Yesterday's post focused on how Applicant admissions helped the Board to reach the conclusion of "obvious design trade off." Today I'll discuss the dissenting opinion in Parker, which found error in the Examiner's substitution rationale.
The Examiner offered this rationale for obviousness:
Horrigan et al. do not disclose the use of a flat wire coil, a round wire coil or a braided wire coil as a reinforcement means. Park et al. teach a catheter section or sheath with equivalent forms of stiffening members or reinforcement for kink resistance, i.e., a flat wire coil, a round wire coil and a braided wire coil.
It would have been obvious ... to have substituted the wire braid 35 of Horrigan et al. with a braided wire coil, a flat wire coil or a round wire coil as disclosed by Park et al. to have facilitated the manufacture of the catheter or sheath with a diameter suitable for application in an environment of increasingly small diameters.
(Internal citations omitted.)
Now, the strength of the substitution rationale depends on just how equivalent braids and coils really are. The dissent found that the Examiner's premise of equivalency was based on reading statements in the secondary reference (Park) in isolation.
Here's the statement which the Examiner relies on for equivalency:
[T]he structure of this ribbon coil-based catheter section [in FIG. 5] and the similar variation (224) shown in FIG. 6 using a wire or strand-based unwoven coils (226) are acceptable alternatives to the preferred variation shown in FIG. Nos. 3 and 4.
The dissent says that Park, when read as a whole, merely teaches the interchangeability of braids and coils in the specific context of Park's invention. The dissent says that Park is really about using a super-elastic material for the reinforcing mechanism, where the material changes shape when heat is applied. It's true that Park discloses the reinforcing mechanism can be a coil or a braid. But that doesn't mean that coils and braids are truly interchangeable -– only that the choice doesn't matter for Park's invention because Park's invention is about the material itself.
This same point was made (quite elegantly) by the Applicant in the Reply Brief:
[A teaching] that discusses the possibility of using a variety of reinforcements under conditions in which the particular type of reinforcement is of little significance to the teaching at hand, does not provide a skilled artisan with sufficient guidance to arrive at the invention claimed herein ...
A substitution rationale is strongest when it's simple substitution – when switching from braid to coil doesn't make a difference. Without such a teaching – or better yet, with a teaching that says it does make a difference – the rationale is weakened. Here, the Examiner specifically relied on Park to show that coils and braids were equivalent. I say the Applicant was on the right track in attacking this premise. The fact that the majority of judges didn't see it that way doesn't mean it's not a valid argument. I'd say the fact that the dissent was convinced shows the argument has some merit.
APJ O'Neill is head and shoulders above some of the dolts on the BPAI. It's sad that only he understood that the prior art references have to be considered "as a whole" and not just whether their "teachings" can be twisted to support a rejection.
ReplyDelete"But that doesn't mean that coils and braids are truly interchangeable -– only that the choice doesn't matter for Park's invention because Park's invention is about the material itself."
ReplyDeleteSo why would it matter for the obviousness analysis of the instant invention? Riddle me this and riddle me that, but this dissent, even for all its proper sounding bluster was incompetent in the extreme it seems to me without having reviewed the whole record in excrutiating detail.
Also, the majority, in holding how it did, made for substantial lulz and that is praiseworthy.
"Without such a teaching – or better yet, with a teaching that says it does make a difference – the rationale is weakened. "
Lulz, except when that difference that the substitution would make is a motivation to make the substitution.
"The fact that the majority of judges didn't see it that way doesn't mean it's not a valid argument. "
Nah it just means that it is one that is pretty much never convincing. Why? Because of the question I raised above. If it wasn't important in the one reference, then why is the change so important in the instant application? And if there is some reason then sure there is merit. If there is no reason then there is no merit, as it appears to be in this case.
"Because of the question I raised above. If it wasn't important in the one reference, then why is the change so important in the instant application?"
ReplyDeleteIf you read the previous post, the applicant explained the significance of the braid vs. the coil. One would work, one would fail.
"And if there is some reason then sure there is merit. If there is no reason then there is no merit, as it appears to be in this case."
There is merit. The examiner ignored it, and the majority ignored it. APJ O'Neill nailed it though.
