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.

PTAB reverses obviousness when Examiner's rationale amounts to results of combination rather than reason for making it

Takeaway: The Examiner rejected as obvious a claim to an electrode cooling device. As a reason to modify the primary reference to add a frame from which the electrodes were suspended, the Examiner proffered: "for the purpose of suspending the holder". When the Applicant challenged this rationale in the Appeal Brief, the Examiner elaborated by adding this statement:  "Foyn reference and Hardin reference are related to the same technical field; therefore, one skill in the art would combine these references." The Board reversed, finding the Examiner's rationale was conclusory. "At best, [the rejection] describes the results of the proposed combination, as opposed to articulating a reason for making it. [T]he fact that references relate to the same technical field does not, without more, demonstrate the obviousness of their combination." (Ex parte Borgwardt, PTAB 2014.)

Details:

Ex parte Borgwardt
Appeal 2012-009099; Appl. No. 11/990,325; Tech. Center 3700
Decided:  October 14, 2014

The technology on appeal related to a metallurgical furnace. An independent claim on appeal recited:

     14. A cooling device for electrodes of a metallurgical furnace, comprising
     a suspension frame; and
     a plurality of individual segments arranged adjacent to each other
for surrounding the electrodes and suspended from the suspension frame,
     wherein
     at least one of the plurality of individual segments is formed with at least one hinge provided at an upper edge thereof
     for pivotally suspending the at least one of the plurality of individual segments from the suspension frame.

The Applicant added claim 14 as a new independent claim in response after an anticipation rejection using Foyn of originally filed claims 1-13. When the Examiner rejected claim 14 as anticipated by Kongsgaarden and went Final, the Applicant appealed. In response to the Appeal Brief, the Examiner reopened prosecution with a Non-Final Office Action.

In that Non-Final Office Action, the Examiner rejected independent claim 14 as obvious over Foyn (previously cited) and Hardin (newly cited). The rejection also used Kongsgaarden (previously cited) as an alternative secondary reference. The Examiner relied on Foyn for the segments and hinge, and on Hardin / Kongsgaarden for segments suspended from a suspension frame. The Examiner explained the rationale for combining as follows:

It would have been obvious ... to utilize in Foyn, a suspension frame and the segments suspended from the suspension frame, as taught by Hardin or Kongsgaarden, for the purpose of suspending the holder.

The Applicant appealed and traversed several assertions about the teachings of Hardin. The Applicant also attacked the Examiner's rationale as being deficient, as follows:

There is no suggestion in either of Foyn or Hardin for combining their teachings. Nor does the Examiner present any evidence that the generally available knowledge makes the combination obvious. Further, the Examiner failed to state what advantages are achieved by combining Foyn and Hardin. 

After quoting from pre- and post-KSR Federal Circuit cases on obviousness, the Applicant concluded with:

The Examiner failed to cite any evidence that would support the finding that the combination of Foyn and Hardin would make the present invention, as defined by claim 14, obvious.

In a Response to Arguments section of the Answer, the Examiner elaborated on how Hardin disclosed the suspension frame with these quotes from Hardin:

[S]lipping clamp is provided with suspension means, including a plurality of outwardly projecting clevis bracket ... adapted to receive horizontal pivots. The lower ends of tension members are secured to the pivots ... The pivots and the tension members provide flexibility, so that the electrode can deviate appreciably from its normal vertical position, without producing excessive stresses in the electrode and the suspension device 10.

After repeating the original rationale ("[obvious to combine] for the purpose of suspending the holder"), the Examiner elaborated by adding this statement:  "Foyn reference and Hardin reference are related to the same technical field; therefore, one skill in the art would combine these references."

The Applicant filed a Reply Brief that cited to two pre-KSR cases for the proposition that obviousness required a suggestion in the prior art for modifying a reference. The Applicant then argued:

It is respectfully submitted that the Examiner failed to identify support for his conclusion that it would have been obvious to combine Foyn and Hardin or Foyn and Kongsgaarden. It is respectfully submitted that the mere fact that Foyn Hardin (and Kongsgaarden) are related to the same technical field is not a sufficient motivation. Further, the Examiner failed to indicate what advantages are achieved by such combination.

Finally, the Applicant argued that "modifying Foyn in view of Hardin or Kongsgaarden would require a substantial redesign of the Foyn structure" which defeats a prima facie case of obviousness under In re Ratti, 270 F.2d 810 (CCPA 1959). 

