Board finds that using input device from stowed location renders unsatisfatory for intended purpose

Takeaway: The Applicant appealed an obviousness rejection of a claim to a personal portable storage device (PPSD) with simultaneous wireless access to host devices. The limitation at issue was "said PPSD remaining in a stowed location during said access." The primary reference was an input device "incorporating additional devices or functionality." The Examiner added a reference teaching a cardiac/lung function monitor that could be carried in the hand, on a belt, or in a pocket. The Applicant argued that stowing the computer input device would render it inoperable for its intended purpose. The Examiner explained that a trackball device (one of the devices mentioned in the primary reference) could be used in a pocket since motion of the device itself wasn't required to manipulate the cursor. The Board agreed with the Applicant and reversed the rejection under § 103. (Ex parte Chen, No. 2013-000463, PTAB Mar. 4, 2015)

Details:

Ex parte Chen
Appeal 2013-000463; Appl. No. 11/170,655; Tech. Center 2100
Decided:  March 4, 2015

The application on appeal described "a portable device which may wirelessly interface with other personal electronic devices in order to provide increased data storage capacity." A representative claim on appeal read:

     1. A personal portable storage device (PPSD) comprising:
     a storage medium;
     a wireless component coupled to said storage medium, said wireless component having multiple simultaneous connection capabilities;
     a transfer management electronics coupled to said storage medium for allowing a plurality of host devices to access said PPSD simultaneously through said wireless component, without requiring physical connections between said PPSD and said plurality of host devices,
     said PPSD remaining in a stowed location during said access;
     a self-contained energy source coupled to said transfer management electronics; and
     a housing of a size and shape well-suited to being carried on a person, said housing at least partially enclosing said storage medium, said wireless component, said transfer management electronics, and said self-contained energy source,
     such that said PPSD is easily transported.
(Emphasis added.)

The Examiner rejected this claim as obvious over Ram, Gurevich, and Sackner. The primary reference, Ram, was directed to a computer peripheral (e.g., a mouse) with additional I/O devices contained within the peripheral's enclosure. Gurevich taught the simultaneous access without physical connections feature, and Sackner was used for the "stowed" feature. Sackner was directed to a cardiac/lung function monitor, "possibly hand-held, [and] it may also be carried on an individual normal clothing, for example, on a belt, or may be placed in a pocket provided on garment." The Examiner's rationale for combining Sackner with Ram and Gurevich was "it is easy to situate a PPSD [personal portablestorage device] on a belt."

The Applicant argued that the combination was improper because it rendered the prior art being modified unsatisfactory for its intended purpose (citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)). More specifically, "keeping the computer apparatus of Ram stowed" would mean it wasn't available for use, "which is directly away from Applicants understanding of the intended purpose of Ram (a mouse apparatus)."

Maintaining the rejection, the Examiner noted that in addition to a mouse, Ram also taught a keyboard containing memory and a wireless adapter. "Since keyboards do not typically need to be in a constant state of motion to be used properly," the combination of Ram's keyboard as modified by Gurevich and Sackner could be stowed "without affecting the ability to use the device." In response, the Applicant asserted that operating a stowed keyboard would be difficult, then attacked the Examiner's statements as "extremely speculative and not supported by a preponderance of evidence." The Applicant requested that the Examiner provide an affidavit in support of his findings. 

The Examiner kept the rejection, and in response to the Applicant's argument about the difficulty of using a stowed keyboard, the Examiner noted that the Applicant's own FIG. 6 depicted the storage device stowed in a pocket. The Applicant repeated the same render-inoperable argument and noted that no Examiner affidavit had been provided to support the Examiner's findings.

This time the Examiner maintained the obviousness rejection but switched focus once again. Sackner disclosed a heart monitor that was "stowable on one's belt or pocket," plus Ram disclosed a trackpoint or trackball "as part of the keyboard or mouse." Since a trackpoint/ball moves the cursor without moving the device around, it "can easily be manipulated to move the cursor while stowed, and keys can still be manipulated on a device that is in one's pocket or on a belt."

In the last response filed before appeal, the Applicant characterized these Examiner statements as "purely speculative and not supported by a preponderance of evidence." The Applicant also questioned the Examiner's new focus on Sackner. The Examiner's rejection modified Ram with Sackner (not vice versa), so whether or not Sackner was stowable was "not the question being raised or the argument being addressed." The Applicant restated the § 103 argument as follows:

     [I]t is the utilization of Ram from a stowed location that is properly being addressed in Applicants arguments. With respect to Ram, the Office Action has not provided a prima facie case that overcomes Applicants arguments that keeping the computer apparatus (a mouse apparatus or a keyboard) of Ram stowed would result in Ram not being available for PROPER or INTENDED purpose of Ram.
...
     [W]hether the computer apparatus of Ram can be manipulated while in one's pocket or on a belt is irrelevant and erroneous. It is merely a straw­ man argument to that does not provide any factual evidence to support the prima facie case for obviousness. That is, Applicants submit that the prima facie case improperly hinges on a purely subjective opinion that a trackball and/or a keyboard could be manipulated on a device that is stowed.
     In contrast, Applicants submit that a proper prima facie rejection of obviousness must be supported by evidence rather than speculation and opinion. Specifically, Applicants note that attempting to utilize the computer apparatus of Ram from a stowed location would adversely affect the ability to use the device.

The Examiner issued one more Office Action before the Applicant appealed. The Examiner's position wasn't speculative, since a trackball or keyboard was easily manipulated "as long as it is reachable by the user." And although the Applicant characterized manipulation of Ram's device while stowed as "irrelevant and erroneous," "it is well-known that a keyboard or trackball can be manipulated on a device that is stowed in a fixed position."

At that point, the Applicant appealed. The Applicant did a quick traversal of the obviousness rejection by arguing that the Examiner's modification of Ram by Sackner rendered Ram inoperable for its intended use. The remainder of the Appeal Brief focused on the Examiner's failure to make a prima facie case supported by evidence, as opposed to subjective opinion.

To this end, the Applicant attacked several assertions made by the Examiner in prosecution, including a trackball or keyboard is easily manipulated when in reach, and "it is well-known  that  a keyboard or a trackball can be manipulated  on a device that is stowed in a fixed position." According to the Applicant, such statements were speculative and not supported by any actual evidence.

The Applicant then cited to several administrative law cases mentioned in the MPEP.

The "assessment of basic knowledge and common sense that is not based on any evidence in the record lacks substantial evidence support" (MPEP 2144.03(a); In re Zurko, 258 F.3d  1379, 1385, (Fed. Cir. 2001)). Moreover, "the examiner must provide specific factual findings predicated on sound technical and scientific reasoning to support his or her conclusion of common knowledge" (MPEP 2144.03(B); see In re Soli, 317 F.2d 941, 946, (CCPA  1963); see also In re Chevenard, 139 F.2d 711, 713 (CCPA  1943)).

The Applicant concluded the Appeal Brief with:

Appellants submit that the above well-known statement lacks any factual evidence to support the prima facie case for obviousness. In contrast, Appellants submit that the prima facie case improperly hinges on a purely subjective opinion that a trackball and/or a keyboard could be manipulated on a device that is stowed.

In the appeal decision, the Board first summarized the positions of the Applicant ("the mouse would not be available for its intended use as an input device if stowed in a pocket or a belt as in Sackner") and the Examiner ("being stowed would not inhibit the mouse from communicating with other devices"). The Board then reversed, explained its reasoning as follows:

Although the mouse includes a storage device, the Examiner has not shown that the storage device is capable of being accessed by host devices outside of the mouse for storing or retrieving data. Therefore, on this record, the sole intended use of the mouse does not depart from its conventional purpose as an input device. Thus, we agree with Appellants modifying the mouse with Sackner’s teaching to be stowed would not comport with its intended use as an input device, and would thereby render the mouse unsatisfactory for its intended purpose.^3
3 In the event of further prosecution, the Examiner should consider modifying Sackner’s microprocessor (3) with the teachings of Gurevich and Ram to reject claim 1.

My two cents: First off .... why so long to appeal? The Applicant filed a total of 9 responses and 3 RCEs before appeal. And 4 of these 9 responses argued the very issue that went to appeal. Sure, the Applicant got more information each time (generally a good thing) but it also allowed the Examiner to switch position. Should have appealed much earlier. Definitely a bad idea to RCE without amending or entering evidence.

But kudos to the Applicant for recognizing a good rationale-to-combine argument, and sticking to it. It's rare to appeal when the only issue is rationale-to-combine, as opposed to combination-doesn't-teach.

The Applicant's focus on Examiner evidence seemed to be unnecessary in this particular case. The way I read it, the Board reversed because it was persuaded by the Applicant's combination-unsatisfactory-for-intended-purpose argument, and not because the Examiner didn't provide evidence about manipulation of a trackball stowed in a pocket. The Board simply looked at the conventional purpose of an input device and found that stowing it away would frustrate this purpose. The Board then concluded that, since this was the case, a POSITA would not modify Ram's input device to be stowed away like Sackner's monitor.

