Sunday, January 11, 2015

PTAB reverses obviousness when Examiner's rationale amounts to results of combination rather than reason for making it


Takeaway: The Examiner rejected as obvious a claim to an electrode cooling device. As a reason to modify the primary reference to add a frame from which the electrodes were suspended, the Examiner proffered: "for the purpose of suspending the holder". When the Applicant challenged this rationale in the Appeal Brief, the Examiner elaborated by adding this statement:  "Foyn reference and Hardin reference are related to the same technical field; therefore, one skill in the art would combine these references." The Board reversed, finding the Examiner's rationale was conclusory. "At best, [the rejection] describes the results of the proposed combination, as opposed to articulating a reason for making it. [T]he fact that references relate to the same technical field does not, without more, demonstrate the obviousness of their combination." (Ex parte Borgwardt, PTAB 2014.)

Details:

Ex parte Borgwardt
Appeal 2012-009099; Appl. No. 11/990,325; Tech. Center 3700
Decided:  October 14, 2014

The technology on appeal related to a metallurgical furnace. An independent claim on appeal recited:
     14. A cooling device for electrodes of a metallurgical furnace, comprising
     a suspension frame; and
     a plurality of individual segments arranged adjacent to each other
for surrounding the electrodes and suspended from the suspension frame,
     wherein
     at least one of the plurality of individual segments is formed with at least one hinge provided at an upper edge thereof
     for pivotally suspending the at least one of the plurality of individual segments from the suspension frame.
The Applicant added claim 14 as a new independent claim in response after an anticipation rejection using Foyn of originally filed claims 1-13. When the Examiner rejected claim 14 as anticipated by Kongsgaarden and went Final, the Applicant appealed. In response to the Appeal Brief, the Examiner reopened prosecution with a Non-Final Office Action.

In that Non-Final Office Action, the Examiner rejected independent claim 14 as obvious over Foyn (previously cited) and Hardin (newly cited). The rejection also used Kongsgaarden (previously cited) as an alternative secondary reference. The Examiner relied on Foyn for the segments and hinge, and on Hardin / Kongsgaarden for segments suspended from a suspension frame. The Examiner explained the rationale for combining as follows:
It would have been obvious ... to utilize in Foyn, a suspension frame and the segments suspended from the suspension frame, as taught by Hardin or Kongsgaarden, for the purpose of suspending the holder.
The Applicant appealed and traversed several assertions about the teachings of Hardin. The Applicant also attacked the Examiner's rationale as being deficient, as follows:

There is no suggestion in either of Foyn or Hardin for combining their teachings. Nor does the Examiner present any evidence that the generally available knowledge makes the combination obvious. Further, the Examiner failed to state what advantages are achieved by combining Foyn and Hardin. 
After quoting from pre- and post-KSR Federal Circuit cases on obviousness, the Applicant concluded with:

The Examiner failed to cite any evidence that would support the finding that the combination of Foyn and Hardin would make the present invention, as defined by claim 14, obvious.
In a Response to Arguments section of the Answer, the Examiner elaborated on how Hardin disclosed the suspension frame with these quotes from Hardin:
[S]lipping clamp is provided with suspension means, including a plurality of outwardly projecting clevis bracket ... adapted to receive horizontal pivots. The lower ends of tension members are secured to the pivots ... The pivots and the tension members provide flexibility, so that the electrode can deviate appreciably from its normal vertical position, without producing excessive stresses in the electrode and the suspension device 10.
After repeating the original rationale ("[obvious to combine] for the purpose of suspending the holder"), the Examiner elaborated by adding this statement:  "Foyn reference and Hardin reference are related to the same technical field; therefore, one skill in the art would combine these references."

The Applicant filed a Reply Brief that cited to two pre-KSR cases for the proposition that obviousness required a suggestion in the prior art for modifying a reference. The Applicant then argued:
It is respectfully submitted that the Examiner failed to identify support for his conclusion that it would have been obvious to combine Foyn and Hardin or Foyn and Kongsgaarden. It is respectfully submitted that the mere fact that Foyn Hardin (and Kongsgaarden) are related to the same technical field is not a sufficient motivation. Further, the Examiner failed to indicate what advantages are achieved by such combination.
Finally, the Applicant argued that "modifying Foyn in view of Hardin or Kongsgaarden would require a substantial redesign of the Foyn structure" which defeats a prima facie case of obviousness under In re Ratti, 270 F.2d 810 (CCPA 1959). 

