Friday, April 13, 2012

BPAI overrules the Federal Circuit's analogous art test

Takeaway: In Ex parte  Leimkuhler, the BPAI held that the Federal Circuit test for non-analogous art "was subsequently broadened by the Supreme Court in KSR". According to the BPAI panel in Leimkuhler, "a prior art reference is analogous under 35 U.S.C. §103(a) if it is reasonably pertinent to any problem with which one of ordinary skill in the art is concerned." In contrast, the Federal Circuit test (most recently enunciated in In re Klein) requires a reference used in an obviousness rejection to be either "in the field of applicant’s endeavor” or “reasonably pertinent to the particular problem with which the inventor was concerned.” (Ex parte  Leimkuhler, BPAI 2012.)


Details:

Ex parte  Leimkuhler
Appeal 2010-003914; Appl. 10/920,721; Tech. Center 1700
Decided:  February 28, 2012

The application related to methods of food packaging. A representative claim on appeal read:

1. A method of packaging and cooking a vegetable where the package protects the vegetable and serves as a cooking container comprising the steps of:
   selecting a vegetable from a group of different types of vegetables;
   preparing the selected vegetable;
   providing shrinkable plastic film;
   modifying gas permeability of the film according to the type of the selected vegetable to be packaged, wherein the step of modifying includes making a plurality of about 0.02 inch diameter holes in said film;
   attaching an opening system to said film;
   sealing the modified film around the selected vegetable;
   shrinking the film to tightly envelop the selected vegetable;
   marketing the enveloped vegetable;
   cooking the enveloped vegetable in a microwave oven; and
   operating the opening system to release the vegetable from the film.

The Examiner rejected all independent claims, as well as a number of dependent claims, as obvious using a combination of 7 references.

The Applicant made several non-obviousness arguments on appeal, including non-analogous art. The Applicant began the argument by stating the analogous art test from In re Oetiker, 977 F.2d 1443, 1446 (Fed. Cir. 1992) which defines an analogous art reference as one that is either "in the field of applicant’s endeavor” or “reasonably pertinent to the particular problem with which the inventor was concerned.”

Next, the Applicant stated the field of the invention as "facilitating the packaging and microwave cooking of a fresh vegetable where the package protects the vegetable, and serves as a cooking container." The Applicant then analyzed the field of each of the 7 references, arguing that none of the references was in the field of the invention.

The Applicant further identified the problem with which the inventor was concerned as "providing an opening system for a packaging holding a vegetable for microwave cooking where the packaging (used for storage, transport and cooking as well as being conducive to vegetable respiration while controlling moisture loss during storage, transport and cooking) can be opened while still very hot."  The Applicant then analyzed the problem solved by each of the 7 references, arguing that none of these problems related to the problem addressed by the inventor.

The Board held that the Federal Circuit test was no longer valid because it had been superseded by KSR. The Board explained that:


The[Federal Circuit test from In re Oetiker], however, was subsequently broadened by the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419-420 (2007) which stated that: "In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls…. The first error of the Court of Appeals in this case was… by holding that courts and patent examiners should look only to the problem the patentee was trying to solve." The Supreme Court explained that “[w]hen a work is available in one field of endeavor, design incentives and other market forces [(not the subjective intent of inventors provided in the Specification)] can prompt  variations of it, either in the same field or a different one.” KSR Int'l Co., 550 U.S. at 417. In other words, a prior art reference is analogous under 35 U.S.C. §103(a) if it is reasonably pertinent to any problem with which one of ordinary skill in the art is concerned. This broadened analogous art test suggested by KSR is consistent with the language of 35 U.S.C. § 103 which requires us to focus on one of ordinary skill in the art, rather than the subjective reason given by inventors in the Specification, in evaluating the content of the prior art to determine the propriety of obviousness. While any advantages or problem solving intended by inventors as described in the Specification may be considered as relevant secondary evidence, they are not controlling in terms of evaluating the contents of the prior art references for the purpose of determining appropriateness of their combinability. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
(Emphasis added.)

The Board also found that all 7 references were analogous art under the Federal Circuit test, qualifying under either prong. For the first prong, he Board found that the field of the Applicant's invention was "packaging and/or cooking vegetables," as was that of all the references. As to the second prong, the Applicant's invention was "directed to solving problems associated with packaging vegetables for storage, cooking vegetables, and/or removing items, including cooked items, from packages." This problem "would have logically commended themselves to the inventors’ attention, who are considering storage, cooking,
and removal of vegetables in a package that are or will be subjected to heating in a microwave oven."