In other words, the Applicant and Examiner focused on whether an input device could be used while stowed, but the Board focused on whether a POSITA would do this in the first place. And rightly so, as rationale/motivation to combine isn't about what a POSITA could do, but about what a POSITA has a reason to do. The Board didn't see a reason to stow the input device away.

This reasoning sidesteps the issue of whether or not the Examiner needed evidence. But say the Board did reach that issue ... isn't this question one that can be understood by any one with common knowledge and common sense? Neither side went into a lot of explanation as to why a trackball was or was not usable in this manner. The Examiner gave a couple of sentences explaining why usable, while the the Applicant made a naked assertion "not usable." Neither side offered evidence, but maybe evidence is overkill for this particular technology and use case.

Or is the Applicant right, and as a matter of administrative law, the Examiner needs evidence to support his position? Usually, the references themselves are used as evidence. I doubt Ram had anything to say about using the device while stowed, and the Examainer didn't cite to any such teachings in Ram.

Does it make a difference whether the combination uses Ram's keyboard, trackball, or mouse? Note that the Board's opinion said "render the mouse unsatisfactory for its intended use."

Was the Examiner's thinking colored by the fact that it's now common (in 2016) to use a smart phone without looking at the keyboard?  Not such a stretch to envision texting on a smart phone that's stowed in a pants pocket.

Did you catch footnote 3 at the end of the Board's opinion? The Board suggested that using Sackner (the heart monitor) as the primary reference would be a better obviousness rejection. Looks like Sackner's heart monitor meets the storage, housing, stowed, and energy source limitations. Ram provides the transfer electronics and wireless, and Gurevich provides the simultaneous connections. I haven't thought about it enough to know what the two rationales for modification would be, but the combination certainly doesn't have the same weakness that the Examiner's combination did, since the base device is stowable.

PTAB finds kit of chemical agents disclosed in reference renders claimed solution obvious

Takeaway: Claims to a cleaning solution excluding an oxidizing agent were rejected as obvious in view of a kit of prepackaged components for later mixing with the excluded oxidizer. On appeal, the Applicant argued that any "solution" prepared from the kit disclosed in the reference necessarily includes an oxidizing reagent because there was "no suggestion to alter the essential order of addition of its reagents, which requires mixing the oxidizing agent and the surfactant as an initial step." After performing claim construction, the Board relied on a different kit, also disclosed in the reference, to find the solution obvious. The Board noted that the Applicant and Durmowicz both contemplate mixing a oxidizing agent solution with another solution that omits the agent, producing a final solution. Thus, Durmowicz's solution [made from the components in the second kit] "reasonably renders the solution of claim 59 obvious when formulated in the first tube that will later be mixed with a second tube containing the nucleic  acid deactivating agent." (Ex parte Nelson, PTAB 2015.)

Details:

Ex parte Nelson
Appeal 2013002307; Appl. No. 11/073,085; Tech. Center 1600
Decided:  October 26, 2015

The technology on appeal involved nucleic-acid probes, used to test a biological sample for the presence of particular microorganisms. The claims on appeal were directed to cleaning agents used to avoid contamination during the testing.

A representative claim on appeal recited:

     59. A homogeneous solution for use in preventing nucleic acids from acting as templates in an amplification reaction when the solution is combined with a nucleic acid deactivating agent,
     the solution consisting essentially of
a corrosion-inhibiting agent, a wetting agent, and a solubilizing agent,
each of the agents remaining substantially in solution at 22°C,
[functional limitations related to agents],
wherein the solution does not include a nucleic acid deactivating agent.
(Emphasis added.)

Early in prosecution, the Examiner rejected the claims as anticipated by Durmowicz, relying on a discussion of agents that are pre-packaged as separate components, then mixed before use. The Applicant disputed the Examiner's reading of Durmowicz and specifically argued that Durmowicz's kit of prepackaged agents did not include a solubilizer as claimed: 

    In sum, [Durmowicz] requires the inclusion and presence of a nucleic acid oxiding agent in all contemplated embodiments (including kits), whether they are intermediate or final embodiments. In other words, at no point (even transiently) does Durmowicz contemplate a solution containing combined starting materials (e.g., surfactant + builders + solvents), but excluding  a nucleic acid oxiding agent.

Later in prosecution, the Examiner used Durmowicz in a single-reference § 103 rejection:

     Examiner recognizes that the cited art Durmowicz  et al. teaches the components of the solution recited in instant claims along with many other choices. Furthermore the cited art does not recite a single composition containing all the recited components in one place, hence an obviousness rejection over the cited art is also being made.
... Durmowicz et al. does not teach a specific composition consisting essentially of the all recited components. It would have been prima facie obvious to one of  ordinary skill in the art to make a solution containing [the three agents as claimed] wherein the solution does not include a nucleic acid deactivating agent.

As a rationale for omitting the deactivator, the Examiner relied on the (allegedly) common biochemical practice of preparing one solution with a oxidizer and a separate solution without, and then mixing the two shortly before use, because oxidizing agents become less active in storage. Finally, the Examiner asserted "a reasonable expectation that the resulting composition where oxidizing agent was freshly added prior to use would be very effective  in deactivating  nucleic acid from surfaces."

The Applicant responded by arguing that even Durmowicz's kit of prepackaged agents did not suggest the claimed solution, because Durmowicz required the presence of a nucleic acid deactivating agent in each of its solutions.

When the Examiner maintained the obviousness rejection, the Applicant appealed. The Applicant argued the Examiner had not provided sufficient evidence:

The Examiner appears to suggest that although Durmowicz fails to teach the claimed solutions, the Durmowicz teaching to prepare solutions shortly before use explicitly guides one of skill in the art to the claimed solutions. [However, this] conclusion is solely the opinion of the Examiner, with no support in the cited art. For example, no art beyond the Durmowicz reference is relied upon by the Examiner (1) for the above proposition, and (2) for the proof of what one of skill in the art was purported to know or how they would practice at the relevant time.

In addition to this attack on the Examiner's prima facie case, the Applicant also argued on the merits. Specifically, the Applicant reiterated that Durmowicz did not disclose a solution without a deactivating agent:

Thus, contrary to the limitations of the present claims, Durmowicz requires the presence of a nucleic acid deactivating agent in each of its solutions. Stated differently, no homogeneous solutions (i.e., multi-component homogeneous solutions, as required in the pending claims) are taught or suggested by Durmowicz that lack a nucleic acid deactivating agent.
(Emphasis added.)

The Applicant went on to explain the difference between the claimed homogeneous solution and Durmowicz's kit of separate components:

Importantly, these pre-packaged reagents are not identified as, nor are they, "solutions" comprising multiple agents such as the homogenous solutions of the present claims. Rather, para. 52 of Durmowicz discloses separately packaging each reagent of the future "solution" that is to be made. In other words, although Durmowicz discusses separately packaging the "surfactant" agent and the "oxidizing" agent, these individually packaged agents are not the ultimate "solution," as that term is used in the present claims. Moreover, the Durmowicz disclosure provides no suggestion to alter the essential order of addition of its reagents, which requires mixing the oxidizing agent and the surfactant as an initial step. Accordingly, any "solution" prepared according to the Durmowicz kit disclosure includes an oxidizing reagent.

The Applicant next questioned the benefit proffered by the Examiner as a reason to separate the oxidizer from the other components: 

Durmowicz, therefore, contemplates prepackaging in order to facilitate dissolution of its ingredients, and not to avoid a purported rapid decrease in activity of solutions containing oxidizing agent. As such, the basis for this proposition of the Examiner is lacking in the cited art.

Finally, the Applicant made an unexpected results argument:

In fact, those of skill in the art would have expected particulate formation if a corrosion­ inhibiting agent, wetting agent, and solubilizing agent were combined in the absence of an oxidizing agent. For example, as indicated in the present specification at para. 16, it was the present inventors who discovered that the components of the claimed solution could be combined in the absence of the nucleic acid deactivating reagent without forming a precipitate or an otherwise non-homogenous solution.

The Examiner's Answer repeated the earlier explanation about how and why a POSITA would take Durmowicz' separate components and mix them together before use to obtain the claimed solution:

Hence in biochemical arts to ensure optimal activity each time the solution containing oxidizing agent is used, one practice is to prepare two separate solutions, a solution (1) containing all the remaining components which is stable for longer period of time and the oxidizing agent is kept separate either as powder or another solution (2) which is freshly reconstituted if powder form  is used then the solution  (2) is mixed with solution (1) shortly before  use.

The Applicant filed a Reply Brief, but it was denied entry because it included amendments to the claims. 