The Board reversed the obviousness rejection. The Board started with a discussion of relevant case law:
[I]it is not enough to simply show that the references disclose each element of a claim; in addition, it is important to identify a reason that would have prompted a person of ordinary skill in the art to combine the elements in the manner set forth in the claim. See, e.g., Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F. 3d 1296, 1303 (Fed. Cir. 2010) (citing KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (“a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art”)); see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

The Board then found that the Examiner's rationale for combining ("for the purpose of suspending the holder") was "conclusory." The Board elaborated as follows:
At best, it [the rejection] describes the results of the proposed combination, as opposed to articulating a reason for making it. Reply Br. 5. As Appellants correctly point out, the fact that references relate to the same technical field (Ans. 9) does not, without more, demonstrate the obviousness of their combination. The relevant technical field relates to the scope and content prong of the Graham analysis. Graham v. John Deere Co. 383 U.S. 1, 17–18 (1966). Concluding references are within the same technical field does not conclude that analysis. Rather, it forms part of the background, upon which the obviousness or nonobviousness of the subject matter must be determined. Id. As the Examiner’s rejections fail to articulate reasoning with rational underpinnings supporting the Examiner’s determination of obviousness, the Examiner’s rejections cannot be sustained. See In re Kahn, supra.
My two cents: The Examiner made it easy for the Board to reverse: a rationale that was clearly expressed as the resulting combination itself rather than a reason to make the combination in the first place. The Examiner just dug the hole deeper with his statement in the Answer "references are in same field, therefore obvious to combine."

Perhaps the Examiner had what he needed in record to make a compelling rejection? The quote from the secondary reference appeared to discuss a benefit of adding suspension ("electrode can deviate appreciably from its normal vertical position, without producing excessive stresses").

Maybe so, but the Examiner didn't clearly articulate this line of reasoning. So kudos to the Applicant for challenging the Examiner's failure to make a prima facie case. I think a lot of Applicants feel Rationale-to-Combine is always a losing argument, but it would be a real shame to leave the argument on the table under these facts.

I view Ex parte Borgwardt as another example of the circular reasoning I blogged about in 2014:
Is it circular reasoning when an obviousness rejection says the reason for adding a feature is to get that feature?
Nice to see the Board once again recognizing this as deficient reasoning. Though as I mentioned in that earlier post, I have seen plenty of cases with a sloppy Examiner rationale yet the Board affirms.

30 comments:

  1. Can we have the application Number, to study in more detail?
    Thank you!

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  2. Yes, this is an excellent decision that deserves to be widely quoted in OA responses. Please provide enough information to enable us to cite this decision.

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  3. see file wrapper of USSN 11/990,325

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  4. With respect to the author, this only aspect of this case that seems interesting to me is that two supervisors thought this rejection was in condition to proceed to the Board. KSR taught us that the examiner needs to some articulated reasoning with some rational underpinning for combining the references. Here, that was just plainly absent.

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  5. "... this only aspect of this case that seems interesting to me is that two supervisors thought this rejection was in condition to proceed to the Board."

    If every sh!tty rejection that two SPE's or QAS's or other brain dead do-nothing know-nothings GS-15's thought was in condition to proceed to the Board was interesting, about 95+% of cases would be interesting.

    However, a lot of the rejections to the tune of "Well, the prior art doesn't show it, but it's obvious. See In re Boilerplatecaselaw from the MPEP" are nothing more than the examiners' prerogative of "I'm not allowing that. Let the Board allow it."

    They truly are doing record breaking outstanding quality work over there.

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  6. Ah, well, we all have different areas of interest. I admit my definition of interesting is very broad. Certainly nothing controversial about this case. And no doubt I'm a bit Applicant-biased, which means I probably am more likely to point out an Applicant win, even if not an exciting one.

    My sense is that many practitioners think Rationale-to-Combine is *always* a losing argument. I suppose part of my reason for blogging about Borgwardt is to show that some RTC arguments are winners, and it would be silly to leave the argument on the table.

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  7. "My sense is that many practitioners think Rationale-to-Combine is *always* a losing argument."

    Fair point - I can see how this supports the idea that it is sometimes a good argument, maybe even the best argument. Looking over the brief, this seems to me like a case that would have benefited from a pre-appeal conference. A very short, focused argument in a pre-appeal brief about lack of a rationale might have avoided the need to proceed to the Board.