The Board reversed the obviousness rejection. The Board started with a discussion of relevant case law:

[I]it is not enough to simply show that the references disclose each element of a claim; in addition, it is important to identify a reason that would have prompted a person of ordinary skill in the art to combine the elements in the manner set forth in the claim. See, e.g., Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F. 3d 1296, 1303 (Fed. Cir. 2010) (citing KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (“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”)); see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

The Board then found that the Examiner's rationale for combining ("for the purpose of suspending the holder") was "conclusory." The Board elaborated as follows:

At best, it [the rejection] describes the results of the proposed combination, as opposed to articulating a reason for making it. Reply Br. 5. As Appellants correctly point out, the fact that references relate to the same technical field (Ans. 9) does not, without more, demonstrate the obviousness of their combination. The relevant technical field relates to the scope and content prong of the Graham analysis. Graham v. John Deere Co. 383 U.S. 1, 17–18 (1966). Concluding references are within the same technical field does not conclude that analysis. Rather, it forms part of the background, upon which the obviousness or nonobviousness of the subject matter must be determined. Id. As the Examiner’s rejections fail to articulate reasoning with rational underpinnings supporting the Examiner’s determination of obviousness, the Examiner’s rejections cannot be sustained. See In re Kahn, supra.

My two cents: The Examiner made it easy for the Board to reverse: a rationale that was clearly expressed as the resulting combination itself rather than a reason to make the combination in the first place. The Examiner just dug the hole deeper with his statement in the Answer "references are in same field, therefore obvious to combine."

Perhaps the Examiner had what he needed in record to make a compelling rejection? The quote from the secondary reference appeared to discuss a benefit of adding suspension ("electrode can deviate appreciably from its normal vertical position, without producing excessive stresses").

Maybe so, but the Examiner didn't clearly articulate this line of reasoning. So kudos to the Applicant for challenging the Examiner's failure to make a prima facie case. I think a lot of Applicants feel Rationale-to-Combine is always a losing argument, but it would be a real shame to leave the argument on the table under these facts.

I view Ex parte Borgwardt as another example of the circular reasoning I blogged about in 2014:

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

Nice to see the Board once again recognizing this as deficient reasoning. Though as I mentioned in that earlier post, I have seen plenty of cases with a sloppy Examiner rationale yet the Board affirms.

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 affirms obviousness after finding that melt index was recognized as result effective variable

Takeaway: The Examiner rejected as obvious various claims to a method of manufacturing foam-paperboard laminates. The Examiner used the routine optimization rationale, alleging that since melt index was a result effective variable for viscosity, the claimed melt index value was obvious. The Applicant argued that the Examiner had used hindsight because the prior art had not recognized melt index as a result effective variable. According to the Applicant, "none of the prior art of record recognized or appreciate the effects melt index have on web speed, as discovered by the inventors of the present invention." The Board affirmed the obviousness rejection after finding that melt index was recognized by the prior art to "affect viscosity, among other blend properties, and thus ability to extrude or process the blend." (Ex parte Swoboda, PTAB, 2012.)

Details:

Ex parte Swoboda
Appeal 2010012538; Appl. No. 11/454,570; Tech. Center 1700
Decided:  May 28, 2012

The application was directed to a method of manufacturing foam-paperboard laminates, such as those used in insulated beverage containers. One of the limitations argued on appeal was "providing a melted LDPE [Low Density Polyethylene] having a melt index of at least about 8.0 g/10 min."

According to the specification, the claimed melt index was unconventional in an extrusion process, "because the resulting coating would be thought to be too soft to provide an article with useful properties." However, the inventors found that using the claimed melt index in combination with other claimed processing parameters allowed an increase in extrusion speed (recited in step c of the claim) and improved the foam quality. 

The Examiner rejected the independent claims as obvious. The Examiner relied on a primary reference, Iioka, for everything except the claimed melt index, for which the Examiner relied on a secondary reference, Roox. The Examiner asserted that "melt index is a result effective variable of viscosity controlling at least ease of extrusion and is therefore subject to routine optimization."

The Applicant appealed and made several arguments. With respect to result effective variables, the Applicant argued that Roox did not recognize melt index as a result effective variable "for viscosity" as asserted by the Examiner. Instead, the Applicant argued that Roox merely taught that melt index should be "sufficiently high to permit dispersion of one component of a resin into another component of a resin." According to the Applicant:

Insofar as the record shows, the only evidence that shows melt index is a recognized, result determinative variable has been gleaned from the Applicant's own specification, which is nothing short of impermissible hindsight. Indeed, none of the prior art of record recognized or appreciate the effects melt index have on web speed, as discovered by the inventors of the present invention.

In the Answer, the Examiner further explained his position on the result effective variable:

Roox teaches that the melt index of the polymer blend may be selected from a large range (.1 to 500 for the blend (col. 2, lines 38-41 )) but does not state the given effect. However, the effect has been articulated; specifically, melt index is a result effective variable of viscosity controlling at least ease of extrusion."

The Board found that melt index was a result-effective variable recognized by Roox:

 The Examiner finds that Roox teaches a range of melt indices that overlaps Appellants’ claimed range (Ans. 4, 9, 13). The Examiner finds that Roox’s focus on the melt index of the blend indicates that the melt index is an important variable for controlling viscosity and thus extrusion. Id. Roox further discloses using higher melt indices to permit dispersion within the blend (col. 3, ll. 12-15). Based on these findings, we agree with the Examiner that Roox recognizes melt index is a result effective variable for controlling the ability of extruded materials to disperse. An improved dispersability of the materials in the blend would affect viscosity, among other blend properties, and thus ability to extrude or process the blend.
(Emphasis added.)