The Board went on to reverse the obviousness rejection after finding that the Applicant's expert evidence overcame the Examiner's prima facie case.

My two cents: From a procedural point of view, it's weird that the Board overruled the Federal Circuit without explicitly acknowledging that it did so. The Board should have at least said something like "We find that the Federal Circuit's most recent statement of the non-analogous art doctrine to be in conflict with the Supreme Court's KSR decision." (I'm assuming that Supreme Court precedent is the reason the BPAI felt it could overrule the Federal Circuit.)

From a substantive point of view, I think the Board got it wrong. First of all, the Supreme Court's discussion of the "problem" in KSR was in the context of the central question of TSM: 
[T]he Federal Circuit has employed an approach referred to by the parties as the "teaching, suggestion, or motivation" test (TSM test), under which a patent claim is only proved obvious if "some motivation or suggestion to combine the prior art teachings" can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art. 

Second, the issue in KSR was not analogous art, but whether Teaching-Suggestion-Motivation is the only test for obviousness. The Supreme Court said the answer is No. The BPAI panel in Leimkulher was correct, of course, that  the Supreme Court went on to say that "[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls." But that applies to the overall determination of obviousness, not to the threshold question of whether a reference is analogous.

The universe of prior art allowed under the Federal Circuit's analogous art doctrine is broad enough. Under the doctrine used by the BPAI in Leimkuhler, the universe of prior art is almost infinite.

16 comments:

  1. Karen, you are so right.

    The APJ here really jumped the shark. As far as I know, nobody ever doubted that the references in KSR were analogous. Thus, KSR dealt with the question of combining analogous art.

    As you note, *before* you decide whether to combine analogous art (as in KSR), you must decide if a reference is actually analogous. KSR has nothing to say about that threshold question, because nobody ever suggested the art wasn't analogous (unless I'm misremembering).

    What's even more ironic is that the Supreme Court itself basically created the analogous arts test (or its beginnings) in Potts v. Creager, 155 US 597 (1895)!

    As you note, it is scandalous for the APJ here to try to overrule the Fed. Cir. in silence. The CAFC was very clear in In re Klein that the analogous arts test is alive and well.

    On the other hand, Klein never mentioned KSR once. And the APJ here doesn't mention Klein once. These tribunals are (intentionally?) avoiding this conflict that is waiting to explode.

    Fortunately, Klein remains CAFC precedent binding on the BPAI, and this BPAI opinion, like almost all BPAI opinions, is not precedential or even informative (unless you are the poor inventor).

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  2. I disagree. I think the Board got this one right. But it is because I don't think the inventor gets to set the field of analogous art in his specification. It should be set as the purview of POSITA. Just step back and look at the issues without examining all the conflicting case law. Would someone looking to package veggies for microwave heating look to other patents on vegetables? Of course. Anything to deal with packaging vegetables is analogous. This doesn't bring in everything in the universe; but anything dealing with vegetable packaging should be included in the analogous art.

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    1. >I think the Board got this one right

      How "right" can it be for a panel of judges to violate precedent? I suppose you mean right as in "just" or "as it should be".

      Sounds like you think the Federal Circuit test, which talks about the *inventor's* problem is wrong from a policy or fairness point of view.

      Fair enough. I don't have a strong opinion on this point.

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    2. "It should be set as the purview of POSITA."

      Even if this were so, this would require the level of ordinary skill in the art to be explicitly determined by the Examiner. In the appeal, the Applicant argued that the Examiner had failed to determine the level of ordinary skill and set out extensive arguments, including the need for the Examiner to demonstrate that the prior art reflected an appropriate level of skill. The BPAI essentially ignored those arguments while citing the very case law requiring the prior art to reflect an appropriate level of skill.

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    3. "I think the Board got this one right."

      Did you read the entire appeal brief or even just the section dealing with non-analogousness?

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    4. I forgot to add the following which comes directly from the MPEP and uses (or is it abuses) a quote from KSR:
      2141.01(a) Analogous and Nonanalogous Art [R-6]

      I. TO RELY ON A REFERENCE UNDER 35 U.S.C. 103, IT MUST BE ANALOGOUS PRIOR ART
      The examiner must determine what is "analogous prior art" for the purpose of analyzing the obviousness of the subject matter at issue. **>"Under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent [or application at issue] can provide a reason for combining the elements in the manner claimed. " KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1397 (2007). Thus a reference in a field different from that of applicant's endeavor may be reasonably pertinent if it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his or her invention as a whole.<

      I think someone at the PTO has badly bungled how to interpret KSR.

