Board holds inherency does not require that all embodiments necessarily have claimed feature

Takeaway:  The Applicant appealed claims to an absorbent belted article (e.g., a diaper). The claims recited a belt attached to an absorbent structure by a joint, and also included functional limitations describing the release strength of the joint. The Examiner's anticipation rejection relied on the claimed release strength being inherent in the joint disclosed in the reference. The Applicant argued that inherency was improper here, because the reference taught that the joint could be formed by "any means known in the art", and not every known joint structure would necessarily meet the release strength limitation. The Board found that several types of joints specifically disclosed in the reference were identical to the types of joints in the Applicant's spec, so the Examiner's presumption of inherency was proper. Since the Applicant didn't rebut this presumption, the Board affirmed the inherency rejection. (Ex parte Almberg, PTAB 2012.)

Details:

Ex parte Almberg
Appeal 2010005008; Appl. No. 10/684,585; Tech. Center 3700
Decided:  March 23, 2012

The application on appeal was directed to a belted absorbent article. A representative claim read:

     A belted absorbent article comprising:
     an absorbent structure ... and
     a pair of opposed belt halves comprising nonwoven material attached to said absorbent structure at said rear end region of said rear panel,
     each of said belt halves being attached by a respective joint ...
     wherein each of said joints between each said belt half and said absorbent structure is such that when each said belt half is subjected to a tension force of 35 N acting along said longitudinal axis of the belt, and said longitudinal axis of the belt creates an angle (a) to said transverse axis of said absorbent structure, the following minimum average release times (t) of each said belt half from said absorbent structure are attained:
     when a = 10°, t >= 720 seconds; when a = 20°, t >= 330 seconds; when a = 25°, t >= 240 seconds; when a = 30°, t >= 180 seconds; and when a = 40°, t >= 75 seconds.

The Examiner rejected the claim as being anticipated by Ames. The Examiner found that Ames explicitly disclosed all the elements but the claimed release times. However, the Examiner found that Ames inherently disclosed the release properties, because the structure of the belt joint in Ames was the same as the belt joint structure disclosed in Applicant's specification.

In the Appeal Brief, the Applicant argued that Ames' broad teaching about the belt joint was not enough for inherency:

Ames does not disclose any specific structure for joining the belt flaps to the rear of the absorbent article.  The entire disclosure related thereto, as set forth at col. 17, lines 51-53, is that if the belt flaps 62 and 64 are separate elements joined to the diaper 20, they can be joined "by any means as known in the art." In order to rely on the theory of inherency, it must be shown that the recited conditions must be met in each and every instance.  MPEP, section 2112, IV.  Clearly, it must be recognized that all "means as known in the art" will not necessarily satisfy the requirements of the means for joining recited in claim 1. Accordingly, the claimed joint cannot be inherent based on Ames.
(Emphasis in original.)

In the Answer, the Examiner referred to Applicant's disclosure of "materials and structure suitable for forming the belt halves and attaching the belt" and then referred to portions of Ames that "teach similar materials and structures for the belt halves."  More specifically, the Examiner found that:

The belt halves of Ames have the same properties (elasticity, attached along the longitudinal axis, extending outwardly from a longitudinal edge) and is used in the same environment as appellant's outer cover (a belt in an absorbent product).

Because of this similarity in structure, the Examiner concluded that "Ames obviously includes belt halves capable of providing the claimed release times" because inherency case law holds that "when the structure recited in the reference is substantially identical to that of the claims of the instant invention, claimed properties or functions are presumed to be inherent."

In the Response to Arguments section, the Examiner elaborated on his inherency position as follows:

[T]he Examiner has provided technical reasoning which supports the position of inherency. The present application is primarily directed to the joints between the belt halves and the absorbent structure. The application claims when subjected to a certain force, the longitudinal axis of the belt creates an angle, and a certain release time is attained. Ames does in fact cite structure and materials similar to the claimed invention. ...
(Emphasis added, internal citation omitted.)