The Board was not persuaded by any of the other arguments made by the Applicant, and so affirmed the rejection.

My two cents: Materials science isn't my area of expertise, but seems to me that the Board went a bit beyond the Examiner's actual findings. I don't see that the Examiner said Roox "focused on the melt index of the blend" – all I saw was that the Examiner relied on Roox's blend melt index to teach the claimed LDPE melt index. I certainly don't see how this "focus" led the Examiner to the conclusion that Roox taught that viscosity was controlled by melt index. All I saw was the Examiner's assertion that viscosity was controlled by melt index.

On the other hand, Roox certainly did teach that melt index affects dispersion. The Applicant even acknowledged this teaching in the Appeal Brief. Plus, Wikipedia says that melt index is inversely proportional to viscosity. Materials science is not my thing, but this suggests to me that "melt index is not a results-effective variable recognized in the prior art" is a losing argument.

Perhaps the Applicant was really making an unexpected result argument:

Indeed, none of the prior art of record recognized or appreciate the effects melt index have on web speed, as discovered by the inventors of the present invention.
(Appeal Brief.)

 If so, the Applicant didn't frame the argument very well – the section title for the argument was "result determinative variable" rather than "unexpected results." And the Applicant didn't carry the evidentiary burden either. The Specification did include various statements that the claimed LDPE properties led to an increase in web speed. The Specification even included some technical explanation of why a POSITA would have found the results unexpected. However, case law also requires a comparison of the claims with the closest prior art. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). No such comparison was present in the Specification, nor did the Applicant file a § 1.132 declaration making a comparison.

Board reverses obviousness of rejection involving Examiner affidavit of personal knowledge

Takeaway: Ex parte Moody was a rare case in which an Examiner relied on personal knowledge in a rejection. During prosecution of claims directed to a paper towel dispenser, the Examiner used, as prior art, photos of a dispenser shown alongside a tape measure. The Examiner asserted that that this dispenser had been "in use in the USPTO Crystal Park 5 restrooms since at least 1999." The Applicant traversed the rejection and demanded an affidavit of personal knowledge per CFR § 1.102(a)(d)(2). The Examiner produced two affidavits, one declaring the date of use and another attesting to the measured dimensions. On appeal, the Applicant argued that the dispenser in the photo did not disclose the claimed length of the dispensing aperture relative to the length of the paper towels. 

Details:
Ex parte Moody
Appeal 2008005114; Appl. No. 10/004,823; Tech. Center 3600
Decided:  December 1, 2009

The application was directed to a paper towel dispenser (shown below), and the limitation at issue was a shortened dispensing aperture, as emphasized.

     1. A modified gravity-feed towel dispenser for dispensing C-fold and interfolded towels,
     wherein said dispenser houses C-fold or interfolded towels having a transverse length, L,
     which are positioned to be dispensed through an elongated bottom dispensing aperture having a length of L or greater,
     said towel dispenser including means for defining a top portion, a front wall, a back wall and a pair of side walls of said towel dispenser, as well as a bottom portion collectively defining an interior for receiving a stack of C-fold or interfolded towels,
     said bottom portion of said towel dispenser defining said elongated bottom dispensing aperture,
     wherein an adapter plate is secured to said bottom portion of said towel dispenser and is configured to abridge the length of said dispensing aperture to a length L' of 80 percent to 90 percent of said transverse length, L, of said C-fold or interfolded towels.(Emphasis added.)

During prosecution, the Examiner rejected various claims using a combination of an issued patent (Gettelman) and a Bobrick 363 model towel dispenser. Bobrick was alleged to be prior art because it bore a "3/81 copyright date on the interior instruction panel" and had been "in use in the USPTO Crystal Park 5 restrooms since at least 1999." The Office Action included several photos of a tape measure along various parts of the dispenser. According to the Examiner, these photos showed that the Bobrick dispenser included a 9.75" dispensing slot and a towel magazine capable of holding 11" wide towels, which met the limitation of "a length L' of from about 80% to about 90% of transverse length, L, of C-fold or interfolded towels. The Examiner relied on the primary reference, Gettelman, for all other limitations.

The Applicant argued that the copyright date did not establish that the Bobrick dispenser was prior art, noted that the Examiner-supplied photographs were too blurry to accurately show dimensions, and demanded an affidavit of personal knowledge as to the dimensions measured by the Examiner:

     First, in order to be prior art, the dispenser must have existed in its current form as of that date. In this regard, the copyright date on the loading instructions do not establish that the aperture on a lower part of the dispenser existed in its current form before 2000. That part of the device may have been changed or modified at any time. The Examiner has not testified that he made any measurement of any device which existed before the priority date of this application.
     The rejections should also be withdrawn because the Examiner has not complied with [the personal knowledge requirement of] CFR § 1.102(a)(d)(2) ... Counsel cannot tell from the obscured photographs provided the length of the dispensing opening, nor can Applicant determine the length of towel placed therein. Other indistinguishable features include whether there are inclined terminal portions, what the angle of inclination is, the shape of the aperture, etc.
     Applicant requests that the rejections based on the PTO Bobrick model be withdrawn, or a detailed affidavit be provided with all relevant dimensions clearly labeled; this affidavit should also necessarily include relevant dates prior to Dec 2000 when the dimensions were observed.

