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.