Is it circular reasoning when an obviousness rejection says the reason for adding a feature is to get that feature?

Takeaway: Sometimes the Examiner asserts that the reason to add a feature from a secondary reference is to obtain that very same feature. Is this circular reasoning and thus an improper rationale for obviousness? Today's post highlights a few cases where the PTAB said this logic was insufficient to support a conclusion of obviousness.

Discussion: In many obviousness rejections, the Examiner's rationale for combining amounts to "add feature X from reference B to reference A in order to get feature X." Yet obtaining the added feature X is only a reason to combine if having X provides an undisputed advantage, right? Otherwise, it's If the mere presence of X doesn't provide such an advantage, then the Examiner still hasn't shown why a POSITA would combine A and B.

In today's post, I'll discuss a few cases where the Examiner used this sort of reasoning and the Board reversed. Now, I'm not saying that this argument is a winner. In many of the decisions that I review, I end up convinced that X does convey an undisputed advantage, and thus does serve as a proper reason to combine. But if you have a case where you think "add X to get X" doesn't adequately motivate a POSITA to combine the references, you may find the Board's reasoning in these three decisions to be helpful in framing your argument.

The claim in Ex parte Banna (PTAB 2014) involved a multi-stage receiver including a delay controller. The claim limitation at issue required the controller to "select the delay value for the delay block by calculating a processing delay associated with the generation of the one or more processing parameters." The Applicant appealed an obviousness rejection that used a single reference. The Examiner acknowledged that the single reference (Sendyk) did not teach calculating a processing delay, but asserted that it would have been obvious “to modify the invention of Sendyk, and to obtain the time difference between the two delay control signals to have the delay value.” (Emphasis added.) The Applicant argued that “the Examiner has failed to identify any valid reason to modify Sendyk.” (Emphasis in original.)

The Board agreed that the Examiner did not provide a reason with rational underpinning, and reversed the rejection. The Board cited In re Chaganti, 2014, WL 274514, *4 (Fed. Cir. 2014) (“It is not enough to say that . . . to do so would ‘have been obvious to one of ordinary skill.’ Such circular reasoning is not sufficient–more is needed to sustain an obviousness rejection.")

In Ex parte Foxenland (PTAB 2013), the claim at issue related to ordering a call list of party identifiers (i.e., phone numbers) based on call frequency, where two or more communication identifiers correspond to a single party identifier. More specifically, the claim required that "the call frequency information for the single party identifier includes the call activity related to each of the at least two of the plurality of communication identifiers." The Examiner relied on Kreitzer's arrangement of a call list in order of call frequency based on communication identifiers, and Levy's use of multiple phone numbers associated with a single party. As a reason for incorporating Levy into Kreitzer, the Examiner offered "for the purpose of managing a plurality of communication identifiers that correspond to a single party identifier by storing these data in the communication terminal."

The Board reversed the obviousness rejection. The Board found that the Examiner had concluded obviousness without giving a "specific reason why the ordinary artisan would have had any incentive to incorporate multiple different numbers associated with a single individual as taught by Levy into the hotlist of Kreitzer." (Emphasis added.) Thus, although the Examiner had shown that each claimed feature was known, he did not provide a sufficient reason for combining them. 

The reexamination appeal LG Electronics v Whirpool (PTAB 2013) involved ice dispensing in a bottom mount refrigerator, which purportedly "presented a unique challenge because the freezer compartment is located lower than desired for an ice dispensing location." The Board framed the obviousness issue as whether the Examiner provided a sufficient reason to "incorporate both an ice dispenser and a separate door in the same ice compartment" as required by the claim. 

The Examiner combined a primary reference showing a door providing access into a refrigerator ice making/storage compartment with a secondary reference showing a refrigerator ice dispenser. The rejection used the "predictable result" rationale, asserting that "such a combination would apply known features, such as an ice compartment door, to achieve a predictable result of providing a user access to the ice in the ice compartment." The Board reversed. The Board assumed that "such a combination would apply known features to achieve a predictable result" – but this is true only after the decision is made to combine these features. The rejection failed because the Examiner did not explain "why one would have chosen to combine both a prior art access door and a dispenser in a single refrigerator in the first place." (Emphasis in original.)