In a Final Office Action, the Examiner acceded to the Applicant's demands for clear photographs and also provided two personal affidavits. One affidavit attested to the date of use of the Bobrick dispenser as being at least August of 1999 – though the Examiner nonetheless maintained that the copyright date "establishes by preponderance of the evidence a 1981 public sale/use date." The other affidavit attested as to various dimensions, and read as follows:

Examiner's Affidavit in Support of the Measured
Bobrick Model 363 Towel Dispenser Dimensions

I, Michael E. Butler, do hereby afftrm the following facts based on measurements made on the Bobrick Model 363 Towel Dispensers located in the USPTO Crystal Park 5 restrooms.
The dispensing slot has a length of 10 1/2  inches.
The dispensing magazine has a towel major axis length of 11"
The dispensing slot has a width of  2 1/2 nches in the middle
The dispensing slot has a width of  3/4 inches at the end of the straight base
The arcuate surface bearing the dispensing slot has a chord of 10.5 cm
The arcuate surface bearing the dispensing slot has an arcuate length of 11.7 em
The arcuate surface commences tangent to the horizontal back of the dispensing slot curving upward to a frontal non tangential termination relative the front panel with the following projections:
The arcuate surface has projection on the horizontal axis of 9.4 cm
The arcuate surface has a projection on the vertical axis of 6 cm

The Examiner provided the following rationale for obviousness:

It would have been obvious for the Gettelman et al. retrofit adapter to have dimensions selected from those used in the proven BOBRICK 363 towel dispenser because such dispenser has proven itself effective in minimizing multiple dispensed towels and fall through and come up with the instant invention.

The Examiner further explained that:

The magazine is well capable of holding towels exceeding the width by about 10-25% and would have been obvious to one of ordinary skill in the art to place towels of such dimensions in the dispenser ... The length of slot is sufficiently close to 90% of available towel length to obviate a slot about 80-90% of the towel length.

On appeal, the Applicant argued that the Bobrick Dispenser did not teach the claimed dimensions. Specifically, the Applicant argued that the Examiner's Affidavit did not support the rejection, and that the Examiner had mischaracterized the Bobrick dispenser:

     The commercial dispenser was asserted in the Final Rejection to have a 9.75 inch dispensing slot between 11 inch sidewalls (88%). That statement is clearly mistaken. The Examiner's Affidavit contradicts that assertion stating that the dispensing slot is 10-1/2 inches or over 95% of the distance between sidewalls; not at all suggestive of the claimed relative length of about 80-90%.
     Furthermore, upon examination of the photographs of the dispenser [provided by the Examiner], it appears that the dispensing slot actually extends from sidewall to sidewall, just as in Fig. 3 of  Gettner [the primary reference], and therefore does not at all suggest dispensing a towel through an aperture shorter than the towel.
(Emphasis added.)

The Applicant also attacked the Examiner's rationale for combining, arguing that there is no motivation to modify the adapter in Gettelman using the Bobrick dispenser (which did not use an adapter). According to the Applicant, "an adapter plate modifies a dispenser, not vice-versa."

In the Examiner's Answer, the Examiner disagreed with the Applicant about the width of the dispensing slot shown in the photos:

Contrary to applicant's assertion, the slot in the Bobrick '363 model dispenser and the Gettlemen et al. dispenser do not extend the entire magazine cavity distance.

On appeal, the Board agreed with the Examiner that Bobrick's dispensing aperture was not identical to the dispensing magazine's length, finding it to be slightly shorter (95%). The Board also found that in Gettelman, the transverse length of the aperture and of the adapter were nearly identical. The  Board reversed because the Examiner did not provide a rational reason why a POSITA would shorten Gettleman's adapter plate based on the dispensing aperture in Bobrick's towel dispenser. The Board found that the "extensive amount of modification needed to the adapter plate of Gettelman is suggested nowhere in the cited art," but was instead "born from the use of impermissible hindsight reconstruction in view of Appellant’s Specification."

My two cents: I included the Board's discussion of why the Examiner's obviousness rationale was deficient, but did so just to be complete. My real interest in this case is the Examiner Affidavit of personal knowledge – this is the only case I can recall where the Examiner provided one. I think this is a useful example of when to ask for an affidavit, how to do so, and what to look for in the Examiner's Affidavit when he provides it.