The Applicant filed a Reply Brief asserting that the Examiner's "technical reasoning" for inherency was insufficient:

The Examiner's allegation [that Ames discloses structures similar to the claimed invention], even if true, does not provide any factual or technical basis for holding that the materials and methods of Ames must necessarily result in the functional properties of the structure that are recited in the present claims.  The Examiner has provided no basis to refute the plain truth that similar materials may be assembled so as to provide a wide range of attributes.
(Emphasis added.)

The Applicant elaborated on this last point, explaining that Ames' failure to provide details about the belt joints undermined an inherency finding:

Ames did not disclose any teaching of a particular manner in which the belts are to be joined to the diaper.  Ames did not disclose any functional properties of the joint.  Consequently, there is no basis to conclude that the functional structural requirements of the present claims are inherent in the disclosure of Ames unless every means of attachment known in the art necessarily produces the required structural properties.  However, such cannot be the case. The conventional materials and methods encompassed by the Ames disclosure could produce very different results depending on the particulars of how the materials were joined.(Emphasis added.)

The Board was not persuaded by the Applicant's arguments, and instead found that the Examiner's reasoning as to inherency had shifted the burden the to Applicant to show that the belt joint in Ames would not necessarily last for the claimed release times.

The Board found that the Applicant's specification described the joint between the belt half and the absorbent structure as using "adhesive bond lines, though any attachment methods, such as thermal or ultrasonic bonding, may be employed."

The Board also found that the portion of Ames relied on by the Examiner disclosed that:

[belt flaps 62 and 64] can be joined [to the diaper 20] by any means as known in the art. Examples of suitable attachment means include adhesive bonding, heat bonding, pressure bonding, ultrasonic bonding, dynamic mechanical bonding or a combination of any of these means or any other means as are known in the art.

The Board noted that "there is no dispute that these two joining methods are the same as Ames' heat bonding and ultrasonic bonding", and framed the issue as follows:

Thus, the question is whether the evidence is sufficient to find that Ames' heat bonded joints or ultrasonic bonded joints would necessarily last, on average, for at least 12 minutes if a 7.8 pound force was applied to the joint at an angle of 10°, etc.

The Board decided that the Examiner had the better argument.

The opposite finding would mean that, on average, prior art diaper joints made by the same heat bonding or ultrasonic bonding method failed in less than 12 minutes, etc. The bald argument that prior art diaper joints generally failed in less than 12 minutes is not credible. Under these circumstances, the rejection's evidence is sufficient to shift the burden to Appellants to prove the contrary. See e.g. Best, 562 F.2d at 1255.

My two cents:  The issue here was a functional limitation (having to do with force needed to release a joint), and whether the joint structure disclosed in the reference inherently met that functional limitation. According to the Applicant, inherency is present only when "each and every instance" of the disclosed structure meets the functional limitation. The Applicant argued that this wasn't the case, since the reference stated that the joint could be formed by "any means known in the art," and not every known joint structure would necessarily meet the release strength limitation.

I was intrigued by the Applicant's line of reasoning, because I have never run across this "each and every instance" requirement for inherency. As far as I can tell, the Applicant was mistaken.

The Applicant did not cite to specific cases. The Applicant cited to an MPEP section on inherency (2112.IV), but I didn't see anything there about "each and every instance." And the Board didn't comment on this specific point, but applied plain vanilla inherency law. The joint structures mentioned in the reference – ones formed by adhesive bond lines, thermal bonding, or ultrasonic bonding – were the same ones that Applicant's spec described as providing the claimed release strength limitation. Because the structures were substantially identical, the release strength limitation was presumed to be inherent in the structures. The Applicant did not rebut this presumption, so the Board found the Examiner's anticipation-by-inherency argument to be persuasive. 

Losing obviousness arguments: no Graham factors, no TSM, no articulated reasoning

Summary: When fighting an obviousness rejection, some Applicants argue the "formalities" of the rejection instead of, or in addition to, the merits of the rejection. The argument most readily identifiable as aimed at formalities and avoiding the merits is the argument that the Examiner failed to comply with Graham v. Deere, which requires an obviousness analysis to include specific factual findings. Another common argument is that the Examiner failed to provide "articulated reasoning with some rational underpinning." If offered without further explanation that deals with the merits of the rejection, this conclusory argument can be viewed as merely arguing the formalities. Finally, another common argument against obviousness is that the references do not include a suggestion or motivation to combine. Once again, if offered without explanation, I consider this a formalities argument. The real problem with this last argument, however, is that's it's simply wrong: KSR makes it clear that the rationale for combining does not have to come from the references themselves.

