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.
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).