Here, it was crystal clear that the Examiner really was relying on personal knowledge. But from what I've seen, some Applicants request a personal affidavit as sort of a boilerplate response whenever the Examiner uses Official Notice, "well known", inherency, or even KSR's "creative inferences." It's usually abundantly clear from the record that the Examiner is not relying on personal knowledge, adn in such cases I'm not sure why Applicants bother with the request. See my post Examiner affidavit of personal knowledge for some of those.

And for an example of another case where the Applicant probably should have asked for an Examiner Affidavit, check out my blog post here about Ex parte Gray. In Gray, the Examiner asserted that a patent reference was really a Gillette Mach 3 razor. The Examiner then used his own measurements of a Mach 3 razor rather than the dimensions depicted in the patent drawing. The Applicant disputed the assertion, but did not ask for an affidavit of personal knowledge. The Board ignored the Examiner's unsupported assertion.

Board affirms obviousness even though benefit described in reference not linked to claim element

Takeaway: The Examiner rejected claims to a method for context aware computing as obvious over a combination of three references. The Applicant attacked the Examiner's combination rationale, arguing that the benefit used by the Examiner as a reason to combine was not actually produced by the claimed feature. The Board did not discuss the benefit disclosed in the reference, but instead merely stated that the Examiner had found a motivation to combine in the purported benefit. (Ex parte Cutlip , PTAB 2013.)

Details:

Ex parte Cutlip
Appeal 2010007365; Appl. No. 11/847,298; Tech. Center 2100
Decided:  June 13, 2013

The application on appeal was directed to context aware computing. A representative claim on appeal read: 

     1. A method for ontologically driving context mediation in a computing system, the method comprising:
     collecting a plurality of events arising from a solution in a computing environment;
     loading operational meta-data for the solution;
     contextually mediating the collected events with the operational meta-data to produce context sensitive events; and,
     correlating the context sensitive events with corresponding symptoms in a display to an end user in the computing environment,
     wherein the events comprising both base events and also splunked events.

The Examiner rejected the claim as obvious over a combination of three references. The third reference, Chandrasekaran, was relied upon for the "base events and also splunked events" limitation. The Examiner cited the following statement as a reason for utilizing the base/splunked events feature in Chandrasekaran: "Based on the foregoing, techniques are clearly needed for efficiently processing sequences of events that may occur at different points in time." (Background of Chandrasekaran.)

In the Appeal Brief, the Applicant attacked the Examiner's reason to combine:

     The "technique" taught by Chandrasekaran is separate from the base events and compound events. Specifically, the techniques of Chandrasekaran are used for processing and evaluating base events and compound events. Therefore, to obtain the alleged benefit of "efficiently processing sequences of events that may occur at different points in time," classifying events as base events and compound events is not enough since the benefits are attributable to the technique and not just classifying events as base events and compound events to which the technique is applied. ...  Whether or not modifying the events of the applied prior art (i.e., the combination of Baudino and Zaner-Godsey) to include base events and compound events would result in the proposed benefit has not been established by the Examiner.
(Emphasis added.)

The Examiner did not address argument this in the Answer.

The Board affirmed the rejection. The Board briefly addressed the Applicant's rationale argument, but only to say that the Examiner was right, without explaining why:

     Appellant also contends that the combination of Baudino, Zaner-Godsey, and Chandrasekaran is improper. Reply Br. 6-7. In particular, the Appellant contends that “[w]hether or not modifying the events of the applied prior art (i.e., the combination of Baudino and Zaner-Godsey) to include base events and compound events would result in the proposed benefit has not been established by the Examiner.” App. Br. 18 (emphasis omitted). We disagree with the Appellant.
     The Examiner found that a person with ordinary skill in the art would have been motivated to combine Baudino, Zaner-Godsey, and Chandrasekaran in order to efficiently process sequence of events that may occur at different points in time. Ans. 8. As such, we find that the Examiner has provided an articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.

My two cents: I agree that the Examiner articulated his reasoning. But I say that the Applicant showed that the reasoning was faulty, i.e., that it lacks a "rational underpinning." As a reason to combine, the Examiner proferred the benefit "efficient processing." But the reference which mentioned efficient processing did not disclose that this efficiency was a result of the feature relied upon in the combination.

The statement relied upon by the Examiner – "Based on the foregoing, techniques are clearly needed for efficiently processing sequences of events that may occur at different points in time" – was in the Background section of Chandrasekaran, following a list of shortcomings of the prior art. At most, this sentence shows that some combination of techniques disclosed in Chandrasekaran leads to efficient processing of sequences of events at different points in time. It does not show that efficient processing is produced by the feature which the Examiner took from Chandrasekaran – the use of base events and splunked/compound events.

In fact, other teachings in Chandrasekaran suggest that efficiency is a result of specific techniques such as the use of array operations to compare attribute values with constant values ([0100]) and splitting base event indices into parallel tracks based on a maximal composite partitioning key ([0114]).

So it's not the base and splunked/compound events that result in efficient processing. Then why would a POSITA be motivated to use these events to modify the primary and secondary references to produce Applicant's claims?

