Tuesday, September 20, 2016

PTAB reverses 103 when secondary reference feature would not provide benefit if incorporated into primary reference

Takeaway: The Examiner rejected claims to a citrus reamer as obvious over a combination of three references, with two references disclosing the claimed features and a third providing a reason to combine. The Applicant successfully argued the the Examiner's reason to combine wasn't rational, by providing a technical explanation of why the feature from the second reference wouldn't work in the primary reference. The Board agreed and reversed. (Ex parte Hensel, PTAB 2016.)

Ex parte Hensel
Appeal 2014-006258; Appl. No. 13/306,946; Tech. Center 3700
Decided:  June 9, 2016

The application was directed to an electric citrus reamer. The only independent claim on appeal read:
     15. A citrus press device with a motor for rotating a citrus reamer comprising:
     a fruit dome that cooperates with the reamer;
     the reamer having primary ribs,
     each rib having an apex, the apex comprising an elevated projection;
     the elevated projections spaced from and surrounding a central pin that acts as a spacer between the reamer and the dome.
The Examiner rejected the claim as obvious using a combination of three reference. The Examiner found that the primary reference De Zarate (a utility patent) disclosed all limitations except for the projections. For that feature, the Examiner turned to the secondary reference Reinicke (a design patent). The Examiner proposed using Reinecke’s ribs in De Zarate’s reamer 25 so that the De Zarate’s protuberance 26 (mapped to the claimed "central pin") was "surrounded by ribs and was at a higher elevation than the ribs.” For a reason to combine, the Examiner turned to a teaching in the third reference Jakovicz (also a utility patent)   "... portions formed to grip the fruit section [would] prevent undue slipping during use of the device."

The Applicant made two arguments on appeal. One, the combination of the primary and secondary references did not suggest the claimed cooperation between ribs and central pin. Two,  the third reference did not provide a motivation to combine the first two references.

More specifically, the Applicant argued that the primary reference De Zarate taught a central pin but no ribs, while the secondary reference Reinicke taught ribs but no pin. In combining the two, the Examiner did not account for the claim language which required the projection at the apex of each rib to be spaced apart from the central pin, and also required these projections to surround the central pin. According to the Applicant, the Examiner had improperly isolated the pin and rib features and did not consider the claim as a whole.
Reinicke's ribs
De Zanate's reamer
The Applicant also traversed the Examiner's rationale for combining, by arguing that the advantage described in Jakovicz – prevention of undue slipping during use of reamer – didn't make sense when applied to De Zanate's reamer. De Zarate’s device extracted juice from a fruit section by pressing the fruit section between dome (33) and rotating reamer (25), whereas Jakovicz disclosed a fruit press juicer, which did not suggest inclusion of a rotating reamer. Based on this difference in operation, Jakovicz’s teaching of “rib-like parts being formed to grip the cut edge of the fruit section and prevent undue slipping thereof” was not a rational basis for modifying De Zarate’s reamer 25 to include the claimed ribs, since the principle of reamer 25 requires rotation relative to the fruit. The Applicant concluded this portion of the argument by framing the issue as "no reasonable expectation of success," and noting that "Reinecke is a design patent that provides little or no teaching in regards to any operation of the reamer" (emphasis added).

The Board reversed, finding that the Examiner's rationale for modifying De Zarate’s reamer to include ribs was not rational. The Board agreed that Reinecke extracted juice by relative rotation between the ribbed mound and the fruit section. This involved some slippage between the ribbed mound and the fruit section, so preventing slippage wasn't a reason to incorporate this feature into De Zarate’s. The Board then dug deeper into the teaching in  Jakovicz cited by the Examiner cited as a reason for using ribs – and found that this teaching applied to Jakovicz’s annular ribs, not radial ribs (as claimed).
It is not clear how the structure of Jakovicz’s annular ribs 24 would lead a person of ordinary skill in the art to modify De Zarate’s rotating reamer 25 to include Reinecke’s radial ribs to prevent undue slipping between reamer 25 and fruit during use. Jakovicz’s annular ribs 24 grip the outer edges of the fruit section as plunger 27 presses the fruit section into member 20, thereby providing a complete expressing of juice from the fruit section. That is a markedly different juicing operation than De Zarate’s rotating of reamer 25 within the fruit section, as the fruit section is pressed on to reamer 25 by cap 33. Due to the differences in structure and function between De Zarate and Jakovicz we determine the Examiner errs in determining it would have been obvious to modify De Zarate’s rotating reamer 25 to include Reinecke’s ribs, in light of Jakovicz, to prevent undue slipping between reamer and fruit during use of De Zarate’s device.
(Emphasis added, internal citations omitted.)

My two cents: This case caught my eye because the Examiner used a third reference only for a rationale for combining. Theoretically possible, I suppose, to find one reference teaching a feature (here, Reinecke’s ribs) but not an advantage, and another reference (Jakovicz) that taught an advantage for the feature. And of course Reinicke couldn't discuss any advantages or benefits, since it was a design patent, so the Examiner had to turn to a third reference.

But wait ... if the reference teaching the advantage of the claimed feature (Jakovicz) also taught the claimed feature, why use the intermediate reference (Reinicke) at all?

Maybe because the reference-with-advantage doesn't teach all the claimed structure. That's what got the Examiner into trouble here. Jakovicz’s statement about the advantage of ribs applied to annular ribs, not radial ribs as claimed (and as allegedly disclosed in Renicke). I think the Examiner's rationale was irrational for this reason alone.

The Applicant didn't dig that deeply into Jakovicz (and shouldn't have to), and instead focused more on why the combination of ribs and reamer wouldn't work. I might have framed this more narrowly as "change to principle of operation" rather than more general "motivation isn't rational." But the important thing is the technical explanation about why the combination didn't make sense, and kudos to the Applicant for focusing on that. 

No comments:

Post a Comment