BPAI reverses obviousness based on "mere duplication" rationale, finding that "these modifications go far beyond mere duplication"

Takeaway: The Examiner rejected a claim to a gutter system as obvious, alleging that the difference between the combined references and the claims was nothing more than a duplication of parts. As support for this rationale, the Examiner cited to In re Harza. The Board reversed, saying that In re Harza is limited to a mere duplication of parts, and that the modifications in this case went far beyond simply duplicating parts. (Ex parte Rippolone, BPAI 2011.)

Details:
Ex parte Rippolone
Appeal 2009015057; Appl. No. 10/787,429; Tech. Center 3600

The application on appeal involved gutters. Claim 7 read:

7. A gutter thawing system section comprising:
     a first molded gutter section comprising a liquid passage and a first multiple of linear air flow passage adjacent thereto;
     a second molded gutter section comprising a second multiple of non-linear air flow passages which connect at least two of said first multiple of linear air flow passages; and
     a third molded gutter section comprising an input connector and a return connector, said input connector in communication with at least one of said first multiple of linear air flow passages, and a said return connector in communication with at least one of said first multiple of linear air flow passages.

In a first Office Action, the Examiner rejected as obvious over Bortugno in view of Bernardi. The Examiner relied on Bernardi for non-linear air flow passages, and Bortugno for a gutter thawing system having a gutter section with a liquid passage and an air flow passage and a hot air supply. The Examiner acknowledged that Bortugno did not disclose multiple air flow passages or multiple gutter sections. However, the Examiner alleged that it would be have obvious to duplicate the parts in the Bortugno, relying on the "mere duplication of parts" rationale from In re Harza, 274 F.2d 669 (CCPA 1960).

In the first Response, Applicant made several arguments, including one that the "mere duplication of parts" rationale was not sufficient as a reason why a POSITA would modify the cited reference. 

The Examiner maintained the obviousness rejection on Final and defended the "mere duplication" rationale as follows:

However, citing In re Harza (see MPEP §2144. 04 (VI) (B) the mere duplication of parts has no patentable significance unless a new and unexpected result is produced. It is the examiner's position that no new and unexpected result is produced, therefore, the modification of duplicating parts is not a patentable feature for the invention as claimed. As a result, requiring a rationale for modifying a reference is moot because the modification is, under Harza, not a patentable feature.

The Applicant filed an After Final Response repeating the argument that mere duplication was insufficient.

The Advisory Action did not add any further explanation about the mere duplication rationale.

The Applicant appealed, making several arguments for claim 7. The Applicant attacked the "mere duplication" rationale by arguing that the reasoning from In re Harza was inapplicable, since the modifications to Bortugno were more than mere duplication. Specifically, the Applicant argued that the three gutter sections recited in claims 7 were different and not duplicates.

In the Answer, the Examiner defended the use of the "mere duplication" rationale as follows:

The examiner maintains that the rejection [citing duplication of parts] was proper. While noting that the gutter sections in claim 7 vary in structure, the first limitation addressed was that there are a multiple of sections. Bortugno did not specifically provide this limitation, so the examiner stated to have this limitation would be obvious because duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669 (CCPA 1960). The examiner further addressed the limitations relating to the varying gutter sections in the prior Office Action.

The Applicant filed a Reply Brief that addressed several points, but did not further address "mere duplication."

The Board found that In re Harza's "mere duplication" rationale was inapplicable and reversed the rejection. In explaining its reasoning, Board elaborated on the Applicant's basic argument that the claimed sections were more than duplicates:

The Examiner does not merely duplicate Bortugno’s gutter section to make multiples of that gutter section. The Examiner changes the structure of duplicated gutter sections. Bortugno’s original section lacks a non-linear air flow passage, yet the Examiner modifies a second gutter section to include a non-linear air flow passage. (See Ans. 7-8). Then the Examiner must further modify the duplicated second section to connect a first air flow passage in Bortugno’s original section with the duplicated section’s non linear air flow passage. The Examiner further modifies another duplicated section, a third section, in a different manner. The Examiner modifies the third section via Bernardi’s teaching to include a return connector. (See Ans. 8). This modification changes Bortugno’s system from a system without a return to hot-air type furnace 12 to a system with a return to the hot-air type furnace 12. The Examiner does not account for the modification the return to the hot-air type furnace 12 has on Bortugno’s exhaust ports 39. (See Reply Br. 2-3). These modifications are far beyond the holding in Harza, which is limited to a mere duplication of parts.
(Emphasis added.)

My two cents: According to the above-emphasized statement from the Board regarding Harza, you ought to be able to beat the mere duplication rationale any time the combination goes beyond mere duplication. But you're still vulnerable to an overall conclusion of obviousness. So I say don't stop at arguing that mere duplication/Harza doesn't apply. Instead, take a cue from the Board's reasoning, and explain in as much detail as possible what the differences are – i.e., what modifications are needed to go from the combined features in the references to the claimed invention. Seems to me that one or two major differences or even a bunch of tiny ones are indicia of non-obviousness.

Also see this post at Ryan Alley's blog for some suggestions in dealing with the mere duplication rationale. Ryan discusses the rationale in the context of the recent Celsis In Vitro v. CellzDirect decision.