This rationale just doesn't stand up to scrutiny, which is why I'm convinced the Board got it wrong. And even if they didn't, I'm disappointed the Board didn't explain why the Examiner's rationale was rational, instead of just stating that the Examiner "found" that the reference taught a benefit. A "rational underpinning" requires more than merely putting "findings" on paper – it doesn't become rational until it's based on findings that are also established to be correct.

The Applicant clearly identified the issue – "whether or not modifying the events of the [asserted combination] to include base events and compound events would result in the proposed benefit." The Applicant also showed that Chandrasekaran did not link the benefit to the claimed feature. That should be enough. The Applicant shouldn't be required to spell out what other features in Chandrasekaran actually did produce that benefit (array operations, special keys, etc.).

Board affirms obviousness even when Applicant explains why primary reference does not benefit by substitution

Takeaway: The Examiner relied on a substitution rationale in rejecting claims to a vertebral disc prosthesis. The rejection replaced circumferentially oriented radiopaque markers in the primary reference with radially oriented marker from the secondary reference. The Applicant explained that the primary reference was radially symmetric, and thus has no use for radial markers. However, the Board affirmed, noting that the secondary reference used radial markers to position as well as orientation. (Ex parte De Villiers, PTAB 2013.)

Details:
Ex parte De Villiers
Appeal 2011008377; Appl. No. 11/982,431; Tech. Center 3700
Decided:  May 9, 2013

The application on appeal was directed to a prosthesis used in vertebral disc replacement. A representative claim on appeal read:

     18. An intervertebral prosthesis for insertion between adjacent vertebrae, the prosthesis comprising:
     upper and lower prosthesis plates locatable against respective vertebrae and having bearing surfaces thereon;
     a rigid preformed core located between the plates,
     the core having opposed bearing surfaces configured to cooperate with the bearing surfaces of the plates to allow the plates to slide in articulated manner over the core; and
     wherein the core is preformed with angularly spaced, radial passages and radially oriented pins located in the radial passages serving as radiographic markers.

In a Final Office Action, the Examiner rejected all the independent claims, and several dependents, as being obvious over Keller in view of Ray. According to the Examiner, Keller taught a prosthesis having the claimed plates and a core as claimed, with one difference: the radiographic marker in Keller was located in a passage extending around the circumference of the core. The Examiner then relied on Ray's teaching of a vertebral disc core for placement between adjacent vertebrae, where the core included radially oriented radiopaque markers.

Keller	Ray

In the body of the rejection, the Examiner explained the rationale for the combination as follows:

[It would have been obvious to] change the orientation of the circumferential marker/passage of Keller to a radially orientation as taught by Ray et forming preformed radial passages with radially oriented pins to allow radiographic viewing of said core to check location and orientation including radial orientation with predictable results.

On appeal, the Applicant did not dispute the Examiner's assertions about the disclosure of Keller or Ray, but instead attacked the Examiner's proffered reason to combine. First, Keller already included radiopaque markers. Second, the Office Action had provided no reason for modifying Keller to have markers that show rotational orientation of Keller's rotationally symmetric core:

   The rotational orientation of Keller's core 1 relative to it's retaining plates is irrelevant to the practitioner and patient, because the core 1 is a disc: any one angular orientation of the core is identical to any other angular orientation. [Thus,] the practitioner has absolutely no use for knowing the rotational orientation of the core. [In any event,] the exposed ends 10, 11 of the wire 9 would provide sufficient detail of the rotational orientation [under fluoroscopy].
   In stark contrast, the performance of Ray's disc nucleus prosthesis absolutely depends on its rotational orientation relative to the anatomical structures in which it is implanted. ... [T]he practitioner would have an intense need to know the rotational orientation of the prosthesis, so that it can perform its functions, e.g., "restore the natural pumping action of the disc space" [citing Ray].

In the Answer, the Examiner did not specifically address the Applicant's arguments, but instead noted similarities of the two prostheses:

Both Keller and Ray teach intervertebral prostheses for replacing an injured or malfunctioning nucleus. Both prostheses are mobile; note that the nucleus prosthesis of Ray is free to move within the disc space. Both prostheses use radiographic markers. Keller teaches, "A metal wire 9 is fitted in the groove 3, 4 is visible on X-rays and makes it possible to check the position of the sliding core 1 and to assess the articulation with the opposite bearing." Ray teaches "the spinal disc nucleus includes a radiopaque marker for indicating a location and orientation. Both Keller and Ray teach the marker is for the exact same purpose: to check position/location of the nucleus prosthesis.

The Examiner then defended his use of the substitution rationale:

 According to the MPEP [2141], this provides examplary rationale for substitution motivation, "simple substitution of one konwn element for another to obtain predictable results.". Note that the rejection is substituting the orientation and not adding additional markers as argued by  Appellant.