The Board affirmed the obviousness rejection. As discussed above, the Brief had argued that each of Durmowicz's agents was separately packaged for later combination into a future solution, and these individually packaged agents were not the ultimate claimed solution. The Board viewed the teachings of Durmowicz differently.

The Board pointed out that Durmowicz taught two kits. One kit included "appropriate amounts of surfactant and oxidizing agent in separate containers for mixing prior to application." Another kit included "surfactant and organic builder salts such as phosphates or bicarbonates in one tube and the oxidizing (i.e. nucleic acid deactivating agent) in another tube." Moreover, the Board found (as a matter of claim construction) that Durmowicz's builder salts corresponded to the claimed "corrosion-inhibiting agents." The Appeal Brief discussed the first kit but not the second.

The Board concluded the properly construed claim was obvious in view of the second kit and a separate teaching about solvents:

[The second kit] solution with surfactant, organic builder salts such as phosphates and bicarbonates (Finding of Fact 7) and optionally organic solvents such as isopropanol (Finding of Fact 11) reasonably renders the solution of claim 59 obvious when formulated in the first tube that will later be mixed with a second tube containing the nucleic acid deactivating  agent  (FF 6).

The Board dismissed the Appeal Brief discussion of unexpected results (homogeneous solution rather than particulates) because the Applicant did not offer evidence. "Appellants do not identify any teaching in Durmowicz suggesting that the combination of components necessarily results in particulate formation, and indeed, Durmowicz teaches "a non-particulate solution" (see Durmowicz , para. 53).
 
My two cents: The outcome might have been different if the Applicant had been more proactive and addressed all of Durmowicz's teachings about the kit. It's true the Examiner relied exclusively on general teachings about a kit in para. 52. However paras. 53 and 54 contained more details about first and second kits, respectively, and the Board found that the second kit corresponded to a combination of a corrosion-inhibiting agent, a wetting agent, and a solubilizing agent. The Board found it obvious to combine this later with a deactivator.

I see the Board's affirmance as a new ground of rejection. MPEP 12707 says it's a new ground to "rel[y] on a different portion of a reference which goes beyond the scope of the portion that was previously relied upon" but not a new ground when "citing a different portion of a reference to elaborate upon that which has been cited previously." Relying on a different kit of reagents is "going beyond previously relied upon" than "elaborating on previously relied upon." So if the Applicant filed a Request for Rehearing asking the PTAB to designate a New Ground of Rejection, the law is on the Applicant's side. (That said, I don't think the Board actually grants many of these Requests, and the Federal Circuit has corrected the Board a number of times in the past few years on the subject of New Grounds.)
 
The way I see it, designation of a New Ground would still be a pyrrhic victory. A New Ground of Rejection in an appeal decision allows the Applicant to file post-appeal amendments and/or evidence without paying for an RCE. Which means the Applicant still waited on appeal for all those years only to lose because the PTAB decided to go farther than the Examiner did.

It's true that the law requires the Applicant only to show error in the Examiner's rejection, and not to show patentability over the cited references. Even so, a more proactive Applicant might have accounted for the two paragraphs following the one relied on by the Examiner. Perhaps that would have led to claim amendments rather than appeal.


Claim construction was also an issue in this case, though neither party appreciated it until too late. The Examiner first addressed claim construction in the Answer, and the Applicant in the Reply Brief – though the Reply wasn't entered because it also contained claim amendments. I'll discuss these claim construction issues in a future post.

Finally, it's worth mentioning that when the Examiner added the § 103 rejection for the first time, he also maintained the anticipation rejection – while at the same time acknowledging that the reference didn't describe a single composition with all the components "in one place." The  Examiner explained anticipation as follows:

[B]efore the contents of the container with oxidizing agent is mixed with the surfactant solution, the solution clearly lacks an oxidizing agent. This is the rationale because of which Examiner concludes Durmowicz et al. does teach a solution that lacks an oxidizing agent.

The Applicant traversed the § 102 rejection on the basis of the Examiner's admission, and the Examiner then withdrew it, before the Applicant appealed.

Tips for arguing Unexpected Results Arguments to overcome obviousness

MPEP Sections 716 and 2145 provide a good primer on arguing unexpected results in order to overcome obviousness. This post will dig into the topic in a little more detail, by discussing some PTAB appeal decisions where the Applicant made an unexpected results argument.

The case law of obviousness requires that assertions of unexpected results be supported by evidence. Attorney argument alone is not sufficient. Improper use of attorney argument to show unexpected results was at play in Ex parte Wong and Ex parte Roberge.

The claims in Ex parte Wong (PTAB 2013) were directed to an orthodontic adhesive, and recited a specific ratio of working time to curing time. The Applicant argued that the properties of the adhesive were unexpected. The Applicant supported this argument by presenting in the arguments section of the Appeal Brief, data from testing of the prior art composition. The Board dismissed the test data on two grounds. First, the data wasn't entered into the record before appeal, as required by the rules governing appeal. Second, the data was presented as unsubstantiated argument of counsel, when evidence was required.


The claims in Ex parte Roberge (PTAB 2014) were directed to an engine fan nozzle with a protective coating. The Applicant explained that ice build-up on the nozzle reduced the nozzle's effective area,
which in turn affected efficiency of the engine. The protective coating prevented this reduction in nozzle area and in engine efficiency. Furthermore, a POSITA wouldn't expect the Examiner's combination to achieve this result, since in the reference the coating was used on an airfoil, where ice build-up affects aerodynamics of the airfoil rather than engine efficiency. However, this discussion appeared only in the Appeal Brief, without citation to the specification or to a declaration. The Board was not persuaded because the Applicant had "cited no specific evidence in support of their contention of unexpected results to rebut [the Examiner's] prima facie case." The Board cited In re Lindner, 457 F.2d 506, 508 (CCPA 1972).

Evidence of unexpected results can be presented in an expert declaration or in the specification, but naked assertions are not enough. Ex parte Bailey and Ex parte Eriksson show that an explanation must be provided as to why the results are unexpected.

In Ex parte Bailey (PTAB 2014), the application was directed to an "undercarriage brake light system." The Specification noted an advantage of the claimed 360o configuration:

It illuminates under the entire undercarriage providing extra visual safety to drivers when you are braking. Since visibility is 360 degrees, drivers following your vehicle and also those at intersections and those merging or yielding are alerted to your braking.

The Applicant referred to this advantage when arguing unexpected results. But the Board noted two deficiencies in the argument:

Appellant has not presented corroborating evidence that confirmation of braking to an approached vehicle constitutes an unexpected advantage. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (“One way … to rebut a prima facie case of obviousness is … to show … some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected.” (Citation omitted)). Rather, Appellant cursorily mentions the advantage within the Specification, which is insufficient. See In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“[C]onclusory statements in the specification, unsupported by objective evidence, are insufficient to establish unexpected results.” (Citation omitted)).
(Emphasis in original.)

The application in Ex parte Eriksson (PTAB 2014) was directed to a stabilizing device for a manufacturing process. The claims included opposing electromagnetic stabilizers and opposing sensors. The specification briefly mentioned an advantage of this feature :

The stabilizing device, which is arranged to stabilize the position of the object with respect to the predetermined transport path, comprises at least one first pair of electromagnetic stabilizing members arranged adjacent to the air-knives and on each side of the strip. Since the air-knives and the electromagnetic stabilizing members are arranged adjacent to each other to reduce the movement of the object perpendicular to the direction of transport, an optimal damping of the vibrations is achieved at the region between the air-knives.

The obviousness rejection modified a stabilizer in the primary reference to use opposing sensors and opposing electromagnetics as taught in the secondary reference. The Applicant argued that, when combined, the differences between the two references would change their respective functions and thus would not produce predictable results. The Applicant concluded this argument by mentioning the above advantage that was briefly discussed in the specification:

The [claimed] arrangement provides superior stabilization, as described in the specification at p. 5, ll. 9-14. By applying magnetic force to both sides of the magnetic strip, the claimed invention can help to ensure that the metallic strip follows the predetermined transport path.

The Board found that the assertion of superior stabilization was "not supported by factual evidence". The Board cited to several Federal Circuit cases: In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“[I]t is well settled that unexpected results must be established by factual evidence.”); In re Hoch, 428 F.2d 1341, 1343-44 (CCPA 1970) (evidence must provide an actual comparison of the properties of the claimed invention with the disclosure of the reference); cf., e.g., In re Baxter Travenol Labs., 952 F.2d 388 (Fed. Cir. 1991).

An explanation of how the claimed feature leads to the result, plus characterization as unexpected, is still not enough. The Applicant must also convince the Board of the unexpectedness. This is illustrated by Ex parte Grispo and Ex parte van der Pol.

