BPAI affirms obviousness, finding that lots of of obvious choices does not make claimed choice non-obvious

Takeaway: The Applicant appealed an obviousness rejection of claims to a combination of a detergent and a container. In addition to teaching the claimed container, the secondary reference also taught that the container provided "customer friendly dispensing." According to the Applicant, the prior art included an infinite number of other containers that would be suitable for a detergent. Therefore, the Applicant said, the Examiner had used advantages of the container gleaned from the Applicant's specification, viewed in hindsight, to arrive at the claimed combination. The Board affirmed the rejection. The Examiner's rationale came from an express teaching of the reference, not hindsight. As for the Applicant's argument about the number of possible containers, "[t]he fact that it would have been equally obvious to use other containers for Gutierrez’s detergent does not make the use of Seifert’s container any less obvious." (Ex parte Buzzaccarini et al., BPAI 2011.)

Details:

Ex parte Buzzaccarini et al.
Appeal 2010009418; Appl. No. 11/799,800; Tech. Center 1700
Decided  July 13, 2011

The application on appeal involved laundry detergent.  The independent claims were directed to a combination of a detergent and a container.

1. An article of commerce for laundering comprising:
     (a) a shear-thinning, compact fluid laundry composition comprising a sum of water and non-aminofunctional solvent of from about 5% to about 45%, by weight of the composition; and
     (b) a water-insoluble container releasably storing said compact fluid laundry detergent composition;
     wherein said composition has a neat viscosity, Vn, of from about 1,000 cps to about 10,000 cps as measured at 20 s-l, and a diluted viscosity, Vd, that is less than or equal to about 0.5Vn, as measured at 20 s-1; and
     wherein the water insoluble container is selected from bottom dispensing containers that are capable of preventing olfactory access by a consumer to a head space co-located with the compact fluid laundry composition in the water-insoluble container during dispensing of the compact fluid laundry composition.

A final Office Action included an obviousness rejection for the independent claims. The obviousness rejection relied on: a primary reference for the claimed composition except for the specific viscosity values; a secondary reference for the claimed container; and a third reference as evidence that the claimed composition would inherently possess the claimed viscosity.

On appeal, the Applicant argued, at length, that a POSITA would not be motivated to combine the composition and the container since there are an infinite number of choices for each:

     The only motivation the Examiner provided for the employment of the container of Seifert et al. to hold the composition of Gutierrez et al. was to contain and dispense the liquid detergent in a customer friendly fashion.
     However, without further motivation, Applicants submit that there are an infinite number of containers, besides just the bottom dispensing containers as recited in Applicants' claim 1, that are suitable for customer friendly packaging of a sheer-thinning fluid laundry composition. Applicants further submit that there are an infinite number of fluid laundry compositions, besides just the particular sheer-thinning fluid laundry composition as recited in Applicants' claim 1, that are suitable for customer friendly packaging in a bottom dispensing container.
   In light of the endless number of possible combinations of fluid laundry compositions and containers, Applicants' specification provides the advantages of the particular article of commerce as recited in claim 1. Such advantages include the conservation of resources and the elimination of waste (through a more concentrated, and therefore viscous, composition that does not sacrifice performance), as well as packaging that provides improved ease of measurable dispensing and aesthetic appeal to consumers. Additionally, the creation of such an article of commerce requires an interdisciplinary collaboration between fluid laundry composition formulators and packaging engineers. Thus, Applicants contend that the Examiner's combination of Gutierrez et al. in view of Seifert et al. when taken with Kott et al. is a product of impermissible hindsight reconstruction, wherein the Examiner has improperly utilized Applicants' specification as a roadmap.

In the Answer, the Examiner maintained the asserted motivation to combine ("to contain and dispense the liquid detergent in a friendly fashion") and defended the motivation as follows:

In this case, certainly, applicant would agree that the cleaning composition of Gutierrez et al. is obviously offered to consumers in some form, or type, of container. All cleaning products come with a container inherently. The only question remains, is the type of container, and whether it is well known in the art or not. Therefore, the appellant's assertion (pages 10, 11, and 12) that examiner's rejection has impermissibly utilized the current application as a road map for hindsight reconstruction, is respectfully disagreed with.

The Board affirmed the obviousness rejection. The Board first found that the primary reference did teach the claimed composition, and that the combination was obvious because "Seifert expressly suggests the use of the container for laundry detergent." The Board then dismissed the Applicant's "infinite choices" argument as follows:

This argument is not persuasive, because Seifert expressly suggests the use of its bottom dispensing container for laundry detergents (FF 5). Thus, Seifert would have suggested using the container with any liquid detergent, including the detergent of Gutierrez. The fact that it would have been equally obvious to use other containers for Gutierrez’s detergent does not make the use of Seifert’s container any less obvious.
(Emphasis added.)

My two cents: This case really highlights the huge differences between how inventors and patent attorneys view obviousness and how the court sees obviousness. In the inventor view, even if all containers are known, the inventor evaluates each one to determine whether it makes sense to use. Such an evaluation takes time, so that the larger the number of choices, the less obvious it is to choose any particular one.

This case suggests to me that the way the courts view obviousness, all the possible types of containers and the advantages of each are not only available to the inventor, but are instantaneously available. Sure, the Seifert reference was one of many [hundreds? thousands?] containers for liquids, but it isn't as if the inventor had to read all of the references, one by one. The inventor already knows that Seifert's container is advantageous for detergents. And knows about all other types of liquid containers and their advantages. Simultaneously.

It seems like the courts think that in predictable arts, choosing among any finite number of options is obvious because the evaluation is cost-free.

Maybe I'm reading too much into the BPAI's reasoning.. Maybe the courts don't really feel that evaluating a finite number of options has no cost whatsoever. Maybe the courts only feel that evaluating options is part of the inventive process, which means we don't reward inventors for simply going through the process.

Except that in some scenarios, the cost of evaluating options must surely be prohibitive. And picking a particular one really is inventive.

Shouldn't the obviousness analysis take this into account? It seems like when the court chooses to use the "finite number of identified, predictable solutions" rationale, the court should look at the number of options, the cost of evaluating each one, and the benchmark used to determine whether the cost is prohibitive.

Maybe in some technology areas, thousands of options can be easily modeled via computer. Under those facts, maybe an inventor doesn't deserve a patent for merely selecting one option among thousands.

Maybe in other fields, evaluating even a dozen options has a high cost. Under those facts, maybe an inventor does deserve a patent for choosing one option.