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    5. "But it is because I don't think the inventor gets to set the field of analogous art in his specification."

      The inquiries regarding field of invention are factual inquiries. I doubt very much that the Examiner even made any findings of fact to support the BPAI's overly-broad characterization of the field of the endeavor.

      "Would someone looking to package veggies for microwave heating look to other patents on vegetables? Of course. Anything to deal with packaging vegetables is analogous."
      The law requires "common sense" to be applied. Why would someone looking to package vegetables for a microwave look to packing vegetables for say, freezing or shipment on a boat or shipment to a processing plant. All of these have different requirements.

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    6. "Why would someone looking to package vegetables for a microwave look to packing vegetables for say, freezing or shipment on a boat or shipment to a processing plant. All of these have different requirements."

      Because he isn't a narrowminded tard? Or, as the USSC puts it, an "automaton".

      It's packing veggies ffs. It'll pay dividends to know what is going on in the veggie packing arts.

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    7. If you read the Appeal Brief, you would notice right away that the references cited by the Examiner were not limited to packaging of vegetables. Some references had nothing to do with vegetable packaging, transporting or cooking. One reference was directed to meat in package. Another reference dealt with cheese. The issue was not vegetable packaging so much as it was cherry-picking of non-analogous references. Under Klein, the BPAI could not have justified several of the references chosen by the Examiner as being analogous.

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  3. "Fortunately, Klein remains CAFC precedent binding on the BPAI, and this BPAI opinion, like almost all BPAI opinions, is not precedential or even informative (unless you are the poor inventor)."

    This APJ must have forgotten (or never been taught) that the BPAI cannot ignore Federal Circuit precedent. The BPAI is not an Article III Court. It is an administrative tribunal.

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  4. "But that applies to the overall determination of obviousness, not to the threshold question of whether a reference is analogous."

    A very lulzattorneytardworthy position, I'm sure most of your brethern at patent church agree with you. Of course, if the USSC did bother to dip their toe into this end of the pool they would of course hold immediately with what the BPAI and every other sentient being on the planet knows is "analogous art".

    "This APJ must have forgotten (or never been taught) that the BPAI cannot ignore Federal Circuit precedent."

    Neither can they ignore USSC precedent. The only body who routinely ignores precedent from their reviewer court is the CAFC. A rogue court if there ever has been one. Even if the board goes too far here, this fight should have been fought a long time ago, and the long road to overturning the rogue court of the Federal Circuit must begin somewhere. I see no reason why that somewhere should not be the PTO.

    The non-analogousness test is plainly not in accordance with KSR's admonition of rigid inflexible approaches. The question is obviousness, there is no need to bog ones analysis down in whether or not a reference is "analogous" as a matter of whether that reference can even be considered. The amount of analogousness should simply be folded into the overall obviousness analysis, not a bar on using individual references.

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    1. "Neither can they ignore USSC precedent."
      6, when you graduate law school, you'll learn the difference between a holding and dicta. Moreover, you'll realize that the issue of the law regarding "analogous prior art" wasn't even briefed or directly addressed by SCOTUS. As such, whatever some APJ infers from KSR about analogous prior art has little credence.

      "The non-analogousness test is plainly not in accordance with KSR's admonition of rigid inflexible approaches."
      Wrong, there is flexibility. Regardless, any test by definition, has some rigidity. Otherwise, what you are left with is "make it up as you go along." Of course, this is what you want.

      "A rogue court if there ever has been one."
      QQ QQ QQ

      "there is no need to bog ones analysis down in whether or not a reference is "analogous" as a matter of whether that reference can even be considered"
      QQ QQ QQ. Get over it. The queston of obviousness involves an attempt to replicate what one having ordinary skill in the art would do at the time of the invention. Part of this recognizes that those of ordinary skill in the art don't look at the bread toaster art when trying to solve an issue with depositing TiN onto some substrate. KSR also talked about employing "common sense" -- something severely lacking at the USPTO. Common sense says that those of ORDINARY skill in the art look at field in which they are involved -- not far flung fields with little relevance to the field of the invention

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    2. Did I not just say "Even if the board goes too far here, this fight should have been fought a long time ago, and the long road to overturning the rogue court of the Federal Circuit must begin somewhere."? Because I think I just said that.

      I'm quite aware of your old system of dicta etc thx. Your centuries old nonsensical system of lawling needs a banishin' on. The federal agencies are entrusted with acting in the public good, they should be able to raise issues like this whether they act through their "administrative tribunal" or whether they act through any other means at their disposal. They are not, as you might say, an article 3 court that should simply differ to its reviewer court.