The Board affirmed the rejection and suggested that the Applicant had focused too much on Ray's use of markers to show rotational orientation:

While the placement of markers according to Ray may be used to define the orientation of an implant, the markers may also be used to simply define the location of the implant (FF4), which is how the markers are used in Keller (FF2). Claim 18 does not limit the use of markers to defining implant orientation. We agree with the Examiner’s rationale and adopt is as our own. KSR Int’l Co. v. Teleflex Inc ., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”)

My two cents: In this and many other cases, the Board seems to think that substitution is a reason in and of itself.  But did the Board get this one wrong? Here, the Examiner relied on a specific advantage and the Applicant explained why this was not an advantage.

More specifically, the Examiner used the benefit "check location and orientation including radial orientation" as a reason to combine. But the Applicant rebutted by asserting that POSITA had no need to check orientation, and explained why this was the case.

The Board then seemed to fall back on the reasoning that a POISTA could have substituted Ray's markers as just a different way of marking location, not orientation, relying on this statement in Ray: "the radiopaque wires 38 further provide an indication of a location of the prosthesis spinal nucleus 20 upon implant."

This statement about location seems like a red herring to me, as that wasn't really in dispute. Certainly Ray's wires show where the implant is. But many wire arrangements could perform this function. Ray's wires were radial precisely because orientation as well as location was important. Why would a POSITA modify Keller's circumferentially arranged wires – which work just fine in Keller's implant  – to use Ray's radially arranged wires – which have no use in Keller's implant.

Sometimes a nail and a screw are equivalent substitutes, as both work as a fastener. But usually there's a reason why you use a nail rather than a screw, or vice versa. Isn't that the case here? Didn't the Applicant successfully rebut the Examiner's substitution rationale?

BPAI reverses obviousness rejection after finding combination was "more than the predictable use of a prior art element according to its established function"

Takeaway: The BPAI reversed an obviousness rejection of a claim to a mail processing system after finding that the combination used by the Examiner was "more than the predictable use of a prior art element according to its established function." (Ex parte Ryan, Jr., BPAI 2009.)

Details:

Ex parte Ryan, Jr.
Appeal 2009004014; App. No. 09/777,592 ; Tech. Center 3600
Decided:  September 25, 2009

The application on appeal was directed to a mail processing system. A representative claim on appeal read:

     2. A mail piece verification system for processing mail pieces, the mail pieces having associated therewith respective mail piece data, the system comprising:
     a data center in operative communication with a plurality of mail processing centers,
the data center including a plurality of account files corresponding to a plurality of postage metering systems;
     the data center being adapted to
          store reset data in each of the plurality of account files representative of reset activity associated with the plurality of postage metering systems, respectively;
          receive respective mail piece data corresponding to the mail pieces from the plurality of mail processing centers;
     store empirical data in each of the plurality of account files representative of mailing activity associated with the plurality of postage metering systems, respectively;
     conduct a forensic accounting analysis of the empirical data and the reset data associated with a selected postage metering system using a previously defined time period over which to conduct the forensic accounting analysis; and
     download graphic data to the selected postage metering system to be included in the mail piece data of mail pieces subsequently prepared by the selected postage metering system if the forensic accounting analysis reveals that the empirical data is not consistent with the reset data for the selected postage metering system.
(Emphasis added.)

The Examiner rejected claim 2 as obvious over Hunter, Moore, and Connell. The issue on appeal was whether the combination of Hunter and Connell taught the elements emphasized above.

Specifically, in the Final Office Action the Examiner relied on Hunter for the "conduct a forensic accounting analysis" action, for the claimed "if" condition, and for taking an action – further investigation of possible fraud – in response to the claimed "if" condition. Since Hunter's responsive action was not the claimed "download graphic data" action, the Examiner then relied on Connell as teaching the "download graphic data" action in response to detection of fraud. In explaining how and why these features were combined, the Examiner used the following reasoning:

     To paraphrase in order to explain the rejection in a more simple manner, Hunter detects potential fraud by keeping track of postage value added to a meter, as well as mail pieces from that meter that pass through the postal system. If the postage having been purchased for a meter differs too much from the amount of postage on mail pieces from that meter that have been mailed, this is an indication of potential postage fraud. When such fraud is detected, Hunter initiates a responsive action to deal with the situation. In Hunter, that responsive action is to initiate an investigation (see Hunter, column 5, lines 31-39).
     Of course, claim 1 requires that the responsive action be not an investigation, but a download of graphic data into a meter that gets incorporated onto mail pieces for the purpose of identifying mail pieces originating from suspect meter users. It is necessary to turn to Connell et al. for this portion of the claim limitation.
     Connell et al. is a postal security system that also functions in response to possible postal fraud (see Connell et al., column 1, lines 30-52). Connell et al. works by incorporating graphic data onto mail pieces that indicates whether or not the postage on the mail pieces is legitimate. At any given point in time, there is a particular item of graphic data that is designated as indicating that a mail piece's postage is valid. This designated graphic data changes periodically. In order to keep their "designated graphic data" up-to-date so that their mail pieces are indicated as having valid postage, meter users in Connell et al. must occasionally download the latest version of the designated graphic data. Individuals who are not authorized to be metering mail pieces will not have access to up-to-date designated graphic data, and thus will mail mail pieces with out-of-date graphic data that indicate the mail pieces as potentially fraudulent. Therefore, Connell et al. provides the needed disclosure of graphic data on mail pieces that is used to identify potentially fraudulent mail pieces in response to meter fraud concerns.
     Since the out-of-date graphic data used by a potentially fraudulent user was at one point up-to-date graphic data that was downloaded validly to that user, the out..:of-date graphic
data in Connell et al. that identifies potentially fraudulent data is disclosed as being downloaded
to user meters.