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    1. A very short, focused argument in a pre-appeal brief about lack of a rationale might have avoided the need to proceed to the Board.

      For a PABC, that likely isn't going to cut it. To win at a PABC, you need clear and unmistakable error (e.g., claim recites A + B and Examiner asserts reference teaches A).

      BTW -- if the Appeal Brief was forwarded to the Board, then no better results would have been obtained with a PABC.

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  8. >would have benefited from a pre-appeal conference.

    Hmm ... I'm on the fence here. You're right, it's a very short focused argument, which I think is key for a PABC. Plus, you couldn't get an error more *clear* than this -- and after all, "clear error" is technically the requirement for a PABC.

    OTOH, I don't think purely legal arguments get anywhere with the Examiner corps, even a conference of them. For a purely legal argument, I go straight to the Board.

    I suppose these two cancel out in my mind, so I don't have an opinion one way or the other as to PABC or straight to Brief.

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  9. "I don't think purely legal arguments get anywhere with the Examiner corps"

    There's a bit of truth to that. Most examiners and supervisors don't have law degrees, so when it comes to purely legal arguments, sometimes they pass the case up to the Board because they feel unqualified to make the decision. But my experience is not as cut-and-dried as yours - I think most examiners and supervisors understand the need for an articulated rationale to combine references.

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  10. >most examiners and supervisors understand the need for an
    >articulated rationale to combine references.

    Ah, but how much "articulation" is necessary, and how "rational" does it need to be? That's the area of disagreement.

    In your experience, do Examiners view the rationale used in Borgwardt -- results of combination rather than reason for making it -- as INsufficient? Because I see this rationale a lot.

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  11. I don't think it's a black-and-white issue because there are times when the result of the combination really is itself a valid reason for the combination.

    As an example, say a primary reference describes a composition for fabrics (a polymer composition, for instance) that differs from the claims only by the lack of a certain additive, for instance, a flame retardant. A secondary reference describing flame retardants makes a pretty natural combination - one would want add a flame retardant to make the composition flame retardant. There's really not much else to say in a case like that.

    On the other hand, there are cases like the one here where it is not self-evident from the prior art why a suspension frame would be desirable to POSITA. In a case like that, the examiner needs to do more than point out that the components were individually known.

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    1. >I don't think it's a black-and-white issue

      Ah, it never is ... one of the things that makes patent law interesting.

      >sometimes the result of the combination really is itself a valid reason
      >for the combination.

      Agree. As you say, flame-retardant is (generally) a benefit, but can also be viewed as the result of adding flame retardant additive to a fabric. I would say such cases are best understood as benefit-as-rationale rather than result-as-rationale.

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  12. "Though as I mentioned in that earlier post, I have seen plenty of cases with a sloppy Examiner rationale yet the Board affirms."

    Yep. You assume the risk that a panel might actually read the references (and/or the entire Answer) and not base a decision on a couple of un-artful sentences. As you noted, as support for the prima facie case the examiner quoted the advantages of suspension that were expressly stated in the secondary reference. The panel seemed to be taken in by the allegation in the reply brief that "the Examiner failed to indicate what advantages are achieved by such combination." That allegation was wrong, but successful.

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    1. I can haz sock puppets tooJanuary 15, 2015 at 10:57 AM

      "That allegation was wrong, but successful."

      The pathetic whine of the loser examiner: "What does the Board know?"

      Lulz

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  13. >You assume the risk that a panel might actually *read* the references
    >(and/or the entire Answer) rather than basing a decision on a couple of un-artful sentences

    Sure, sometimes the Board does take a close look at the record, and that's not always favorable to the Applicant.

    When I recommend an appeal, I try to take into account not merely the strength of the Examiner's explicitly stated rejection, but also any information that can be gleaned from reading in between lines. Plus the totality of the references as I understand them.



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  14. "When I recommend an appeal, I try to take into account not merely the strength of the Examiner's explicitly stated rejection ... Plus the totality of the references as I understand them."

    That's obviously the right approach. If the reversal is on the ground that the examiner merely did not articulate their position well, a reversal on such a technicality will not necessarily leave the applicant with a valid patent. It's best to look past prosecution at the PTO and ask how enforceable the claims really are - just because the prosecuting attorney's argument was better than the examiner's argument does not mean that the applicant's patent will survive litigation.

