BPAI reverses obviousness based on KSR rationale "combination of familiar elements"

Takeaway: The BPAI reversed an obviousness rejection in which the Examiner relied on the "combination of known elements to yield predictable results" rationale because the element at issue did not perform the same function. The Examiner modified the shower curtain of a primary reference with a ruffle from a secondary reference, because a ruffle was known to provide a pleasing aesthetic effect. However, the function of the ruffle in the secondary reference was to provide deodorizing properties rather than aesthetics.  (Ex parte Peoples, BPAI 2010.)


Details:
Ex parte Peoples
Appeal 2010-007842; Appl. No. 11/448,936; Tech. Center 3600
Decided:  September 29, 2010

The only claim on appeal, directed to a two-piece shower curtain, recited:

     1. A two-component shower curtain of a type in an in-use condition suspended from a shower support rod and in a laundering condition disconnected from said support rod, said one-component comprising:
     A. a shower curtain of plastic construction material constituted as
          a. a rectangular shape having an upper edge and a bottom edge;
          b. a zipper lower track in sewn attachment along said shower curtain upper edge;
and a said second-component comprising:
     B. a valance of plastic construction material constituted as
          c. an elongated first rectangular strip having an upper edge and a bottom edge;
          d. plural adjacent spaced apart edges bounding openings in said upper-edge for receiving therein grommets for attachment to said support rod;
          e. a zipper upper track in sewn attachment along said valance lower edge;
          f. an elongated second rectangular strip in sewn attachment at a selected location between said upper and bottom edges;
          g. said selected location of said sewn attachment positioning said second rectangular strip in a depending overlapping relation over said zipper upper track; and
     C. an operative position of said valence in overlapping relation of said zipper upper and lower tracks in attached relation to each other;
     whereby when said shower curtain is released by being unzippered from said support rod incident to detachment of said zipper upper and lower tracks and placement of
said shower curtain into said laundering condition thereof, said valance remains to mask said zipper upper track from view to contribute to an enhanced shower curtain appearance.

The Examiner rejected the claim as obvious, relying on a primary reference Hinds for teaching the curtain (elements a, b) and a secondary reference Scott for teaching the valance (elements c-g) and the functional limitation C. As a motivation to combine, the Examiner alleged that a POSITA would incorporate the valance of Scott into the curtain of Hinds "for the purpose of aesthetics." Furthermore, the Examiner also took the position that

All of the claimed elements are known in the prior art and one skilled in the art could have combined the elements as claimed by know methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.

On appeal, the Applicant did not contest that the claimed elements were disclosed, but instead attacked the Examiner's motivation to combine. In the Appeal Brief, the Applicant argued that the Examiner's motivation for using Scott's valance ("aesthetics") ran counter to the teachings of Scott, which disclosed that the valance remained permanently attached to the support rod in order to provide deodorizing or antiseptic properties.

In the Answer, the Examiner further clarified that Scott's ruffle mapped to the "claimed elongated second rectangular strip in sewn attachment at a selected location" and that "use of a ruffle per se in the art of curtains has an explicit purpose, that of a decoration thereby providing a pleasing aesthetic effect." In response to Applicant's argument about Scott's curtain having antiseptic or deodorizing properties, the Examiner noted that the claims did not preclude a fabric strip with such properties.

In the Reply Brief, the Applicant made the additional argument that since the primary reference Hinds already included a valance, the combination with Scott was "excessive, and unnecessary to factor in the use of a shower curtain valance to the disclosure of Hinds."

The Board found that both of the Examiner's reasons to combine ("aesthetics" and "combination of known prior art elements") lacked a rational underpinning. The Board agreed that "aesthetics" was enough reason to modify Hinds' shower curtain to include a valance with structure similar to Scott's ruffle. However, the Board found that "aesthetics" did not explain why a POSITA would further modify Hinds to include claim elements f (second rectangular strip) and g (sewn into a particular position). 

The Board also found the "combination of known elements" rationale was insufficient under these facts because this rationale requires that the element performs the same function in both references.

The Examiner points to no teaching of Scott indicating that the ruffle 3 is to be added for any aesthetic purpose. Instead, Scott discloses that the ruffle 3 protects the tape 5 from the flow of water from the shower and regulates the rate of deodorization or release of fragrance from the tape 5. Therefore, the function of the valance and the elongated second rectangular strip recited in claim 1 would have differed from the function of the ruffle in the shower curtain of Scott. The Examiner articulates no reason why one of ordinary skill in the art would have modified Hinds’ shower curtain to include the elongated second strip of limitation f of claim 1, positioned as recited in limitation g of claim 1, despite this difference in the functions of the recited and prior art elements.
(Emphasis added.)

The Board then reversed the obviousness rejection. 

My two cents: The KSR generic rationales for combining can be harder to deal with than a specific motivation found in the references. But this decision is a good reminder to verify that the rationale fits your facts. Take a look at the MPEP and see what the rationale really requires.

According to MPEP § 2143, the "combination of known elements" rationale used by the Examiner in Ex parte Peoples requires these specific findings of fact:

1. a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
2. a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately;
3. a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable;

The weak point identified by the Board was #2, each element performs the same function. It appears to me that #1 was not met either. The Examiner made a general statement that Scott taught "the valance" and then the specific finding that Scott's ruffle mapped to claim element f. But the Examiner didn't specifically make findings as to elements c, d, e, g, or C. And it's not clear to me that Scott teaches element g.