Tuesday, February 8, 2011

Examiner uses admissions in a long felt need declaration to provide a rationale for combining


Takeaway: During an ex parte reexamination, the Examiner used statements in a secondary considerations declaration as a rationale for combining references. "The admissions by the applicant in his declaration and remarks show that a one piece design was considered desirable by those of skill in the art and would predictably result in preventing the loss of game calls, maintaining a true sound, and reducing the cost of the game call." We won't know if the Examiner's position was tenable, since the issue before the BPAI was not the obviousness rejection itself, but whether the Examiner had presented a substantial new question of patentability.


Details:
Ex parte Muzzy Products Corp.
Appeal No. 2009-011350, Reexam 90/008,081, Tech. Center 3900
Decided September 1, 2010

Muzzy Products obtained a patent with claims directed to a device for calling game. A reexamination request was filed on the patent during litigation. The Examiner adopted the requester's position that the claims were obvious over a previously considered reference, in combination with admissions made during prosecution of the original patent.


Specifically, the Examiner contended that the reference taught all limitations except for a "one piece construction." The Examiner further asserted that the Applicant's statements in a declaration of long felt need were admissions showing that a one piece design was desirable and provided specific benefits, as follows:

3. During the earlier concluded examination, a declaration was presented to show that the claimed invention satisfied a long-felt need. As noted by the requester, the inventor admitted in this declaration "I developed the present game call device after noting several complaints by others in the art that a separate game call and holding device was disadvantageous."
4. The inventor makes an admission as to those of ordinary skill in the art: "those using my father's '091 game call holder." In a response, the applicant further admitted that customers, i.e., those using the '091 game call holder, apparently recognized that having separate game calls and holders was disadvantageous. Since those using the '091 game call holder are also of ordinary skill in the art, it appears that the itemized explanations in the remarks also relate to the knowledge of those skilled in the art.
5. Thus, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the game call device of Musacchla '091 to a one-piece game call and elevating device because the admissions by the applicant in his declaration and remarks show that a one-piece design was considered desirable by those of skill in the art for the purpose of preventing the loss of game calls, maintaining a true sound, and reducing the cost of the game call.

The patentee appealed, but not on the obviousness rejection. Instead, the patentee appealed on an issue specific to reexam – whether the Examiner had shown a substantial new question (SNQ) of patentability, which as of June 2010 is an appealable issue.

The Applicant argued that the question presented in reexam was not a new question, because prosecution of the original patent involved the same issue: a single reference obviousness rejection using the same reference.

The Examiner contended that original prosecution considered the 1.132 declaration only as evidence of long felt need, used to rebut the prima facie case. The original Examiner did not appreciate the admissions in the same declaration as a motivation to combine. This new appreciation cast the reference in a "new light," and thus raised a new question in reexam.

The Board held that a substantial new question was not presented:

[T]he CRU Examiner does not apply the statements in the Declaration to gain any new understanding as to the teachings of the Musacchia reference, but rather, uses the statements merely to reach a different legal conclusion as to obviousness. While the CRU Examiner asserts that the statements in the Declaration casts Musacchia in a "new light" (Ans. 14), the CRU Examiner's position suggests that the CRU Examiner is viewing the Declaration, not the Musacchia reference, in a new light.

The Board remanded the application back to the Examiner for termination of reexamination proceedings.

My two cents: What caught my attention was not the reexam-specific SNQ issue, but instead the idea that declarations can be used against an applicant. Statements about what the inventors understood as deficiencies in the prior art can't be used as a motivation to combine. However, statements about long felt need must be about what POSITAs perceive as a deficiency, in order to be effective. In re Gershon, 372 F.2d 535, 538 (CCPA 1967) (in order to show a long-felt but unmet need for the claimed invention, the objective evidence must show that the need was a persistent one that was recognized by those of ordinary skill in the art). Therefore, I think that the Examiner's use of the declaration admissions was proper.

A problem in the prior art can usually act as a rationale for combining, if the Examiner can also show that the claimed combination solves the problem in a predictable manner. Here, the Examiner used the admissions in the declaration to show both. The declaration said that POSITAs recognized shortcomings of a two piece game caller: easy to lose, expensive to manufacture. Isn't that a reason to combine? The declaration also said that the claimed one piece design would address these problems, making it harder to lose and cheaper to make. Doesn't that show that the result of modifying the reference to use one piece rather than two piece construction would be predictable? Isn't that an articulated rationale under KSR?

Maybe admissions that can be used to build a prima facie case of obviousness aren't so bad in this particular scenario. After all, maybe an Applicant resorts to a declaration of long felt need only when the prima facie case can't be beat – when the Examiner already has a strong rationale for combining. The lesson here is to simply think about what you're doing, and realize that you may be giving up your prima facie case – and in fact, giving it to the Examiner on a silver platter – by using a declaration of long felt need.

Finally, it doesn't seem like this danger is limited to reexam. Though the Examiner waited until reexam to switch from a weak rationale to the strong one found in declaration admissions, seems like he could have switched his position as soon as the declaration was filed (in the original prosecution).

10 comments:

  1. "Though the Examiner waited until reexam to switch from a weak rationale to the strong one found in declaration admissions, seems like he could have switched his position as soon as the declaration was filed (in the original prosecution)."

    This, again, sounds like an examiner who was unwilling to provide a substantive rejection prior to the applicant filing their appeal. Unfortunately, the examiner's delay likely cost the applicant a significant amount of money.

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  2. Isn't the real question of what was the object of the (long felt) need? In this case, apparently, everybody felt the need to combine two elements into one - to my view a pretty trivial "invention" (viz. obvious).

