Thursday, April 21, 2016

Obviousness Reversal Roundup for March 2016

[Today's guest post is from Robert K S, who is a patent attorney from Cleveland, Ohio.]

Countering obviousness rejections can be both the most quotidian and the most challenging task of the patent practitioner or pro se applicant. For those who enjoy feeling hopeless, the decisions of the PTAB are fraught with examples of losing arguments. But not here. Please enjoy this review of six of last month's PTAB decisions reversing obviousness rejections.

Ex parte Sewell
Appeal 2013-008463; Appl. No. 11/847,474; Tech. Center 2600
Decided: March 7, 2016

In this case, the Board found no prima facie case of obviousness where the examiner did not rationally articulate the how or why of the allegedly obvious combination. The appealed final rejection alleged as a "suggestion/motivation" for combining the teachings of cited references, to arrive at the claimed printing system having a GUI, a desire "to eliminate the need for a personal computer as disclosed by [one reference] in the Background [section]." The panel "concur[red] with Appellants’ assertions . . . that the Examiner has not rationally articulated how/why one of ordinary skill in the art at the time of Appellants’ invention would combine the [references'] collective teachings and/or suggestions . . . as claimed . . . ." It is tough to determine what "assertions" the Board was referring to, since a review of the briefs shows that the appellants' arguments were directed more toward showing that the proposed modification would have rendered the prior art device unsatisfactory for its intended purpose. Although this can be a winning argument (as discussed below with respect to Ex parte Hager), it doesn't seem to be what won here. The panel appears to have reinterpreted the appeal arguments and reversed the rejections on a different basis than what had been argued. Although the Board rarely takes it upon itself to fashion un-argued grounds for reversal, it is the Board's prerogative. The application has subsequently been allowed.

This decision serves as a reminder that it is always incumbent upon the examiner to adequately establish not just that different references show different elements of the claims, but also that a person skilled in the art would have had reason to combine or modify the references. A lack of adequate explanation as to what specific understanding or technological principle within the knowledge of one of ordinary skill in the art would have suggested the combination should lead the Board to infer that the examiner selected the references with the assistance of hindsight. See In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998).

Ex parte Kuijper 
Appeal 2014-000569; Appl. No. 12/515,963; Tech. Center 3700
Decided: March 18, 2016
The Board reversed here because a "broad general statement" of motivation is impermissible use of a per se rule. The final rejection alleged that "it would have been obvious to one of ordinary skill in the art, at the time of the invention, to have provided [one reference] with the corrugation shape, as taught by [another reference], because the substitution of one known element for another would have yielded predictable results and all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function and the combination would have yielded predictable results." The rejection further cited to In re Dailey, 357 F.2d 669 (C.C.P.A. 1966) for the proposition that a "change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results." The appeal brief complained that the alleged motivation offered "no rational reason as to why a person of ordinary skill in the art would substitute the single-cutter structure . . . for one of the cutters in the multiple cutter structure of [the base reference]. Not only is this illogical, but also the results of such a substitution, if even possible, would not be predictable to one of ordinary skill in the art." The Board agreed that the examiner's "overly broad, general statement" was insufficient, and quoted In re Ochiai, 71 F.3d 1565, 1571 (Fed. Cir. 1995): "This method of analysis is founded on legal error because it substitutes supposed per se rules for the particularized inquiry required by section 103. It necessarily produces erroneous results. . . . [E]liminat[ing] the need for fact-specific analysis of claims and prior art may be administratively convenient for PTO examiners and the Board . . . But reliance on per se rules of obviousness is legally incorrect and must cease."

Here, like in Sewell, the Board's reasoning did not exactly mirror the arguments presented by the appellants, inasmuch as the appellants did not cite Ochiai and did not identify the rejection as being grounded only in a "per se rule". Even so, this decision shows that general statements that references would have been combinable is insufficient grounds for an obviousness rejection, where such allegations do not show how or why a person skilled in the art would have been led to select and combine the particular prior art features from different references to arrive at the appealed claims. Such is the burden of the examiner in order to make a prima facie case of obviousness. See In re Vaidyanathan, 381 F. App'x 985, 993 (Fed. Cir. 2010) (nonprecedential).