The Applicant in Ex parte Grispo (PTAB 2013) argued that the result was unexpected, but the Board saw the result produced by the claims to be the same as the result produced by the reference. The application was directed to a process of purging a dual head injector when injecting contrast during a diagnostic imaging procedure. One feature contested on appeal was the ordering of steps to advance the contrast plunger and the saline plunger. The Examiner did not rely on a particular reference to teach the claimed ordering, but instead took the position that "changes in sequence are prima facie obvious in the absence of new or unexpected results" (citing MPEP 2144.04(IV)(C)).

The Applicant argued that this rationale was improper for a critical limitation and explained its criticality: the claimed order "reduces the waste of relatively expensive contrast, purges air prior to injection, and does so in ... a simple two-step process." However, the Examiner found that one of the references actually “discloses the 'exact reasoning and criticality' for the air purging steps.” The Board agreed, and said the unexpected results argument failed because the Applicant did not provide "persuasive reasoning or credible evidence that the claimed invention achieves any advantage over, or even any result different from, [the Emig reference]." (Emphasis added.) The Board cited In re Hampel, 162 F.2d 483, 485 (CCPA 1947).

The Applicant in Ex parte van der Pol (PTAB 2014) argued the result was unexpected, but the Board viewed the result as inherent. The Examiner modified the UV lighting system of the primary reference to use the non-linear bulb shape from the secondary reference. The Applicant argued that the inventor had recognized advantages of the non-linear shape: reducing resistance of the air flow around the bulb (citing to the spec). The Board dismissed this argument because the Applicant didn't show that "these advantages would have been unexpected by one of ordinary skill in the art, rather than just inherent when using a spherical bulb for its known and conventional use as a UV germicidal lamp." The Board cited In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995).
   
Sometimes the Board isn't persuaded because the unexpected results arguments and evidence are contradicted by the explicit disclosure of the references. The application in Ex parte Strebelle (PTAB 2011) was directed to a chemical process for regenerating a catalyst that was used in a hydrogenation reaction. The claimed regeneration process included heating one of six listed Group VIII metals with oxygen at a specific temperature range. The primary reference in the obviousness rejection, Vollheim, disclosed the hydrogenation reaction recited in the process claim, and "mentioned regeneration is possible but without explicitly stating a method." A secondary reference, Welty, taught "catalysts of similar makeup (Group VIII elements) for use in "similar processes (cracking and reforming)", plus the claimed method of regeneration: heating the catalyst in the presence of oxygen at the claimed temperature range.

On appeal, the Applicant argued that the discovery of catalyst regeneration under the claimed conditions was unexpected. The Applicant's own specification had acknowledged the "possibility in theory of regenerating" the catalyst mentioned in Vollheim, but explained that others had found that heavy metal contamination renders regeneration "fruitless" (citing a journal article co-authored by Vollheim and Muller). The Applicant supported the unexpected results argument with an expert declaration that characterized the claimed catalyst regeneration as "completely surprising" in view of the "clear belief by other that it was not possible to regenerate such catalysts." In the Answer, the Examiner noted that "a prior art reference must be considered in its entirety," and Vollheim "clearly acknowledges that regeneration is possible. The Board was not persuaded by the unexpected results argument. The Board found that the Muller/Vollheim article did not explain the process and results in enough detail to support a finding that catalyst regeneration was fruitless, and thus did not credit the Applicant's characterization of the claimed catalyst regeneration as unexpected. 

PTAB reverses § 103 when Examiner's combination adds feature already present in primary reference

Takeaway: An Applicant appealed claims to a zoned HVAC system. The Examiner rejected as obvious using a combination of two references, Kolk and Petite. The Examiner stated that Kolk did not disclose a remote temperature control function, and asserted that Petite disclosed this feature as  "[an] additional function from remote location beside the utility." "Additional function" then served as the rationale for combining Kolk's HVAC system with Petite's remote temperature control. The Board reversed after finding that Kolk did provide remote temperature regulation. The Board reasoned that since Kolk already provided this feature, a POSITA would not view Petite's remote control as a reason for modification. (Ex parte Tessler, PTAB 2014.)

Details:

Ex parte Tessler
Appeal 2012-006616; Appl. No. 12/700,643; l 
Decided:  October 2, 2014

The application on appeal was directed to a HVAC system with a wireless thermostat. "[A] remote source communicates with a wireless controller [to control energy usage] and sends signals to the wireless controller via a gateway located near or, in one implementation, forming part of the wireless controller." The originally filed claims generally captured the interaction between the local gateway, the wireless transceiver, and the thermostat controller which allowed the user to changecontrol parameter(s) from a remote location.
 
The first Office Action included multiple rejections of the independent claims, including a § 103 rejection using Kolk and Petite. Kolk disclosed a temperature regulating system utilizing energy price information, and the Examiner relied on Kolk for most of the claim elements. The Examiner noted that Kolk disclosed a module that used telephone lines or the Internet to communicate with an outside source, but did not disclose gateway communication with a wireless receiver. The Examiner asserted that Petite disclosed this feature "as an alternative suitable communication." Also, while Kolk did not disclose a remote temperature control function, the Examiner asserted that Petite disclosed this as "additional function from remote location beside the utility."

This "alternative suitable communication" and "additional function" then served as the Examiner's specific rationale for combining. The rejection also mentioned the "predictable results" rationale from KSR. Finally, the Examiner asserted that it was "well known in the art that a HVAC with single zone and single thermostat can be extended to a HVAC system with multiple zones and multiple thermostats," and cited several references as evidence of this finding.

The Applicant made various amendments resulting in independent claims of different scope. Independent claims 1 and 19 were amended so that control of the thermostat was "separate from any utility based control" and the wireless transceiver was located in a housing assembly. Independent claim 13 was amended differently, to explicitly recite dual zones, thermostats, and transceivers. Claim 13 then read:

     13. A zoned HVAC system having two or more zones, comprising:
     a local gateway;
     a first thermostat for controlling a first zone of the zoned HVAC system, the first thermostat having:
          a first wireless transceiver for wirelessly communicating  with the local gateway of the building or other structure, wherein the local gateway is located remotely from the HVAC controller;
          a first controller coupled to the first wireless transceiver ... [and] configured to allow a user to change one or more of the first control parameters from a remote location on the communications network via the local gateway and the first wireless transceiver [of the first controller] ;
     a second thermostat for controlling a second zone of the zoned HVAC system, the second thermostat having:
          a second wireless transceiver ...
          a second controller... configured to allow a user to change one or more of the second control parameter from a remote location on the communications network via the local gateway and the second wireless transceiver [of the second controller].

In addressing the § 103 Kolk / Petite rejection, the Applicant argued each independent claim separately but focused mostly on independent claim 1. For claim 13, the Applicant argued that the combination did not disclose "many elements of claim 13 including, for example, a zoned HVAC system having two or more zones comprising [first and second thermostats for controlling respective zones." (Emphasis in original.) Despite this assertion, Applicant did not specifically explain how claim 13 distinguished over the combination made by the Examiner.

In a Final Office Action, the Examiner maintained the § 103 Kolk / Petite rejection. As an additional justification for the conclusion of obviousness, the Examiner also added these additional statements about Petite:

Petite et al. disclose remote monitoring and control device can either for utility company (C-1, L-60 to C-2, L-6) or environmental or safety systems (C-2, L-7-14) in the same field of endeavor for the purpose of providing multiple usages of the apparatus. Petite et al. also disclose the transceivers are electrically interfaced with the thermostat (C-5, L-58-64). 

The Applicant filed an After Final Response and argued:

[C]laim 13 recites, for example, a local gateway, and first and second thermostats each having a respective first or second wireless transceiver for wirelessly communicating with the local gateway. While multiple zone HVAC systems may have been known, Applicants submit that the recited first and second thermostats, each capable of communicating with the same local gateway, particularly in combination with the other elements of claim 13, cannot fairly be considered to be taught, discloses or suggested by Kolk et al. or Petite et al.
(Emphasis in original.)

The Examiner issued an Advisory Action simply restating the KSR predictable results rationale. The Applicant appealed, filing a Pre-Appeal Brief Request and then an Appeal Brief. Both handled the § 103 Kolk and Petite rejection by repeating earlier arguments. 

The Examiner's Answer maintained all rejections and responded to several Applicant arguments. With respect to claim 13, the Examiner referred to the three patents cited earlier as evidence that "multi-zones associated with multi-thermostats is well known in the art." The Examiner then explained how Petite disclosed local gateway communication

Referring to Fig.2, Petite discloses the same one local gateway 220 communicates with sensor  / actuator / transceiver 222 and sensor / actuator/transceiver  224. The sensor / actuator  can be thermostat (C-5, L-63). Therefore, one local gateway 220 is able to communicate with multiple thermostats 222 and 224 and the rejection is valid.

