Last week, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner on the issues of hindsight and design choice. As a Florida Patent Attorney with a great interest in the case law surrounding patent prosecution, I enjoyed reading this case because the BPAI used legal citations not familiar to me.
On the issue of hindsight, the BPAI decision stated: "Examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in the factual basis. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)."
The BPAI had this to say about the Examiner's reasoning for his 35 U.S.C. 103(a) rejection: "the Examiner does not cogently explain how to modify Weisz's return air inlet with Lough's teaching of an adjustable damper... it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. KSR Int'l., 550 U.S. at 418 ... the conclusion of obviousness appears born from the use of impermissible hindsight reconstruction in view of Appellants' Specification.""
The practice pointer taught by the above is twofold. First, be wary of an Examiner who does not adequately explain how to modify one reference with the teaching of another. Second, note when an Examiner does not identify a reason that would have prompted a POSITA to combine two references. Both of these Examiner errors are grounds for a reversal of a 35 U.S.C. 103(a) rejection.
With regard to the Examiner's faulty finding of "obvious design choice," the BPAI said this: "To support a conclusion that a claim is directed to obvious subject matter... an Examiner must present a "convincing line of reasoning' as to why one of ordinary skill in the art would have found the claimed invention to have been obvious. Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985). When determining whether a rejection based on design choice is appropriate, the Examiner must review the Specification and ascertain if the limitation in question is disclosed as serving any advantage or particular purpose, or whether it solves a stated problem. The Examiner also should explain the reasoning used to determine that the prior art would have performed equally as well as the claimed invention. These two steps help present the aforementioned "convincing line of reasoning." Ex parte Clapp, 227 USPQ at 973."
Again, the practice pointer taught by the above is twofold. First, in a 35 U.S.C. 103(a) rejection, the Examiner must provide a "convincing line of reasoning" regarding obviousness. This convincing line of reasoning may comprise: 1) explaining how the limitation in question provides a particular advantage and 2) explaining how the prior art would have performed equally well. The failure of an Examiner to provide either or both of these elements of a "convincing line of reasoning" may provide grounds for a reversal of a 35 U.S.C. 103(a) rejection.