Ex parte Elder
Appeal 2014-004233; Appl. No. 12/818,592; Tech. Center 1700
Decided: March 23, 2016

Like in Sewell and Kuijper, the Board reversed here because the examiner did not identify a sufficient reason for a person of ordinary skill to have modified the base reference in the proposed manner. Independent claim 7 was finally rejected as obvious over two references. The action set out detailed factual findings and concluded that "[o]ne of ordinary skill in the art . . . would have been motivated to provide the [first reference device] with a [second reference's filter having a particular flow passage configuration] since [the second reference] states . . . that such filters 'have a very high mechanical stability and a relatively high insensitivity to impact, as can happen during transport and assembly,' 'remain operative for a considerably longer period, before cleaning is required,' and also have 'very good rejection properties for the washing off of the sediment in rewashing operations.'" The applicant argued that the cited "reasons" for motivation were with reference not to the particular claimed configuration, "but rather the overall filter". As such, "[t]here is no reason disclosed why the [first reference's] openings would benefit from having" the particular claimed flow passage configuration. The reply brief noted that "it is still unclear why one would bring the opposed first/second openings and the third/fourth openings together" [as in the proposed modification]. The Board agreed, concluding that "the modification proposed in the rejection is the result of hindsight and would not have been obvious at the time of the invention."

The examiner fought this case about as hard as I've seen, going so far as to provide marked-up drawings comparing the filter structures in the cited references. Valid factual findings necessarily underlie every obviousness rejection under Graham, but they are insufficient to make the case where the references do not make clear why the combination would have been motivated and no other supporting reasoning is supplied.

Ex parte Metz 
Appeal 2014-002549; Appl. No. 12/598,492; Tech. Center 3600
Decided: March 24, 2016

The appealed rejection cited to In re Japikse, 181 F.2d 1019 (C.C.P.A. 1950), for the proposition that "rearranging parts of an invention involves only routine skill in the art", in support of a rejection based on a single reference. Independent claims required a "disk having an outer lateral area defining a ring shaped circumferential surface with a knurled section". The reference was alleged to show the claimed disk, but with knurls elsewhere than on the circumferential surface. ("Knurl" is a great word to Google image search.) The rejection alleged that it would have been obvious to provide the knurls on the circumferential surface to "provid[e] a better frictional surface to prevent unwanted sliding". The applicants countered that moving the knurls wouldn't have worked to solve the problem (a problem that didn't actually exist to begin with), would have been contrary to the functioning of the reference device, and besides, "'the mere fact that a worker in the art could rearrange the parts of the reference device to meet the terms of the claims on appeal is not by itself sufficient to support a finding of obviousness. The prior art must provide a motivation or reason for the worker in the art, without the benefit of appellants specification, to make the necessary changes in the reference device.' Ex parte Chicago Rawhide Mfg. Co., 455 F. 2d 563 (Bd. Pat. App. & Inter. 1984)," MPEP § 2144.04 (VI)(C). The Board agreed that "it is not apparent why it would be desirable to . . . to increase friction of the cam member" by moving the knurls in the reference device since the reference already addressed unwanted torque rotation, the problem allegedly solved by the proposed knurl relocation. The Board thus found that the modification reasoning lacked rational underpinnings and appeared to be the result of hindsight analysis.

The record shows that multiple telephonic interviews and a pre-appeal conference were expended without persuading the examiners of the fault in the rejection. Applicant tenacity prevailed, likely in part because there were multiple good arguments, factual as well as legal, deployed to counter the rejection. Examiners frequently make use of boilerplate citation to legal precedent to support spurious rejection rationales (MPEP § 2144.04 provides a big list, where both Dailey and Japikse appear), but these citations can be rebutted by showing how the cited cases are not applicable to the facts and circumstances of the case at hand.

