predictable manner. Here, the Examiner used the admissions in the declaration to show both. The declaration said that POSITAs recognized shortcomings of a two piece game caller: easy to lose, expensive to manufacture. Isn't that a reason to combine? The declaration also said that the claimed one piece design would address these problems, making it harder to lose and cheaper to make. Doesn't that show that the result of modifying the reference to use one piece rather than two piece construction would be predictable? Isn't that an articulated rationale under KSR?

Maybe admissions that can be used to build a prima facie case of obviousness aren't so bad in this particular scenario. After all, maybe an Applicant resorts to a declaration of long felt need only when the prima facie case can't be beat – when the Examiner already has a strong rationale for combining. The lesson here is to simply think about what you're doing, and realize that you may be giving up your prima facie case – and in fact, giving it to the Examiner on a silver platter – by using a declaration of long felt need.

Finally, it doesn't seem like this danger is limited to reexam. Though the Examiner waited until reexam to switch from a weak rationale to the strong one found in declaration admissions, seems like he could have switched his position as soon as the declaration was filed (in the original prosecution).