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    1. >best to look past prosecution at the PTO and ask how
      >enforceable the claims really are

      Disagree. That is, not all clients have "patent that survives a litigation challenge" as a primary goal. Similarly, not all clients have "broad claims" as primary goal. For a sophisticated client, I inform the client of strengths, weaknesses, risks, etc. of various options, and they can decide which best fits their strategy.

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    2. What is the goal of having a patent without having any intention of it surviving a litigation challenge? Wouldn't that just be gambling - accruing patents in the off chance that they're worth something to someone?

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    3. "What is the goal of having a patent without having any intention of it surviving a litigation challenge?"

      The very fact of having a patent. The very fact that patent litigation is very expensive and there is a presumption of validity. The very fact that patents are defensive as well as offensive. And there's also the fact that some companies just want to be able to point to patents in their portfolios, without any intention of ever bringing an infringement action.

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  15. just because the prosecuting attorney's argument was better than the examiner's argument does not mean that the applicant's patent will survive litigation.
    You can only cross one bridge at a time, and you cannot address art that wasn't cited. As a patent prosecutor, you can only address the prior art, as you know it.

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    1. "You can only cross one bridge at a time, and you cannot address art that wasn't cited. As a patent prosecutor, you can only address the prior art, as you know it."

      That's true, but does not apply to the case under discussion. The prior art was not only cited but its relevant teaching was quoted verbatim.

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    2. "You can only cross one bridge at a time..."

      Obviously you can't resolve litigation before it even becomes an issue, but (IMO) for the prosecuting attorney to be reasonably diligent they must acknowledge that there might be an obviousness position lurking underneath the examiner's poorly articulated position, and that this position might come back to them someday in court. Of course, the attorney needn't and can't do the examiner's job for them, but then (again, in my opinion) they also ought to strive for valid patents.

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    3. they must acknowledge that there might be an obviousness position lurking underneath the examiner's poorly articulated position, and that this position might come back to them someday in court
      As someone else already noted, the issued patent already has a presumption of validity. Moreover, patentee will have a strong argument that since the USPTO already considered the references (and the proposed combination) and the rejection was set aside by the Board, then the Court should overturn the USPTO's ultimate decision on the matter.

      Regardless, what else can you do? Are you going to sua sponte narrow the claims? <-- I'm sure your client will LOVE that. Are you going to write something in the record that the Examiner could have made a better rejection by using X rationale instead of Y rationale? What viable option does a prosecuting attorney have in this situation?

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    4. "should overturn" should read "should not overturn"

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    5. "As someone else already noted, the issued patent already has a presumption of validity. Moreover, patentee will have a strong argument that since the USPTO already considered the references (and the proposed combination) and the rejection was set aside by the Board, then the Court should overturn the USPTO's ultimate decision on the matter."

      "The very fact of having a patent. The very fact that patent litigation is very expensive and there is a presumption of validity."

      That's old-timey thinking. In AIA proceedings there is no presumption of validity. No SNQ limitations. Little or no deference given to whatever happened during prosecution. BRI for non-expired patents. And much, much cheaper than challenging validity in a district court.

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    6. That's old-timey thinking. In AIA proceedings there is no presumption of validity. No SNQ limitations. Little or no deference given to whatever happened during prosecution. BRI for non-expired patents.

      The standard for initiating a inter-partes reexamination is “a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request.” I argue that the Board has already reversed a rejection based upon references A and B, and thus, there isn't a reasonable likelihood that the requester would not prevail. I'll let the other side explain to the Board why the Board was wrong in the first place.

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    7. "The standard for initiating a inter-partes reexamination is. . ."

      An inter partes reexamination is not an AIA proceeding. It is a "pre-AIA" proceeding under 35 usc 311 (2002) et seq. Nor is an inter partes reexam subject to the trial procedures of Part 42 of 37 cfr. See 37 cfr 42.2, "Trial" definition.

      "I'll let the other side explain to the Board why the Board was wrong in the first place."

      In a petition for inter partes review, the petitioner proposes a ground of unpatentability for obviousness that includes pointing out where the secondary reference "B" provides an express motivation to combine. Thus a reasonable likelihood of prevailing. Proceed to trial.

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    8. "The standard for initiating a inter-partes reexamination is. . ."

      Oh, yeah, I forgot to add that the verb should be "was." The last day to file a request for inter partes reexam was more than two years ago.

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