The cases covered in today's post show that the PTAB isn't easily persuaded by any of these arguments. The Board usually finds that the Examiner, in laying out the rejection, implicitly made the underlying factual findings required by Graham. This strongly suggests that there is no requirement for the Examiner to specifically refer to them as Graham factors. The Board also usually finds that the Examiner did "articulate" a rationale for combining references and that the rationale does have a "rational underpinning." Finally, even if the Examiner relies on a specific statement in a reference as a rationale, if there is anything at all in the record that suggests an alternative rationale (substitution, predictable results, etc.) the Board will often affirm.

Details:  

Ex parte Foster (PTAB 2010) illustrates a typical "Graham factors" argument against obviousness. On appeal, the Applicant argued that "[t]he Office Action must make explicit an analysis of the factual inquiries set out in Graham" and that the rejection was in error because "the Office Action does not even mention the factual inquiries set forth in Graham." 

The Board was not persuaded, and explained why:

The Examiner found that either Li or Wang discloses all the limitations of claim 2 except a flat heat pipe, and that Quisenberry discloses a flat heat pipe. Ans. 5-6. As such, the Examiner made findings as to the scope and content of the prior art and differences between the prior art and the claimed invention under Graham. Though the Examiner did not make a specific finding regarding the level of skill in the art, Appellants have not argued that the proposed modification was beyond the level of skill in the art (Br. passim), and we consider the prior art to be reflective of the level of skill in the art. Against this background, the Examiner determined the obviousness of claim 2.4 Ans. 6. Hence, contrary to Appellants’ assertion, the Examiner analyzed claim 2 in light of the factual inquiries set forth in Graham.

In Ex parte Holloway (PTAB 2011), the Board tore apart the Applicant's Graham factors argument, by pointing to specific statements in the Examiner's Answer that corresponded to Graham factors. The obviousness rejection was fairly typical, consisting of an assertion that the primary reference disclosed a particular element, followed by other assertions about how teachings in the remaining references related to other claim elements. In explaining the rationale for combining, the Examiner made this statement:

Once it was known to provide such markings, the particular information one chooses to convey by using markings is seen to have been an obvious matter of choice. The purpose of markings or indicia is to convey information. It is not seen that patentability can be predicated on the type of information one chooses to convey through markings or indicia; especially when, as shown by the art taken as a whole, the information was known and thus conventional.
(Emphasis added.)

In the Reply Brief, the Applicant characterized the statement quoted above as one showing that the Examiner used his own subjective standard, rather than the objective analysis required by Graham.

The Board disagreed, and found that the Examiner performed a proper obviousness analysis.

     Indeed, the Examiner assessed the scope of the admitted and applied prior art, finding that Paravano and Liger [disclose] containers having markings which respectively represent the volume of alcoholic beverage ... dispensed as well as the alcohol content of that volume. Ans. 4-5. The Examiner further finds that each of Velho, Davis, Prieto,Manaka, Dor, Rhee, Pauli, and Christiaens [disclose] that it was known in the art to mark containers to convey information with respect to ... the character of the dispensed volume with respect to alcoholic beverages and other ingestible compositions. Ans. 5-6. ... It is apparent that the Examiner further factually determined the difference between ... representative claim 1, and the level of ordinary skill in the art as reflected in the admitted and applied prior art. Ans. 4-6.
     Thus, the Examiner applied the Graham factors in reaching the determination that it would have been obvious to one of ordinary skill in the art to mark an alcoholic beverage container to indicate the volume thereof which represents a “standard drink,” and thus, the number of drinks based on that “standard” which remain in the container as well as the number of such “standard” drinks dispensed to a consumer. Ans. 6-7; see also Ans. 7-8.

