Tuesday, April 5, 2011

BPAI reverses obviousness because invention solved different problem than either reference

Takeaway: The BPAI reversed an obviousness rejection when the claimed invention solved one problem, yet the primary reference solved another problem, and the secondary reference solved yet another. (Ex parte Young, March 29, 2011.)

Ex parte Young
Appeal 2010010001; Appl. No. 12/103,325; Tech. Center 3700
Decided  March 29, 2011

The claimed subject matter was directed to a medical device, such as a feeding tube. Claim 1, a representative claim on appeal, read:

1. A medical device configured for dynamic movement through a body canal toward an interior target site and removal therefrom, said device comprising
     an elongate tubular member having a plurality of distal projections disposed on an exterior surface thereof,
     said projections extending outwardly from the exterior surface of the tubular member a distance sufficient to engage an interior surface of the body canal during bodily contractions therein,
     said distal projections being configured so as to promote ingress of said device in response to said contractions,
     at least some of said projections being formed of a composition that is soluble under bodily conditions at said body canal.
An example embodiment is shown below, with distal projections 16.

The Examiner rejected claim 1 as obvious, alleging that the primary reference (Reydel) taught a medical device with distal projections as claimed, except for the soluble composition. The Examiner relied on the secondary reference (Anders) for teaching a catheter having a portion that is formed of a composition soluble under bodily conditions. The Examiner alleged that using Anders' soluble composition to form Reydel's distal projections would be obvious "to provide a composition that will dissolve in bodily fluids" as taught by Anders. The Examiner further alleged that "it is within the general skill of a worker in the art to select a known material based on its suitability for the intended use as a matter of obvious design choice."

The Appellant argued that Reydel's tube differed from the claimed tube because although the projections are useful for inserting the tube, the projections impede removal of the tube. The Applicant argued that the claimed invention improves on Reydel's tube by providing a mechanism for removing the projections once the tube is placed: the projections dissolve. Thus, the invention "addresses difficulties that may be encountered when attempting to withdraw the tube." The secondary reference, Anders, disclosed a needle with a soluble tip. But the problem addressed by Anders was much different: protecting healthcare workers from needle sticks.

The Board agreed with the Applicant and reversed the obviousness rejection. The Board found that "the Examiner did not establish a reason based on the evidence in the record for combining Reydel with Anders to result in a medical device comprising projections formed of a composition that is soluble in a body canal."

The Board first noted the problem addressed by, and the solution provided by, the claimed invention: unidirectional projections that promote ingress but then dissolve to eliminate an impediment to egress. The Board then contrasted this with the problem and solution of Reydel – bidirectional projections that assist in ingress and remain during egress without causing trauma. Finally, the Board noted that Anders addressed yet another problem, needle stick, that can occur outside the body after removal of the device. The Board concluded that "the Examiner has not shown through evidence that, at the time of the invention, it would have been desirable to have a medical device including a tubular body with exterior projections that are present only during ingress, much less to use dissolvable flaps as a solution."

My two cents: I haven't seen many cases where the Board used this sort of "problem" analysis to decide obviousness.

The Board focused on the teachings of the references as a whole rather than just the specific features used by the Examiner. The Board found that the "bidirectional" projections in Reydel functioned differently than the Applicant's projections, and used this in finding non-obviousness. This argument wouldn't have gone far in an anticipation rejection. First of all, the claims didn't recite the unidirectional behavior, so the feature is irrelevant. Second, the fact that a reference teaches more than is claimed – Reydel's projections were flexible and thus "bidirectional" – is irrelevant to anticipation. Yet the Board did looked to these aspects of Reydel in deciding whether or not a POSITA would combine Reydel with Anders.

The Board did not comment on the Examiner's "obvious design choice to select a suitable material" rationale. Perhaps the factors which the Board focused on outweighed the suitable material rationale. In other words, it's obvious to select a suitable material unless there are reasons why it's not obvious, such as those the Board found.

The Board also didn't comment on the Examiner's circular rationale for combining: it would be obvious to add  claimed feature A (soluble projections) to the primary reference to produce the result provided by feature A (soluble projections).


  1. ITT the board likely commits several errors of lawl and furthermore declines to show the examiner the proper motivation from the secondary reference and leaves it for him to figure out even though it is blatantly set forth for everyone to see.

    Wow, that was a subject worth reading about.

    Or not.

  2. I don't expect we'll see too many rejctions like this in the future. Now that the CAFC has said in Tokai that the novel elements do not need to be found in the prior art so long as adding them is "so easy a high school shop class could do it lolololol." So I don't expect Examiner's who can't find the missing elements in a five minute google search to go to the trouble of trying to import similar features from another reference that aren't used for the same purpose. Why should they? All they have to do is allege that it would not take extraordinary skill to do it and they have another count.

  3. "The Board also didn't comment on the Examiner's circular rationale for combining: it would be obvious to add claimed feature A (soluble projections) to the primary reference to produce the result provided by feature A (soluble projections)."

    LMAO ... I cannot tell you how many times (because it is a large number) I've seen an Examiner argue "it would have been obvious to include A for the purpose of having the result produced by A."

    Who teaches 'logic and reasoning' at the USPTO? Crusty the Clown?

  4. TINLA IANYL said:
    > don't expect we'll see too many rejections
    >like this in the future.

    I agree this is an outlier case.

    >CAFC has said in Tokai that the novel elements
    >do not need to be found in the prior art

    I agree that Tokai continues along a path lowering the bar for obviousness. But even after the elements are found -- or common sense is used to fill in missing elements -- there still has to be a rationale for combining. I see this case (Young) as showing one way to attack the rationale. Not saying it will always be successful. Just something to be aware of.

  5. >I agree that Tokai continues along a path >lowering the bar for obviousness.

    Understand, the bar should have been lowered a long time ago, but the problem, of course, is that the examiners and the examination process have no room for intelligent examination. So now, instead of blindly allowing all sorts of crappy patents they are making everything obvious without a rational.

    The inherent problem is that obviousness is inherently subjective but legal and quasi-legal decisions need to be applied uniformly - which suggests/requires objectivity.

    The problem with "it would have been obvious to include A for the purpose of having the result produced by A." is not a lack of logic; it is the pure subjectivity of the "it would have been obvious" part.

    No one would disagree with the statement that using red paint is an obvious (in the non-patent-legal) way to get a red painted house... unless, of course, red paint is not a reasonably known color of paint to house painters (only known to a few artists, perhaps).

    Thus, what we are seeing during examinations these days is the examiner (arguably) finding the red paint somewhere in the prior art and then making the subjective statement that applying the "known" red paint to the house obviously results in a red painted house.

  6. "LMAO ... I cannot tell you how many times (because it is a large number) I've seen an Examiner argue "it would have been obvious to include A for the purpose of having the result produced by A.""

    This reasoning in fact makes sense, PROVIDED that A and its effect are known, and that the role of A in the claim is precisely to produce that effect. This is essentially shorthand for the problem solution approach used by the EPO.