The Applicant filed a Reply Brief and addressed claim 13 as follows:

... Kolk et al. and Petite et al.,even when combined with [evidentiary reference] Liebl et al., cannot be fairly said to teach first and second thermostats as recited in claim 13. The Examiner has not provided any articulated reasoning with rational underpinning [as required by KSR] to support the conclusion of obviousness. The Examiner appears to be asserting that one could modify Kolk et al. to achieve the claimed method, which is an improper ground for obviousness. The Court in KSR further stated: "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." The Examiner has not provided any objective reason to modify Kolk et al. in the manner recited in claim 13, other than relying on the instant specification, which is clear error.

On appeal, the Board reversed the obviousness rejection of Kolk in view of Petite, finding that the Examiner's rationale for combining was deficient.

     We find that the Examiner’s stated reasoning, “so as to have an alternative suitable communication and remote HVAC control as additional function from remote location beside for the utility,” is based on the use of impermissible hindsight reconstruction in view of the Appellants’ disclosure. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996).
     At the outset, we note that for the reasons set forth supra, the Examiner does not establish that the remote user in Petite is not the utility company. [The Examiner instead relies on Petite's remote use by "environmental or safety systems."] Furthermore, we note that Kolk’s system is already remotely controlled. See Kolk, Fig. 1. We thus find the Examiner’s rejection insufficient to explain what in the prior art would have prompted a person having ordinary skill in the art to include Petite’s remote system into Kolk’s remote temperature regulating system. The Examiner has not provided any findings that either Kolk or Petite recognized a problem with the remote technique used in Kolk. As such, absent hindsight, we fail to see why one having ordinary skill in the art would have been led by the teachings of Petite to modify the temperature remote system of Kolk in the manner claimed.

My two cents: I picked this decision because it illustrates a good way to attack an obviousness rejection: advantageous function X provided by reference B is not a proper reason to combine if reference A already has advantageous function X. Here, the Board reasoned that since Kolk already allowed remote temperature regulation, a POSITA would not view Petite's remote control as a reason for modification.

The Applicant didn't really make this specific argument. Yeah, the Applicant argued the Examiner didn't provide an "objective" reason to combine, but that was made in the context of the Examiner's "multi-zone HVACs are well-known" statement. The Applicant essentially argued that "could modify to add the feature" is not a proper § 103 rationale. And that wasn't the rationale used by the Examiner.

I'm actually surprised by the reversal here, since the Examiner did include KSR's "predictable results" as a rationale. (An alternative one? As a supplemental explanation?). The Board usually summarily affirms that rationale with nothing more than a bit of hand-waving as to the factual findings required for this rationale. Here, the Board reversed the § 103 based on the explicit motivation from Petite, and appeared to ignore the "predictable results" rationale.

Finally, I note that the Examiner's factually findings about one of the features at issue -- remote temperature regulation were actually inconsistent. In discussing Kolk, the Examiner explicitly found "thermostat 26 including a communication module communicating with a remotely located outside source 40." Which is arguably a teaching of remote temperature regulation. But then the Examiner proceeded to disavow this teaching, finding that "Kolk does not disclose ... remote temperature control function." The Board appeared to make their own finding about this feature, and didn't comment about the Examiner's inconsistent findings.

Here's an interesting question: since already Kolko disclosed the feature at issue, there really isn't a need to combine with Petite to obtain this feature. The Board took this and reasoned that the Examiner's rationale was therefore improper. But why doesn't it make the rationale irrelevant, as opposed to improper? Sure, you need Petite for the other features missing from Kolk, and you need a modification rationale for each of those features. But not for the remote temperature regulation feature found in Kolk, right?

Board finds non-analogous art when Examiner mistakes advantage in reference with problem solved by reference

Takeaway: In appealing an obviousness rejection of a semiconductor device, the Applicant argued that one of the references was non-analogous art. The Examiner asserted that the anti-fogging film disclosed in the reference had the same purpose – excellent durability and wear resistance – as the claimed invention, and was therefore analogous. The Board found that the Examiner had erred in characterizing the problems. The Board found that the problem solved by the invention was "protecting a metal layer of a semiconductor from corrosion with an aluminum complex oxide layer". The Board found that reference solved a different problem: fogging of window glass, mirrors, and lens. The Board therefore reversed the § 103 rejection. (Ex parte Seo, PTAB 2013.)

Details:
Ex parte Seo
Appeal 2011-005820; Appl. No. 11/378,799; Tech Center 2800
Decided:  October 11, 2013

The application on appeal was directed to a semiconductor device for an LCD display. The independent claim on appeal read:

     1. A display device comprising:
     a substrate;
     a metal layer formed on the substrate and including a top surface and a side surface, wherein the metal layer comprises aluminum or an aluminum alloy;
     an insulating layer covering the metal layer; and
     an aluminum complex oxide layer disposed between the top and side surfaces of the metal layer and the insulating layer, wherein the aluminum complex oxide layer is formed by applying to the metal layer a coating solution that comprises at least one selected from the group consisting of zirconium, tungsten, chromium and molybdenum.

The Examiner rejected the originally filed independent claim 1 as obvious over Doushita in view of Applicant Admitted Prior Art. The Examiner relied on Doushita for the aluminum complex oxide layer element (location and composition), and AAPA for everything else. As a reason for combining, the Examiner asserted that Doushita's coating would provide "the structure of the admitted prior art with 'excellent durability, wear resistance, anti-fogging property and anti-fogging sustainability property'. "

During prosecution, the Applicant made various amendments, but the Examiner maintained the obviousness rejection using Doushita and AAPA. The Applicant also made one argument: that Doushita was non-analogous art. As a preliminary matter, the Applicant noted that Doushita and the invention were in different classifications: Class 428 "Stock material or miscellaneous articles" as compared to Class 438 "Semiconductor device manufacturing: process." Moving on to the test for analogous art, the Applicant first discussed the respective fields of invention. Doushita disclosed an anti-fogging article used for "buildings, vehicles, optical components, [etc.]," but this list did not include a semiconductor device (Applicant's field). The Applicant then discussed the purpose or problem solved: for Doushita, anti-fogging, with durability and wear resistance as secondary characteristics; for the Applicant, corrosion of aluminum, with secondary characteristics of electrical resistance, electrical conductivity, and adhesive strength. Therefore, "Doushita is not reasonably pertinent to the specific problem with which the Applicants were involved."

During prosecution, the Examiner did not directly respond to all of the Applicant's non-analogous art arguments. The Examiner did clarify that Doushita was "not used for the claimed structure but for the substitution of the conventional aluminum oxide layer formed on the line." The Examiner also explained that several of Doushita's applications for the anti-fog coating (i.e., "optical component," "medical equipment," "mirror," "lens") amounted to an application for semiconductor devices.
 
After several rounds of prosecution (including an RCE), the Applicant appealed. In the Appeal Brief, the Applicant reiterated the previously made non-analogous art argument, concluding with: 

Applicants fail to understand how the problem of anti-fogging of window glass, mirrors, and lens is reasonably pertinent to the problem of protecting a metal layer 212 of a semiconductor from corrosion with an aluminum complex oxide layer 213.

 The Applicant separately argued that the Examiner's rationale for combining was insufficient:

     Doushita simply discloses an aluminum oxide used as an anti-fogging article. Nowhere does Doushita disclose the structural relationship of the aluminum oxide layer relative to any other layer(s). Doushita fails to disclose the aluminum complex oxide layer is disposed between the top and side surfaces of the metal layer and the insulating layer. As such, without more structure specifics, Applicants submit the complex oxide of Doushita is functionally and structurally different from Applicants' aluminum complex oxide layer used to prevent a corrosion of the metal layer.
     Therefore, there is no suggestion to combine AAPA and Doushita with each other so as to obtain the technical features of Applicants' claimed subject matter.

Notably, the Applicant did not argue that the combination failed to disclose the claimed limitations.

The Examiner's Answer include (for the first time) a specific response to the non-analogous art argument. The Examiner asserted that Doushita's teaching of an aluminum complex oxide layer with "excellent durability and wear resistance" was "the same purpose as the claimed invention" and was therefore "reasonably pertinent and has enough motivation to be considered." Addressing Applicant's argument about classifications, the Examiner had "considered or cross referenced" the "miscellaneous articles" referred to in the title of Class 428. "Further, 'optical component' is a semiconductor device; and  Class 438 'Semiconductor device manufacturing: Process' deals with this device formation."

The Board  reversed the obviousness rejection. The Board first explained that the field of endeavor was determined by looking at "explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” (In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). The Board then characterized the problem solved by the reference (fogging of window glass, mirrors, and lens) and the problem addressed by the claimed invention (protecting a metal layer of a semiconductor from corrosion with an aluminum complex oxide layer).