>If it wasn't important in the one reference,
ReplyDelete>then why is the change so important in the
>instant application?
As the previous commenter said, the Applicant did explain the differences between coil and braid, and their significance.
>If there is no reason [for changing from one
>mechanism to another] then there is no merit
>[to the argument], as it appears to be in this case.
I disagree. I'm sure you'll find this to be a "technicality" or "just lawyering", but the Examiner's prima facie case relied on the equivalence of braids and coils. Which is why attacking this premise is a good argument.
At the end of the day, the Board may look deeper into the rejection, and come up with a different rationale to affirm. In which case, Applicant loses, despite having beat the Examiner's PF case.
And if your client wants to appeal only a bullet-proof case, then maybe you tell your client not to appeal in such a situation. "Hey, we can beat the substitution rationale, but we're still vulnerable to obvious-design-tradeoff."
But maybe your client wants to roll the dice and appeal on a less-than-bulletproof case. I'll bet there are at least some panels that would stop at finding the Examiner's rationale to be deficient, to reverse the rejection.
I don't think either of you seem to understand my post.
ReplyDeleteMy point is that the "equivalence" is wholly immaterial, irrelevant. The question, is whether or not the substitution is proper. The question is not whether or not the two things are equivalent. The simplicity of the substitution as established by "equivalence" (if such a monster even truly exists) is hardly relevant although it might be nice to have as gravy. That is why attacking the equivalence is a waste of time.
"Which is why attacking this premise is a good argument. "
How so? So that the board can tell you that whether or not you win or lose on that premise is wholly irrelevant? Yeah. Great job.
And no, I don't find that to be a technicality or just lawlyering. I find it to be wholly spurious. It is the new spurious flavor of the day, which you still haven't written a little article on since the Jung case. And I still can't wait until you do, admit your mistake, acknowledge the spurious nature of half of your argumentlols and move on with your life.
Why is it wholly spurious in this case? Because the examiner's position does not stand or fall on a determination of whether or not his finding equivalence was correct. For example, the examiner writing down a finding that the sky is in fact not blue on a clear blue sunshiny day in addition to having made all the correct findings to reject the instant claim is completely irrelevant. And any challenge based on a failure to make a prima facie case in such a case is spurious.
"At the end of the day, the Board may look deeper into the rejection, and come up with a different rationale to affirm. In which case, Applicant loses, despite having beat the Examiner's PF case.
"
Or they might just skip over the irrelevant parts of the rejection and hold for the examiner on the parts that were relevant. That could happen too. Kind of like, oh wait, kind of like it happened here.
"But maybe your client wants to roll the dice and appeal on a less-than-bulletproof case. I'll bet there are at least some panels that would stop at finding the Examiner's rationale to be deficient, to reverse the rejection. "
There's always a chance you'll find someone incompetent at their job or having a bad day. But you always have that chance, regardless of the rejection you're facing.
And for the person above you Karen, yes, there may very well be merit to the argument, indeed, the majority acknowledges as much. According to Karen:
ReplyDelete"However, the Board found that even if the Examiner's finding of equivalence was in error, it would be obvious to balance design trade offs to select either a coil or a braid for a reinforcement."
But the question of obviousnness is not done once you've established that there is enough difference to not have the two things be not considered equivalents.
Perhaps I should have been more clear, for there to be merit to the overall attack on the obviousness determination, as opposed to just the finding of equivalence, you're going to need something in the difference that literally makes them uncombinable. And in this case, the "abstraction level" of claims would make such an argument of uncombinability tantamount to an argument that your own claim was not enabled and was impossible to make.
In other words, to make this argument have enough merit to overcome the rejection, you're going to need the art to be more detailed than your claim is (that is, on a lower "abstraction level") and then have one of those details make it uncombinable with the other piece(s) of artd.
As I understand the previous post, the BPAI found it irrelevant whether the finding of equivalence was correct or not, since the applicant had now shown that the skilled person was aware that using a coil provided distinct advantages, and that itself was sufficient for obviousness.
ReplyDeleteSo the dissent is concerned with an argument that the majority did not base its opinion on.
The applicant's arguments would probably have succeeded if the advantages of using a coil had not been known.