Ex parte Brown (PTAB 2009) is another case illustrating a losing Graham factors argument. Here's the Board summarizing the Applicant's argument:

Appellants also contend that … the Examiner fails to address "all of the Graham factors to establish the required background for an obviousness rejection" and also "fails to apply all four Graham factors to establish the necessary background elements for determining obviousness" (App.Br. 14); [and] “In the complete absence of any mention or consideration of the Graham factors, the Final Office Action cannot support an obviousness rejection." (App. Br. 15)

And here's the Board explaining how the rejection did indeed comply with Graham:

In the instant case, we find that the Examiner does use the Graham factors to ascertain the scope of Bottom such that Bottom does not explicitly disclose a BIOS program in each server (Ans. 12-13). We also find that the Examiner ascertains the scope of AAPA and the difference between AAPA and the claimed subject matter of the present invention, i.e., "BIOS is well known to persons of skill in the design and use of information handling systems of the general types here described" and a similar BIOS program is employed in the present invention (Ans. 13, FF7). We further find that the Examiner resolves the level of skill in the art such that it would have been obvious to one having ordinary skill in the art at the time the invention was made to combine the teaching of the BIOS in AAPA into the server of Bottom to detect and signal occurrences of events affecting the respective server since the BIOS was conventionally used to test hardware at startup, to start an operating system, and to support data transfer among hardware devices (Ans. 13).

The obviousness rejection in Ex parte Slovisky (PTAB 2011) relied on a single reference in view of Office Notice that "it was known in the art to angle injection passages that feed the gas path." The Examiner even provided an additional reference as evidence of angled injection passages. The Applicant argued that the Examiner's reasoning was conclusory and thus failed to comply with KSR or any of the obviousness rationales listed in the MPEP.

The Board said this argument missed the point:

In arguing that the Examiner's conclusion of obviousness is "conclusory," Appellants do not particularly set forth which factual findings they believe the Examiner erred in making or why. Appeal Br. 15-16. While Appellants argue that the Examiner has not made factual findings with respect to the claimed angles (see Issue lb), the Examiner's analysis is not premised on a finding that prior art discloses the claimed angles but rather a conclusion that the prior art disclosures render the claimed angles obvious. "[W]hile an analysis of obviousness always depends on evidence . . . it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference." Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). As such, the proper inquiry is whether the Examiner's conclusion of obviousness is reasonable and based on rational underpinning, not whether the Examiner's rejection fits within any of the enumerated rationales in the Manual of Patenting Examining Procedure (MPEP) as argued by Appellants (Appeal Br. 16-17). See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.") (cited with approval in KSR, 550 U.S. at 418) (rejecting rigid rules that limit the obviousness inquiry). Appellants' arguments with respect to the rationales not used by the Examiner (Appeal Br. 16-17) are not persuasive because they do not tend to show error in the Examiner's articulated rejection. 

Finally, Ex parte Rothschild (PTAB 2012) is a reminder from the Board that strict adherence to the Teaching, Suggestion, Motivation (TSM) test is not required under KSR:

Appellant argues that (1) there is “no teaching, suggestion, or motivation in either Walker or Steeg to combine the references” ... [T]he Examiner did not apply the “teaching, suggestion, or motivation” test; rather, the Examiner applied the Adams test of simple substitution of one known element for another to yield no more than a predictable result (Ans. 4); see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing U.S. v. Adams, 383 U.S. 39, 40 (1966) for this proposition).

Conclusion: While it can be challenging to fight an obviousness rejection that is sparse or hard to understand, Applicants are more successful when addressing the merits of the rejection and rebutting the Examiner's findings and/or rationale, rather than attacking the rejection itself in order to avoid the merits.

Many patent prosecutors are wary of putting any more on the record than in absolutely necessary to get allowed claims. So you might be tempted to argue formalities, without reaching the merits, if you feel that the Examiner didn't fully comply with the law.

If so, you're betting the farm that the Board say that the Examiner didn't follow the rules. If the Examiner literally didn't provide a rationale for combining, the Board may indeed reverse the rejection. (See my post BPAI reverses when Examiner fails to give any reason whatsoever to combine.)

But the cases in this post show that a typical obviousness rejection – assertions about references followed by a statement of rationale – is enough for the Board to find the Examiner complied with Graham v Deere. And even a sloppy ratonale can lead to an affirmance if left unrebutted by the Applicant.

A final note: Some of the cases discussed in this post are several years old. But they're consistent with more recent cases.