The Board concluded that the anti-fogging properties of Doushita’s film "would not have logically attracted the attention of an artisan possessing knowledge of Appellants’ Admitted Prior Art." Despite Doushita's mention of "optical components" as a use for the disclosed anti-fogging article, the Board found that the anti-fogging properties "would have little utility on a semiconductor device."

As an independent basis for reversal, the Board agreed with the Applicant's second argument that the Examiner's rationale for combining was insufficient. Although Daushita taught the use of aluminum oxide as a coating and listed various advantageous properties of the coating, Daushita lacked the structural details of the oxide that were recited in claim 1. The Board agreed that "without more structure specifics, ... the complex oxide of Doushita is functionally and structurally different from Applicants' aluminum complex oxide layer used to prevent a corrosion of the metal layer."
My two cents: An important part of analogous art analysis is framing the problem. Here, the Examiner confused an advantage disclosed in the reference for a problem solved by the reference. Which seems to be related to focus. It's common for a reference to have a laundry list of advantages, Here, that list did include an advantage – wear-resistance – that overlapped with an advantage of the invention – corrosion protection.  But as suggested by the title ("Non-fogging article and process for the production thereof"), the problem solved by the reference was not susceptibility to wear, but fogging. Kudos to the Applicant for honing in on this winning argument.

Board affirms obviousness and refers to Applicant specification for advantages of adding secondary reference

Takeaway: The Applicant appealed an obviousness rejection of claims directed to a process of manufacturing stents. Though the Final Office Action relied on advantages taught by the secondary reference, the Advisory Action also mentioned advantages disclosed in the Applicant's specification. The Appeal Brief argued that these Applicant-known advantages actually showed that the secondary reference was non-analogous art. The Board affirmed the obviousness rejection. Though the Decision mentioned advantages taken from the secondary reference, the Board also appeared to impermissibly rely on the Applicant-known advantages as a reason to combine. (Ex parte Sciver, PTAB 2014.)

Details:

Ex parte Sciver
Appeal 2012011728; Appl. No. 12/748,271; Tech. Center 1700
Decided:  October 31, 2014

The application was directed to systems methods for coating a stent with a drug.

Board affirms obviousness when Applicant misunderstands Examiner's combination

Understanding the Examiner's position is key to advancing prosecution. Before appeal, it's best that the Applicant understands what the Examiner is saying, and that the Examiner understands what the Applicant is saying. Certainly a misunderstanding was at the root of the appeal of an obviousness rejection in Ex Parte Sudhardja. Sometimes the Examiner doesn't explain clearly, sometimes the Applicant just doesn't get it, and sometimes both forces are at work. What happened here?

Ex Parte Sudhardja
Appeal 2010-004119; Application No. 11/196,651; Tech. Center 2100
Decided  November 5, 2012

The application on appeal was directed to a "self-repairing" graphics processing unit (GPU) that included redundancy features. The application was a Continuation-In-Part. The parent application described redundant functional units in an integrated circuit; the CIP added GPU-specific details.

Is it circular reasoning when an obviousness rejection says the reason for adding a feature is to get that feature?

Takeaway: Sometimes the Examiner asserts that the reason to add a feature from a secondary reference is to obtain that very same feature. Is this circular reasoning and thus an improper rationale for obviousness? Today's post highlights a few cases where the PTAB said this logic was insufficient to support a conclusion of obviousness.

Discussion: In many obviousness rejections, the Examiner's rationale for combining amounts to "add feature X from reference B to reference A in order to get feature X." Yet obtaining the added feature X is only a reason to combine if having X provides an undisputed advantage, right? Otherwise, it's If the mere presence of X doesn't provide such an advantage, then the Examiner still hasn't shown why a POSITA would combine A and B.

In today's post, I'll discuss a few cases where the Examiner used this sort of reasoning and the Board reversed. Now, I'm not saying that this argument is a winner. In many of the decisions that I review, I end up convinced that X does convey an undisputed advantage, and thus does serve as a proper reason to combine. But if you have a case where you think "add X to get X" doesn't adequately motivate a POSITA to combine the references, you may find the Board's reasoning in these three decisions to be helpful in framing your argument.

The claim in Ex parte Banna (PTAB 2014) involved a multi-stage receiver including a delay controller. The claim limitation at issue required the controller to "select the delay value for the delay block by calculating a processing delay associated with the generation of the one or more processing parameters." The Applicant appealed an obviousness rejection that used a single reference. The Examiner acknowledged that the single reference (Sendyk) did not teach calculating a processing delay, but asserted that it would have been obvious “to modify the invention of Sendyk, and to obtain the time difference between the two delay control signals to have the delay value.” (Emphasis added.) The Applicant argued that “the Examiner has failed to identify any valid reason to modify Sendyk.” (Emphasis in original.)

The Board agreed that the Examiner did not provide a reason with rational underpinning, and reversed the rejection. The Board cited In re Chaganti, 2014, WL 274514, *4 (Fed. Cir. 2014) (“It is not enough to say that . . . to do so would ‘have been obvious to one of ordinary skill.’ Such circular reasoning is not sufficient–more is needed to sustain an obviousness rejection.")

In Ex parte Foxenland (PTAB 2013), the claim at issue related to ordering a call list of party identifiers (i.e., phone numbers) based on call frequency, where two or more communication identifiers correspond to a single party identifier. More specifically, the claim required that "the call frequency information for the single party identifier includes the call activity related to each of the at least two of the plurality of communication identifiers." The Examiner relied on Kreitzer's arrangement of a call list in order of call frequency based on communication identifiers, and Levy's use of multiple phone numbers associated with a single party. As a reason for incorporating Levy into Kreitzer, the Examiner offered "for the purpose of managing a plurality of communication identifiers that correspond to a single party identifier by storing these data in the communication terminal."

The Board reversed the obviousness rejection. The Board found that the Examiner had concluded obviousness without giving a "specific reason why the ordinary artisan would have had any incentive to incorporate multiple different numbers associated with a single individual as taught by Levy into the hotlist of Kreitzer." (Emphasis added.) Thus, although the Examiner had shown that each claimed feature was known, he did not provide a sufficient reason for combining them. 

The reexamination appeal LG Electronics v Whirpool (PTAB 2013) involved ice dispensing in a bottom mount refrigerator, which purportedly "presented a unique challenge because the freezer compartment is located lower than desired for an ice dispensing location." The Board framed the obviousness issue as whether the Examiner provided a sufficient reason to "incorporate both an ice dispenser and a separate door in the same ice compartment" as required by the claim. 

The Examiner combined a primary reference showing a door providing access into a refrigerator ice making/storage compartment with a secondary reference showing a refrigerator ice dispenser. The rejection used the "predictable result" rationale, asserting that "such a combination would apply known features, such as an ice compartment door, to achieve a predictable result of providing a user access to the ice in the ice compartment." The Board reversed. The Board assumed that "such a combination would apply known features to achieve a predictable result" – but this is true only after the decision is made to combine these features. The rejection failed because the Examiner did not explain "why one would have chosen to combine both a prior art access door and a dispenser in a single refrigerator in the first place." (Emphasis in original.)

Losing obviousness arguments: no Graham factors, no TSM, no articulated reasoning

Summary: When fighting an obviousness rejection, some Applicants argue the "formalities" of the rejection instead of, or in addition to, the merits of the rejection. The argument most readily identifiable as aimed at formalities and avoiding the merits is the argument that the Examiner failed to comply with Graham v. Deere, which requires an obviousness analysis to include specific factual findings. Another common argument is that the Examiner failed to provide "articulated reasoning with some rational underpinning." If offered without further explanation that deals with the merits of the rejection, this conclusory argument can be viewed as merely arguing the formalities. Finally, another common argument against obviousness is that the references do not include a suggestion or motivation to combine. Once again, if offered without explanation, I consider this a formalities argument. The real problem with this last argument, however, is that's it's simply wrong: KSR makes it clear that the rationale for combining does not have to come from the references themselves.

The cases covered in today's post show that the PTAB isn't easily persuaded by any of these arguments. The Board usually finds that the Examiner, in laying out the rejection, implicitly made the underlying factual findings required by Graham. This strongly suggests that there is no requirement for the Examiner to specifically refer to them as Graham factors. The Board also usually finds that the Examiner did "articulate" a rationale for combining references and that the rationale does have a "rational underpinning." Finally, even if the Examiner relies on a specific statement in a reference as a rationale, if there is anything at all in the record that suggests an alternative rationale (substitution, predictable results, etc.) the Board will often affirm.

Details:  

Ex parte Foster (PTAB 2010) illustrates a typical "Graham factors" argument against obviousness. On appeal, the Applicant argued that "[t]he Office Action must make explicit an analysis of the factual inquiries set out in Graham" and that the rejection was in error because "the Office Action does not even mention the factual inquiries set forth in Graham." 