On appeal, the Applicant did not argue the teachings of the individual references, but instead challenged the manner in which the features were combined. Specifically, the Applicant argued that the trigger for Connell's download action was much different from the trigger for Hunter's further investigation action:

[T]he system in Connell selects one of a plurality of stored indicia images [for download] based solely on the date that the indicia will be printed. ... The date has nothing whatsoever to do with whether or not a forensic accounting analysis reveals that the empirical data is not consistent with the reset data. ...  Without using the present claims as a road map, it would not have been obvious to make the multiple, selective modifications needed to arrive at the claimed invention from these references.

In the Answer, the Examiner maintained the rejection and also provided additional explanation.

The use of graphic data to identify postal fraud, as can be seen in the above passages from Connell et al. is a responsive action to the overall problem of postage indicium fraud. While the responsive action in Connell et al. is not a responsive action in the same specific and immediate way that the responsive action in Hunter is, the responsive action in Connell et al. is still a responsive action.
(Emphasis added.)

Also, while the Answer continued to rely on a specific motivation in Connell, the Answer brought in one of the KSR rationales, asserting that the claims “only unite old elements with no change in their respective functions and which yield a predictable result.”

The Board reversed the obviousness rejection. Noting the Examiner's reliance on the "predictable results" rationale from KSR, the Board instead found that the combination used by the Examiner was "more than the predictable use of a prior art element according to its established function." The Board explained this statement as follows:

The Examiner states, “. . . the responsive action in Connell et al. is not a responsive action in the same specific and immediate way that the responsive action in Hunter is . . ..” Answer 26. We agree. While the overall invention in Connell may be directed to the prevention of postage indicia fraud, Connell describes the “responsive action” (i.e. the downloading of an address of a newly authorized indicia) relied upon by the Examiner functions to detect the postage indium fraud. The Examiner’s “responsive action” of Connell is not a response to a detection of an occurrence of postage indicia fraud but is a means that functions to detect an occurrence of the fraud. Connell’s “responsive action” performs the same function as the Hunter’s description of comparing purchased postage with used postage and not the further investigation of Hunter, as the Examiner seems to assert (see Answer 23). Further, Connell’s “responsive action” performs the same function as the claimed forensic analysis and not the claimed downloading of graphic data.  ...  Therefore, we find that the Appellant has shown the Examiner erred in rejecting claim 2.

My two cents: First, I give credit to the Examiner for providing a detailed explanation of the rejection. Second, I'm glad to see a successful attack on the common "predictable results" rationale. However, I think this fact pattern better fits a proposed-combination-does-not-teach-the-claim argument. That said, I think I figured out how to make the fact pattern fit the predictable results rationale. (Or, more precisely, the UNpredictable results rationale.)

The way I see it, the Examiner's combination rejection takes the form

• Claim includes action A (forensic analysis), result B (data not consistent) of action A, and action C (downloading graphic data) in response to result B.
• Hunter teaches action A, result B of action A, and action C' (initiate fraud investigation) in response to result B.
• Connell teaches action C in response to result B. 
• Combination results in action A, result B of action A, and action C. 

The Board disagreed with the Examiner's reading of the reference. That is, the Board found that Connell's downloading graphics data was not properly understood as action C in response to result B, but was instead action D (fraud detection). Thus, the Board found that the Examiner's combination did not produce the claim, which required action A, result B of action A, and action C in response to result B.

That's why I see the Board's reasoning as a natural fit for a proposed-combination-does-not-teach-the-claims argument, rather than an unpredictable-results argument.

But after thinking about this decision for a while, I think I see how to map this very same reasoning to the lack-of-predictable-results rationale. You could say that the predictable combination of Hunter and Connell is A, B as a result of A, C' in response to B, and D. But the claims require A, B as a result of A, and C in response to B. So the claim is not a predictable result of the combination, and the Examiner didn't make a prima facie case of obviousness. 

As a side note, you'll recall that the Examiner mentioned the predictable results rationale in the Answer, but also used an explicit motivation to combine from the secondary reference. The Board didn't address this alternative rationale.

Finally, I note that the Applicant also used a hindsight argument during prosecution and in the Appeal Brief, and the Board also found hindsight. Personally, I find hindsight to be a particularly UNhelpful way of viewing obviousness. Hindsight is the conclusion reached when the prima facie case isn't made ... the Examiner must have used hindsight because he hasn't made a prima facie case. Hindsight is not itself a standalone argument against obviousness.