      Power plays! Woot!

      "Wrong, there is flexibility."

      HAHAHAHAHAHAHHAHAHAHAHAHAHAHAHHAAHHAHAHAHAHAHAHAHHAHAHAHAHAHAHAHAHHAAHHAHAHAHAAHAHAHAHAHHHAHAHAHAHAHHAHAHAHAHAHA

      Tell it to Newman.

      "Of course, this is what you want."

      I only "want" it because of the way our laws are drafted in this arena.

      "Part of this recognizes that those of ordinary skill in the art don't look at the bread toaster art when trying to solve an issue with depositing TiN onto some substrate."

      I do. Toastier bread means more TiN on a substrate because the operator can operate the machine that squirts TiN longer without collapsing. I see that problem in applications all the time. Operators are always collapsing due to their bread not being toasty enough :p

      "Common sense says that those of ORDINARY skill in the art look at field in which they are involved -- not far flung fields with little relevance to the field of the invention"

      I tend to agree on the whole, but if something in a "far flung" field is directly applicable to a problem that the "field" or a reference in a "field" is having, then there is no reason to disclude that prior art even from being considered. Likewise when it is simply a little attachment onto another "unrelated field's" product or apparatus.

      Let us talk for serious for a moment, joking aside, you mention squirting TiN, but let us instead jump to the machine that squirts TiN. Let us say that it needs to heat the TiN before it squirts it onto a substrate. Let us also say that in the toast heating art new toasters just came out that use revolutionary heating technology which saves energy per amount of heating accomplished. Let's just say that it is a new type of heater element made of Unobtainium. Is that art relating to toasters with new Unobtainium heater elements now not applicable to the obviousness analysis when an inventor comes along, puts in his spec that he used the new heating technology in his TiN squirting machines because in his view, it helps to more evenly melt the TiN pre-squirt? Note he claims his whole TiN squirting machine complete with the Unobtainium heater elements.

      The toaster reference isn't in the TiN squirting machine's art. So that part of the analysis fails. The reference doesn't mention more evenly heating TiN so that part of the analysis fails. On the other hand, using this new heating technology does necessarily use less electricity and would be recognized by one of skill in the art to at least give the same heat as the old heating tech so it would be an improvement to the TiN machines in the prior art.

      So, is that reference not analogous, or does the "flexibility" you swear is currently built into the analysis allow for using this reference?

      Do you think Newman agrees with your answer?

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  5. "The amount of analogousness should simply be folded into the overall obviousness analysis, not a bar on using individual references."

    The amount of analogousness? That's up there with "slightly pregnant" or "somewhat dead." Either a reference is analogousness or it is not.

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  6. "As far as I know, nobody ever doubted that the references in KSR were analogous. "

    The USSC noted that they thought the CAFC were doubting that the last reference, the Smith ref, was even directed to adjustable pedals (rather than normal pedals) and/or would be pertinent to the patentee's problem solving.

    "Smith, in turn, did not relate to adjustable pedals and did not “necessarily go to the issue of motivation to attach the electronic control on the support bracket of the pedal assembly.” Ibid. When the patents were interpreted in this way, the Court of Appeals held, they would not have led a person of ordinary skill to put a sensor on the sort of pedal described in Asano."

    Although if I read the CAFC's opinion myself it looks more like they were just concerning themselves with the motivation question. However, a resolution of that part of what they term to be motivation to combine, the part about whether the reference solves a problem with which the patentee was concerned, answers the question of analogousness as well.

    Took me awhile to find this:

    http://scholar.google.com/scholar_case?case=16466951411498348362&q=Teleflex+v+KSR&hl=en&as_sdt=4,131&as_ylo=2004&as_yhi=2006

    That's the CAFC opinion in KSR.

    They do say, indirectly, that the Smith reference was not even directed to adjustable pedals and thus could not be addressing a problem about wire chafing in adjustable pedals (a problem which should not exist in non-adjustable pedals).

    "What is more, the Smith patent does not relate to adjustable pedal assemblies; therefore, it does not address the problem of wire chafing in an adjustable pedal assembly."

    So, in a way, the CAFC brings up analogousness indirectly but doesn't dig down deep into it and the USSC does address it somewhat. Although, still, the whole thing gets balled up and then we get away from just the holding about the TSM.

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  7. I wonder if the BPAI reversed so that this nonsense wouldn't get appealed.

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