The Board was not persuaded, and explained why:

The Examiner found that either Li or Wang discloses all the limitations of claim 2 except a flat heat pipe, and that Quisenberry discloses a flat heat pipe. Ans. 5-6. As such, the Examiner made findings as to the scope and content of the prior art and differences between the prior art and the claimed invention under Graham. Though the Examiner did not make a specific finding regarding the level of skill in the art, Appellants have not argued that the proposed modification was beyond the level of skill in the art (Br. passim), and we consider the prior art to be reflective of the level of skill in the art. Against this background, the Examiner determined the obviousness of claim 2.4 Ans. 6. Hence, contrary to Appellants’ assertion, the Examiner analyzed claim 2 in light of the factual inquiries set forth in Graham.

In Ex parte Holloway (PTAB 2011), the Board tore apart the Applicant's Graham factors argument, by pointing to specific statements in the Examiner's Answer that corresponded to Graham factors. The obviousness rejection was fairly typical, consisting of an assertion that the primary reference disclosed a particular element, followed by other assertions about how teachings in the remaining references related to other claim elements. In explaining the rationale for combining, the Examiner made this statement:

Once it was known to provide such markings, the particular information one chooses to convey by using markings is seen to have been an obvious matter of choice. The purpose of markings or indicia is to convey information. It is not seen that patentability can be predicated on the type of information one chooses to convey through markings or indicia; especially when, as shown by the art taken as a whole, the information was known and thus conventional.
(Emphasis added.)

In the Reply Brief, the Applicant characterized the statement quoted above as one showing that the Examiner used his own subjective standard, rather than the objective analysis required by Graham.

The Board disagreed, and found that the Examiner performed a proper obviousness analysis.

     Indeed, the Examiner assessed the scope of the admitted and applied prior art, finding that Paravano and Liger [disclose] containers having markings which respectively represent the volume of alcoholic beverage ... dispensed as well as the alcohol content of that volume. Ans. 4-5. The Examiner further finds that each of Velho, Davis, Prieto,Manaka, Dor, Rhee, Pauli, and Christiaens [disclose] that it was known in the art to mark containers to convey information with respect to ... the character of the dispensed volume with respect to alcoholic beverages and other ingestible compositions. Ans. 5-6. ... It is apparent that the Examiner further factually determined the difference between ... representative claim 1, and the level of ordinary skill in the art as reflected in the admitted and applied prior art. Ans. 4-6.
     Thus, the Examiner applied the Graham factors in reaching the determination that it would have been obvious to one of ordinary skill in the art to mark an alcoholic beverage container to indicate the volume thereof which represents a “standard drink,” and thus, the number of drinks based on that “standard” which remain in the container as well as the number of such “standard” drinks dispensed to a consumer. Ans. 6-7; see also Ans. 7-8.

Ex parte Brown (PTAB 2009) is another case illustrating a losing Graham factors argument. Here's the Board summarizing the Applicant's argument:

Appellants also contend that … the Examiner fails to address "all of the Graham factors to establish the required background for an obviousness rejection" and also "fails to apply all four Graham factors to establish the necessary background elements for determining obviousness" (App.Br. 14); [and] “In the complete absence of any mention or consideration of the Graham factors, the Final Office Action cannot support an obviousness rejection." (App. Br. 15)

And here's the Board explaining how the rejection did indeed comply with Graham:

In the instant case, we find that the Examiner does use the Graham factors to ascertain the scope of Bottom such that Bottom does not explicitly disclose a BIOS program in each server (Ans. 12-13). We also find that the Examiner ascertains the scope of AAPA and the difference between AAPA and the claimed subject matter of the present invention, i.e., "BIOS is well known to persons of skill in the design and use of information handling systems of the general types here described" and a similar BIOS program is employed in the present invention (Ans. 13, FF7). We further find that the Examiner resolves the level of skill in the art such that it would have been obvious to one having ordinary skill in the art at the time the invention was made to combine the teaching of the BIOS in AAPA into the server of Bottom to detect and signal occurrences of events affecting the respective server since the BIOS was conventionally used to test hardware at startup, to start an operating system, and to support data transfer among hardware devices (Ans. 13).

The obviousness rejection in Ex parte Slovisky (PTAB 2011) relied on a single reference in view of Office Notice that "it was known in the art to angle injection passages that feed the gas path." The Examiner even provided an additional reference as evidence of angled injection passages. The Applicant argued that the Examiner's reasoning was conclusory and thus failed to comply with KSR or any of the obviousness rationales listed in the MPEP.

The Board said this argument missed the point:

In arguing that the Examiner's conclusion of obviousness is "conclusory," Appellants do not particularly set forth which factual findings they believe the Examiner erred in making or why. Appeal Br. 15-16. While Appellants argue that the Examiner has not made factual findings with respect to the claimed angles (see Issue lb), the Examiner's analysis is not premised on a finding that prior art discloses the claimed angles but rather a conclusion that the prior art disclosures render the claimed angles obvious. "[W]hile an analysis of obviousness always depends on evidence . . . it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference." Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). As such, the proper inquiry is whether the Examiner's conclusion of obviousness is reasonable and based on rational underpinning, not whether the Examiner's rejection fits within any of the enumerated rationales in the Manual of Patenting Examining Procedure (MPEP) as argued by Appellants (Appeal Br. 16-17). See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.") (cited with approval in KSR, 550 U.S. at 418) (rejecting rigid rules that limit the obviousness inquiry). Appellants' arguments with respect to the rationales not used by the Examiner (Appeal Br. 16-17) are not persuasive because they do not tend to show error in the Examiner's articulated rejection. 

Finally, Ex parte Rothschild (PTAB 2012) is a reminder from the Board that strict adherence to the Teaching, Suggestion, Motivation (TSM) test is not required under KSR:

Appellant argues that (1) there is “no teaching, suggestion, or motivation in either Walker or Steeg to combine the references” ... [T]he Examiner did not apply the “teaching, suggestion, or motivation” test; rather, the Examiner applied the Adams test of simple substitution of one known element for another to yield no more than a predictable result (Ans. 4); see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing U.S. v. Adams, 383 U.S. 39, 40 (1966) for this proposition).

Conclusion: While it can be challenging to fight an obviousness rejection that is sparse or hard to understand, Applicants are more successful when addressing the merits of the rejection and rebutting the Examiner's findings and/or rationale, rather than attacking the rejection itself in order to avoid the merits.

Many patent prosecutors are wary of putting any more on the record than in absolutely necessary to get allowed claims. So you might be tempted to argue formalities, without reaching the merits, if you feel that the Examiner didn't fully comply with the law.

If so, you're betting the farm that the Board say that the Examiner didn't follow the rules. If the Examiner literally didn't provide a rationale for combining, the Board may indeed reverse the rejection. (See my post BPAI reverses when Examiner fails to give any reason whatsoever to combine.)

But the cases in this post show that a typical obviousness rejection – assertions about references followed by a statement of rationale – is enough for the Board to find the Examiner complied with Graham v Deere. And even a sloppy ratonale can lead to an affirmance if left unrebutted by the Applicant.

A final note: Some of the cases discussed in this post are several years old. But they're consistent with more recent cases. 

Board reveses obviousness of cardiac operation method when Examiner relies on statements in reference about suitability of device for operation

Takeaway: The Applicant appealed a claim to a "method for performing operation on a cardiac valve of a heart while the heart is beating." The Applicant argued that the operations disclosed in both references were not beating heart operations and instead were operations that required cardiopulmonary bypass. The Examiner maintained that the primary reference specifically described its perfusion catheter as being used while the heart was beating. The Board, finding that the Examiner had read too much into this teaching, reversed. The Board found that suitability of a device during beating heart operations generally was not a teaching of the claimed method step in the claimed beating heart operation. (Ex parte Lambrecht, PTAB 2012.)

Details:

Ex parte Lambrecht
Appeal 20100067805; Appl. No. 11/115,064; Tech. Center 2700
Decided: March 5, 2012

The application on appeal involved cardiac valve procedures and devices. The independent claim on appeal was a method of use for a cardiac valve:

     1. A method for performing an operation on a cardiac valve of a heart while the heart is beating, comprising the steps of:
     a) placing at least one temporary valve in a flow path of a blood vessel downstream from said cardiac valve, said temporary valve being operative to effect greater antegrade flow than retrograde flow through said vessel;
     b) placing at least one temporary filter in said flowpath downstream from said cardiac valve and within one of the ascending aortia and aortic arch of a patient, said filter being operative to restrict the passage of emboli while allowing blood to flow through said vessel; and
     c) resecting at least a portion of the cardiac valve with the temporary valve and temporary filter as positioned within said flowpath.
(Emphasis added.)

The Examiner found the claim obvious using a primary reference Macoviak for steps (a) and (b) and a secondary reference Stevens for step (c). As a motivation for adding the resecting step from Stevens to the procedur of Macoviak, the Examiner provided "in order to catch debris and avoid embolism," as taught in the second reference.