    On the other hand, if the long felt need had been the need for a way of reducing loss, for example, and the inventor had figured out a way to fulfill that need, then the solution would be less obvious.

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  3. Whoops - should have said: "Isn't it really a question of what was..."

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  4. >an examiner who was unwilling to provide a
    >substantive rejection prior to the applicant
    >filing their appeal.

    Not at all. I don't think you read all the facts.

    The Examiner did use the admissions as a rationale for combining in the very first rejection in the reexam. The Applicant knew exactly what was going on.

    When I said "could have done this earlier", I was referring to the *original* prosecution, not earlier in the reexam.

    So unless you're saying that the Examiner was sloppy for not using this rationale in the original prosecution, I don't understand your remark. Nor do I consider it to be sloppy examination when the examiner doesn't make the absolute *best* rejection he could have.

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  5. >Isn't it really a question of what was the
    >object of the (long felt) need? In this case,
    >apparently, everybody felt the need to combine >two elements into one

    Bruce, I think you're saying the Applicant picked an "obvious" long felt need, and that this hurt his case because it allowed the Examiner to use the need as a rationale for combining. And further, that if the Applicant had picked a different need, his solution wouldn't be [so] obvious.

    >inventor had figured out a way to fulfill [a >different need, say a way of reducing loss]
    >then the solution would be less obvious.

    Hmm. I don't think that would have changed the outcome here.

    If the need was "not losing the two-piece game call" then "change design from two-piece to one-piece" still seems like a predictable and non-trivial way to address the need.

    Though maybe you're on to something. It does seem like the declaration in this case served as a roadmap to obviousness. Maybe other types of prior art deficiencies ("needs") don't provide such a roadmap.

    One piece that's missing from this discussion is that the secondary consideration of long felt need isn't about the need at all. It's about how your invention addressed the need when others didn't.

    Many Applicants fail to persuade on long felt need because they don't provide *evidence* that others have a)tried and b) failed to address the need. That appears to be the case here too, though the Board didn't reach the substantive issue.

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  6. I think that's complete BS. As long as the long-felt need is true, it can't be considered obvious no matter who might have recognized the problem - especially if it was cheaper and easier to manufacture. That makes the "long felt need" completely ineffective as an approach. Yet, from case law, it is clearly an approved tactic in disproving obviousness. The board has just made its own law in deciding this case. This clearly sucks for me since I just used LFN in a recent response. The Examiner used a reference that is over 100 years old in an obviousness rejection. If that's not long felt need for improvement, I don't know what is.

    They seem to lose sight of what is obvious. The obviousness, or the long felt need, is that the present calls had problems. What may not have been obvious is how to correct them. Maybe this is what the practitioner screwed up on. You need to be careful in saying what the long-felt need is.

    In going back to a conversation I had last week about Agents/Attorneys, this is a great example of where an agent would not be able to examine this issue, this decision, as an attorney would. They aren't trained to see the legal distinctions in describing the long felt need. Although, in this case, most of us attorneys may not see it either.

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  7. >You need to be careful in saying what the long-felt need is.

    Exactly my point above. If you say the long felt need is for a one-piece call (that is, "everyone" was saying that "someone should make a one piece call"), then you are setting yourself up for obviousness.

    If you say the LFN is for a call that is less likely to be lost, then your one-piece solution doesn't seem so obvious (that is, the examiner would have to find blog posts or something where people were suggesting that "someone should make...".

    I guess the answer is that you should express the LFN as the problem definition ("less likely to get lost" and NOT the solution you've invented to solve the problem.

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  8. >LFN is for a call that is less likely to be >lost, then your one-piece solution doesn't seem
    >so obvious

    Agreed that "game calls are easily lost" doesn't scream out as a rationale for combining in the same way that "one piece game calls have disadvantages" does.

    >the examiner would have to find blog posts or
    >something where people were suggesting that
    >"someone should make...".

    Disagree. I think the Examiner can still use your long felt need "game calls are easily lost" as part of the rationale.

    But to do so, the Examiner must take the extra step of figuring out how the Applicant's inventive feature (one piece design) produces a benefit (harder to lose) related to the admitted need (game calls are easily lost).

    I think your suggested LFN is a definite improvement. And I do think you're on to something here, at least in recognizing what *not* to do, ie, state a long felt need that acts as a roadmap to an obviousness analysis.

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  9. >board has just made its own law in deciding
    >this case.

    You didn't read carefully. The Board didn't reach the merits of deciding whether or not the declaration evidence was persuasive or not. Or even whether or not the Examiner's position had any legal merit at all. The Board ruled on the narrow issue of whether or not the Examiner presented a SNQ during reexam.

    >[In another case], the Examiner used a
    >reference that is over 100 years old in an
    >obviousness rejection. If that's not long felt
    >need for improvement, I don't know what is.

    As mentioned in my post, the Fed Cir [not the BPAI] says that long felt need requires "objective evidence ... that the need was a persistent one that was recognized by those of ordinary skill in the art". There is a second requirement that the known problem was "not solved prior to the invention." (Al-Site Corp. v. VSI Int’’l).

    I fail to see how the age of the references is related at all to showing, or failing to show, that a need existed.

    As for the second prong, maybe you're saying that because the Examiner *couldn't* find patents describing how others solved the problem, others must *not* have solved it.

    I don't buy this either. I don't see why one would expect the only source of information about problems in the art and solution to those problems to be patents and patent pubs.

    >What may not have been obvious is how to
    >correct them. Maybe this is what the
    >practitioner screwed up on. You need to be
    >careful in saying what the long-felt need is.

    Bruce Horwitz made this point earlier in the thread. I hadn't originally thought of this angle, but yeah, I agree that framing the long felt need is important.

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  10. The sweet sweet taste of lulz is present in this thread.

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