Ex parte Tatarka
Appeal 2014-007414; Appl. No. 13/066,118; Tech. Center 1700
Decided: March 28, 2016

This decision in a chemical composition case in part stands for the proposition that a prior art reference that includes a "laundry list" of candidate features does not make any particular one of those features "obvious to try" (within the meaning of KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)) where the cited reference does not present a finite number of identified, predictable solutions. On appeal, the rejection hinged on whether or not the single reference in the obviousness rejection taught or suggested the claimed cycloolefin containing modifiers with a crystalline content of 0-10%. The appellants complained that the examiner's "insistence that it is obvious to pluck norbomene from the disclosure of [the reference] which includes 8 Columns of cyloolefin structures involving thousands of potential monomers is conclusory". The panel concurred, noting that the rejection failed to "provide any specific rationales for why a person of skill in the art would choose a norbornene/ethylene elastomer as the flexible polymer among the many possibilities" offered in the reference. "Because of [the reference's] lack of guidance towards selecting norbornene/ethylene over other possibilities in [the reference's] broad disclosure," the rejections were reversed.

Examiners love to rely on "laundry list" references, and not just in the chemical arts, because they seem to throw in everything and the kitchen sink. But just because a reference provides in a single document all the building blocks of a rejected invention does not mean that it would have been obvious, in view of the reference, to put together the building blocks in the same way as in the claims. An examiner is not necessarily free to pick and choose from among myriad possibilities that a reference might offer in making a rejection; a valid motivation for doing so must still be articulated. The Board may have been more sympathetic to the applicants in this case because the record showed the lengths to which they had gone to demonstrate the differences in the optical properties of their invention versus the prior art, even providing samples in an interview, which they photographed for the record.

Ex parte Hager 
Appeal 2014-000978; Appl. No. 13/014,796; Tech. Center 1700
Decided: March 29, 2016

The decision in this case reiterates the "teaching away" lesson of In re Gordon, 733 F.2d 900 (Fed. Cir. 1984), that a proposed modification would not have been obvious if it would render the device or method of the reference unsatisfactory for its intended purpose. Representative claim 1 related to a silicon semiconductor wafer production method. However, one of the three references relied upon in the rejection required conducting its respective chamber etch and coating steps without a wafer, "so that all parts of the chamber, including the susceptor, are etched and then coated". The appellants recognized that the primary reference required the absence of the wafer, and cited W.L. Gore v. Garlock, 721 F.2d 1540 (Fed. Cir. 1983), and DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) for the respective "teaching away" holdings of those cases. The examiner responded with the following remarks: "The mere fact that [the primary reference] teaches that the cleaning and pre-coating are performed without a wafer present on the susceptor does not preclude the implementation of an improvement to the process of [the primary reference] by, for example, utilizing a dummy wafer as per the teachings of [the secondary reference]. If appellant's 'teaching away' logic were followed, then any modification to the teachings of any primary reference would not be valid as the reference implicitly 'teaches away' from making such modifications. This logic does not hold unless the reference clearly and specifically states that the proposed change would render the disclosed process untenable or unworkable." The Board helpfully recognized that "teaching away" doctrine doesn't require a reference to expressly shoot down not-yet-invented modifications, and noted that the examiner ignored that the primary reference required the absence of a wafer in making rejections that modified the primary reference by adding a dummy wafer. Thus, the Board reversed the rejections.

This is another instance of the Board showing largesse, in conjuring up Gordon to support the appellants' position, even though the appellants did not themselves cite to that case. "Teaching away" is not always a winning argument, but it's always good to keep Gordon and the other "teaching away" cases in mind when considering the propriety of obviousness rejections that rely on a combination of references.


  1. Thank you for a very encouraging post. I thought that after KSR, all case-law that required motivation was dead. Good to see I was wrong.

    1. Thanks for reading, Itzik, and for your kind reply.

    2. >I thought that after KSR, all case-law that required motivation
      >was dead. Good to see I was wrong.

      Not dead, exactly. It's certainly true that rationale-to-combine arguments, especially ones based on case law, rarely work with the Examiner (or even his SPE). But KSR and its progeny do still require that the Examiner provide a rationale-for-combining, one that is "articulated" in the record, and one that has a "rational underpinning." If the Examiner failed to do this, you have a much better chance before the PTAB than you do before the Examiner.