On appeal, the Applicant argued that several limitations were not disclosed by the combination, including an operation performed "while the heart is beating." The Applicant also argued that a POSITA would not look to modify the cardiac operation of the primary reference:

One of ordinary skill in the art would not look to a perfusion catheter that is used when the heart is stopped, as in Macoviak, in developing a system or method steps for performing surgery on a heart valve with the heart beating, as in the claimed invention. The perfusion catheter features of Macoviak are directed to fundamentally different types of cardiac procedures fiom operations that are to be conducted on a beating heart and that involve valve resection.

The Examiner addressed this argument in the Answer by noting that the relied-on section of the primary reference also taught that the perfusion catheter could be used in "beating heart" operations. The relied-upon section stated:

Therefore, what has been needed and heretofore unavailable, is a catheter device for standard open chest surgery and for use in minimally invasive medical procedures that is simple and relatively inexpensive. One which is capable of isolating the circulation of the arch vessels, while still allowing the heart to perform the function of perfusing the body or alternatively one that can be used in conjunction with an extracorporeal circuit. The present invention solves these problems as well as others.

The Applicant filed a Reply Brief characterizing the rejection as "an attempt to create a device that
might be usable in the claimed manner without any disclosure in either reference of the rejection of method steps." The Applicant then explained that the claimed operation was performed on a beating heart while both of the operations described in the references required a cardiopulmonary bypass. Because of this fundamental difference, the Applicant concluded that "it would not be possible to come up with the claimed method of performing an operation on a cardiac valve while the heart is beating by any combination of the Macoviak and the Stevens references."

The Board found this issue dispositive and reversed the rejection. The Board explained that Macoviak's statement about the suitability of a device during beating heart operations generally was not a teaching of a particular method step in a particular beating heart operation.

The cited disclosure addresses Macoviak’s characterization of the versatility of the disclosed devices, by virtue of their capability to be used both in procedures in which the heart continues to perfuse the body (i.e., continues to beat) and in procedures in which an extracorporeal circuit is used to perfuse the body. The text of Macoviak alluded to by the Examiner does not teach or suggest that all procedures for which the disclosed devices may be used may be performed while the heart is beating.

My two cents: This case (unlike most) does seem to be about the teachings of the reference, and the Examiner read too much into the reference. The Examiner took a teaching that a catheter device is useful during a class of cardiac operations (those performed with a beating heart) and stretched it into something it was not: disclosure of the claimed cardiac operation (operation on a cardiac valve while the heart is beating). A subtle point, and kudos to the Applicant for making a compelling argument.

If this was a device claim, the Applicant might run into problems with functional language being ignored as intended use. But this is a method claim, and this one is all about use. And the Board found that the references, alone or in combination, simply didn't teach the claimed use.

Finally, I note that nobody raised the issue of whether the phrase "while the heart is beating" – which appears in the preamble – should get patentable weight.

Board reverses obviousness when rejection failed to show the combination used "known methods"

Takeaway: The Applicant appealed an obviousness rejection of a medical infusion pump. The rejection involved combining a mechanism constrained to linear motion with a rotary gear. The Examiner's rationale for the combination: the gear was "a known structure used with shape memory wires to control the flow of gases and liquids." On appeal, the Applicant argued that this rationale was insufficient for obviousness, absent a reason to combine a linear mechanism with a rotary gear. The Applicant also attacked the Examiner's bare assertion that the linear mechanism could be modified to use a gear instead, by pointing out a number of considerations that the Examiner had not addressed, including "which elements in the linearly actuated pumping mechanism the rotating gear is to be attached to and acted upon." The Board reversed the rejection because the Examiner did not explain how the proposed combination of elements would be accomplished, and thus "falls short of showing that the proposed combination could have been done according to known methods." (Ex parte Nason, PTAB 2013.)

Details:

Ex parte Nason
Appeal 2011007641; Appl No. 11/726,330; Tech. Center 3700
Decided:  April 15, 2013

The application on appeal was titled "Shape Memory Alloy Wire Driven Positive Displacement Micropump with Pulsatile Output." A representative claim on appeal read:

     1. A method of using an apparatus having a housing to deliver a fluid medication to a user, comprising the steps of:
     subjecting a shape memory wire within the housing to a first material condition, ... ; and
     subjecting the wire to a second material condition;
     wherein the shape memory wire is operatively coupled to a gear within the housing; and
     the gear comprises teeth and is operatively coupled to a fluid pump within the housing such that when the wire produces the work stroke as a consequence of a transition between the first and second material conditions, the gear is rotated such that the fluidpump generates a fluid flow that delivers the fluid medication from the apparatus to the user.

Fig. 9A (below) shows one embodiment:

During prosecution, the Examiner rejected the independent claims as obvious.The rejection relied on the primary reference Idriss (shown below, left) for the shape memory wires (shown in blue), housing, and fluid pump. In Idriss, the wires moved a slider 3 via a magnet 41, and the slider movement allowed fluid to flow through a port in the slider 3.

Idriss	AbuJudom

The rejection then relied on a secondary reference AbuJudom (shown above, right) to show the remaining element: a gear (shown in red) coupled to the shape memory wires (shown in blue). In AbuJudom, the wires 30, 32 moved the gear 46, which opened damper 12 and allowed fluid to flow.

As a reason for combining, the Examiner asserted that AbuJudom's gear was "a known structure used with shape memory wires to control the flow of gases and liquids."

The Applicant argued that this rationale was improper because adding a gear would render Idriss' pump unsatisfactory for its intended purpose. The Applicant noted that Idriss specifically described the slider as being "constrained for essentially linear movement in the directions of the arrow 30." Idriss also taught that this linear geometry produced a pulse magnitude that was repeatable and fixed. Thus, "the introduction of a rotating gear with teeth will compromise the operability of this mechanism, namely by introducing rotational forces which will oppose, or at the very least, hinder the linear forces and elements."

The Examiner maintained the rejection in a Final Office Action which addressed the Applicant's arguments as follows:

The Examiner finds no merit to the argument that a gear is not capable of delivering a discrete and metered amount of fluid medication or a repeatable and fixed pulse, the linearity of the device is not removed, just how the linear force is applied to the slider. One of ordinary skill in the art would be perfectly capable of utilizing a gear in the above combination while maintaining all the design considerations of Idriss that make it novel.

On appeal, the Applicant argued that the rataionale of a gear being a "known structure" –  without an objective reason to combine Idriss linear mechanism with AbuJudom's rotary gear – was not sufficient to establish a prima facie case of obviousness. The Appeal Brief repeated the "unsatisfactory for intended purpose" argument, along with additional technical explanation:

Because the rotational forces that are produced by a rotating gear with teeth are incompatible with the linear forces that the Idriss' pumping mechanism uses to control its work stroke, the mechanical coupling of such a gear to the Idriss device would compromise the operability of the device unless Idriss somehow taught or suggested for example: (1) how and where a rotating gear could be attached on the linearly actuated pumping mechanism; (2) which elements in the linearly actuated pumping mechanism the rotating gear is to be attached to and acted upon; and (3) how and where the existing elements within the linearly actuated pumping mechanism are to be rearranged and/or removed in order to accommodate the introduction of a rotating gear with teeth.

The Applicant then asserted that Idriss included no such teachings.

The Examiner's Answer responded to the Applicant argument by explaining one advantage of a gear: wire movement is magnified or diminished through the use of larger or smaller gears, which in turn resulted in "greater disbursement of a smaller system (large gear) or greater precision (smaller gear)."

The Board reversed the obviousness rejection, explaining that "the mere fact that AbuJudom described a gear coupled to shape memory wires to control fluid flow is not a reason to add a gear to Idriss’ device." The Board acknowledged KSR's familiar elements/known methods/predictable results rationale. However, the Board noted that here the Examiner failed to make the required "known methods" finding, since he did not explain how the proposed combination of elements would be accomplished.

My two cents:  I don't have statistics to back this up, but I'm confident in saying that when the Board quotes KSR's familiar elements/known methods/predictable results rationale, they usually affirm. And I'm usually disappointed by the Board's handwaving rather than fact-finding about the "known  methods" piece of the analysis. So I was happy to see a reversal based on a failure to show that the combination used "known methods."

The Applicant definitely helped the Board to see this deficiency in the rejection, by making detailed technical arguments about how the features from the two references just didn't fit together very well. Now, a lot of Applicants make the pieces-don't-fit argument but fail to account for modifications that a POSITA would make in fitting them together. This usually results in a reminder from the Board that obviousness does not require one feature to be "bodily incorporated" into another.

Looks like the Applicant here put a lot of thought into how a POSITA would go about fitting the pieces together. The Applicant's technical discussion convinced me – and the Board – that the fit between the pieces was so far off that the combination did not use "known methods" to combine the pieces.