Wednesday, February 8, 2012

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.

15 comments:

  1. Karen,

    The link to the decision is incorrect.

    Classic garbage case law rejection. If the BPAI wanted to reduce the backlog, first thing to do is summarily reverse every rejection based on case law. The examiners have absolutely no understanding of how to apply it correctly.

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  2. >link to the decision is incorrect

    Thanks. I fixed it.

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  3. Note also the examiner's garbage rejection of the non-linear feature. "It's a design choice because applicant hasn't presented any evidence that it's critical."

    If you cannot thoroughly and totally destroy this type of garbage rejection, please go chase ambulances.

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  4. When Examiners rely on case law, they are relying entirely on the interpretation provided for them in the MPEP. The PTO's interpretation of case law is often way off because, in many cases, they extrapolate holdings from litigation for use in patent prosecution.

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  5. Whatever "training" the examiners are receiving regarding the use of case law in examination is clearly useless. I have yet to meet an examiner who understands that the "interpretations" provided by the MPEP are not per se rules of obviousness. There is no per se obviousness.

    The examiners also have no appreciation of the case law that deals with non-obviousness. I had an examiner allege in an interview that the differences between the claim and the primary reference were "an obvious rearrangement of parts." I told the examiner I know the case being referred to and explained why it wasn't applicable. I also noted that, in the application being examined, the invention effectively eliminated the element of the primary reference the examiner was relying on while retaining its function, which is an indicia of non-obviousness with its own body of case law.

    I told the examiner that I didn't want to get into a battle of case law cites. Of course, I didn't tell the examiner that such a battle would be pointless as the examiner had zero hope of winning it.

    Mr. Kappos needs to put out a memo clearly stating that any rejection relying on case law that does not include an analysis of the facts of the precedent and the application under examination and an explanation as to why the facts are sufficiently similar to permit reliance on the court's rationale to permit the examiner to rely on that rationale will be regarded as an error.

    There is a case law cheat sheet circulating around TC's 3600 and 3700. The directors of those TC's should be ordered by Mr. Kappos to call an all hands meeting of SPE's, SPRE's, useless QAS's, and examiners and explain that any rejections relying on the cases listed on that cheat sheet will be grounds for immediate termination.

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  6. Sounds like just another absurd 103 to me.

    "Of course, I didn't tell the examiner that such a battle would be pointless as the examiner had zero hope of winning it. "

    I know right? I've spoken to attorneys who are blithely unaware of any of the relevant caselaw, will tell you so to your face, but insist that the rejection just cannot be right. It's the same from both sides.

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  7. "Kappos needs to put out a memo clearly stating that any rejection relying on case law that does not include an analysis of the facts of the precedent and the application under examination and an explanation as to why the facts are sufficiently similar to permit reliance on the court's rationale to permit the examiner to rely on that rationale will be regarded as an error."

    I'm not really sure that is called for. Unless we can also put out a memo re responses from applicants holding any response from them that doesn't include such a detailed analysis every time caselaw is cited to be non-responsive.

    If we can make that little trade I'd take it.

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  8. "There is a case law cheat sheet circulating around TC's 3600 and 3700."

    I've seen it in other TC's as well, I'd guess it is all over.

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  9. "Unless we can also put out a memo re responses from applicants holding any response from them that doesn't include such a detailed analysis every time caselaw is cited to be non-responsive."

    You're such a tard.

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    Replies
    1. "You're such a tard."

      Said the tard.

      Delete
  10. When I was an examiner in the closing years of the 20th Century, there was a "cheat sheet" floating around that had been created nearly 15 years earlier. Between cheat sheets and the MPEP, it's no wonder that you still see case cites for cases decided by the old CCPA (no, I'm not referring to the Soviet Union but the Court of Customs and Patent Appeals; the CCCP was cyrillic lettering for the USSR). It's a bit like citing Graham v. John Deere while ignoring the existence of KSR.

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  11. Great article, Karen. It's so useful seeing how these things play out at the Board (where, it can be argued, it really matters for most Applicants).

    Thanks for the link as well. :)

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    1. It's a good thing for examiners to see blogs like yours and Karen's also. Examiners need better training than they presently get.

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  12. so the apparently useful features of gutter thawing are known and obvious (non-linear air flow passages, gutter section with a liquid passage and an air flow passage and a hot air supply) but adding more flow passages and arranging them on more gutter sections is patentably distinct? I agree its not *mere* duplication but come on

    well its their patent i guess

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    Replies
    1. Non-linear was not known. The examiner had zero evidence for that feature and tried the old, "Well, it's an obvious design choice because the applicant hasn't provided any evidence that it's critical" rejection. Complete bullsh!t.

      This is the typical garbage rejection that gets sent up to the BPAI by the useless, know-nothing, do-nothing SPE's and QAS's in TC 3600. They all need to be reassigned to the mail room.

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