  2. MaxDrei here. My thanks also, for an informative post, which I will read again more thoughtfully.

    I'm in Europe. My first thought is how much simpler it all is in the EPO, where it is compulsory to argue obviousness under the rubric of the EPO's unique "Problem and Solution Approach" (EPO-PSA). Not only simpler but more rigorous. EPO-PSA is a fixed set of steps, taught rigorously to every would-be attorney and Examiner. In walking the steps, every time the same route, nothing gets overlooked, to arise for the first time on appeal.

    Now I do realise that you cannot apply EPO-PSA to a First to Invent jurisdiction. But I await with interest to see signs of ingress of EPO-PSA logic in PTAB cases where the AIA rules.

    You see, in a First to File jurisdiction, the date for assessing what was obvious is the date of filing at the PTO, a date which is later than that on which the claims were drafted and the specification crafted. So when you compare the claim presented by the inventor to the PTO with the anterior documentation, you can take into account what technical field the drafter chose to allocate to the invention, and what technical problem the inventor was addressing, when the invention was made, giving it full faith and credit in the exploration whether or not the claimed subject matter was obvious on the filing date.

    1. I took a look at the guidelines under

      I can't tell what makes this approach different than what is done in the U.S. under the Graham factors, except that in practice the European examiners tend to be more circumspect, and frankly more fair, in their selection of closest prior art and their findings of what would have been obvious.

      In any case, I don't think first-to-invent vs. first-to-file is much of an issue when comparing the EPO and U.S. regimes since whenever the issue comes down to a date, that much is not resolved under an obviousness analysis but based on other evidence.

    2. Robert my point about First to File and the EPO approach is that because the spec and claims are written on a date anterior to the one on which obviousness is assessed, it is legitimate to give full faith and credit to the drafter, for the selection of the technical field and identification of the problem addressed by the inventor and solved by the claimed subject matter. That is indeed what the EPO approach does.

      Otherwise under First to Invent thinking, where one is asking oneself whether the conception was inventive, and that conception of course happened before the drafting of the patent application. Now I know the date for admission of prior art into the analysis is set by the PTO filing date, but that does not magic away the mindset, that it is the conception that is to be examined for inventive activity.

      I'm surprised you think that EPO-PSA is not materially different from the US analysis of obviousness, for under the EPO approach the drafter fixes the "closest prior art" by judicious specification of the technical field and the problem addressed by the inventor. As I understand it, in the USA, manipulating which is the closest art is not done by judicious drafting of the specification.

      BTW, thanks Karen for resurrecting my lost earlier posting.

  3. A few days ago, I wrote a long-ish comment but it never appeared.

    So I'll keep this one short.

    My experience of arguing obviousness is at the EPO. I see from your blog post above how different it all is, at the USPTO. Many thanks for the informative review, in a style which made it a pleasure to read.

    1. I would like to learn more about what the differences are. It seems to me that the European "inventive step" question ultimately also resolves to what would have been obvious to a person skilled in the art. I would think that the obviousness analysis breaks down into (a) a factual determination of what knowledge would have been in possession of the skilled artisan and (b) what those facts or other considerations would have suggested in terms of modification or combination.

    2. >few days ago, I wrote a longish comment but it never appeared.
      >So I'll keep this one short.

      Sorry, Anon. Not sure why, but the Blogger spam filter caught your comment. I just marked it as non-spam, so now it appears in this comment thread.

  4. Indeed. In the EPC, Art 56 is the counterpart to 35 USC 103. It sets up "obvious" as the antonym of "inventive".

    The EPO's "Problem and Solution Approach to obviousness is a TSM approach, which excludes hindsight. It follows a fixed series of steps, which every attorney and EPO Examiner has to follow. The obviousness enquiry is last, after all other issues of patentability have been decided. It seldom takes much time to decide the obviousness issue at the EPO.

    You can read it up, on the EPO website.

  5. Another comment I just made has disappeared into the ether. No idea how I keep managing to trigger the spam filter. Sorry.

  6. There's something very wrong with training at the PTO where Examiners routinely make conclusory statements that something is allegedly obvious yet fail to provide any reasoning or evidence to support their conclusions.