Florida Patent Lawyer Blog

In its first decision on this Friday the 13th, the Board of Patent Appeals and Interferences (BPAI), reversed an Examiner's 103 obviousness rejection based on the Examiner's faulty inherency logic. I like this reversal because it highlights the Examiner's burden and the consequences of not meeting that burden - i.e., a win for the Applicant.

With regard to inherency, recall M.P.E.P. 2112 states that where an Applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make an inherency rejection under both 35 U.S.C. 102 and 103, expressed as a 102 or 103 rejection. See my post last year regarding the use of inherency in 103 obviousness rejections.

The case of Ex parte Smith (Appeal No. 2010-008057) involved an industrial resin. The claims recited a filler that covalently bonds with another element. The Examiner rejected the claims based on 35 U.S.C. 103(a) stating that the cited prior art discloses the same chemical structure and that the claimed covalent bonding aspect was inherent to the chemical structure disclosed in the prior art. Specifically, on the issue of the covalent bonding, the Examiner stated solely the following: "providing a workable amount of covalent bond forming coupling agents would have been obvious ... and coupling agents forms strong covalent bonds." (verbatim). That's all the Examiner had to say on the issue of inherency.

The Applicant responded with attorney argument that the cited prior art is silent on the issue of covalent bonding and that, in fact, the cited prior art could result in other types of bonding, such as ionic bonding, not necessarily covalent bonding.

The Board found:

"an inherent characteristic must be inevitable, and not merely a possibility or probability. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)."

The Examiner simply concluded that Applicant's claimed chemical structure would inherently result in a covalent bond and stated nothing more.

"The Examiner has not established with any evidence or provided any explanation on this record why the use of the ... agents ... in the prior art ... would inevitably, or necessarily, result in a direct covalent bond as claimed."

The Board continued:

"the Examiner has not satisfied the initial burden of presenting a prima facie case of obviousness."

And thus, the Board reversed the Examiner's rejection.

What does this mean for practitioners? This means that you should closely analyze an Examiner's 103 obviousness rejection based on inherency to determine whether the cited art would inevitably, or necessarily, result in the Applicant's claimed device, composition or method. It is not enough for the Examiner to conclude that the cited art could potentially result in the Applicant's claimed device, composition or method. In order to meet his burden, the Examiner must cite evidence that the cited art would inevitably, or necessarily, result in the Applicant's claimed device, composition or method. If the Examiner does not meet this burden, then you may have grounds for reversal.

Continue reading "Board of Patent Appeals Reverses Examiner's Inherency Finding" »

In a quick decision today at the Board of Patent Appeals and Interferences (BPAI), the Board reversed an Examiner's 103 obviousness rejection in two sentences (Analysis section only). Quick work for a usually wordy Board.

The case of Ex parte Erhan (Appeal No. 2011-008127) involved a method of making fatty acid ester derivatives. The claims involved processes of production of a ketal product in combination with the hydroxyl ester product. The Examiner rejected the claims based on 35 U.S.C. 103(a) for obviousness but wrote a sparse explanation of where the claim elements were found in the prior art.

The Board began by reciting the relevant principles of law:

When determining whether a claim is obvious, an Examiner must make "a searching comparison of the claimed invention - including all its limitations - with the teachings of the prior art." In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).

The Board finished with its Analysis section, which is reproduced below verbatim:

After reviewing the facts and arguments, we conclude that the evidence and rational set out in the rejection are insufficient to establish a prima facie case of obviousness for the method of claim 22. In particular, although the rejection identified prior art teachings concerning the production of a hydroxyl ester product, the rejection did not identify prior art teachings concerning the production of a ketal product in combination with the hydroxyl ester product, and did not resolve that difference between the prior art methods and the claimed method.

And in two sentences the Board reversed the Examiner's rejection.

What does this mean for patent practitioners?This means that much like a 35 U.S.C. 102(b) rejection, a 103 rejection must provide the equivalent of an element-by-element analysis of the elements of the claims being rejected. That is, every element of every claim must be found in the prior art cited. If you suspect that the Examiner missed, or gave little attention to, a claim element, then the Examiner is violating In re Ochiai, which may be grounds for a reversal, as in the case of Ex parte Erhan. This is in line with a previous posting I wrote about how the single most effective way to reverse a 103 obviousness-type rejection is to argue that the prior art does not disclose a claim element.

Continue reading "Quick Post: Board Reverses Examiner's Rejection in Two Sentences" »

In a decision today at the Board of Patent Appeals and Interferences (BPAI), the Board reversed an Examiner's 103 obviousness rejection based on the unreasonableness of the Examiner's interpretation of the word "on."

The case of Ex parte Goruganthu (Appeal No. 2010-005235) involved a method of making lenses. The claims involved methods for forming solid immersion lenses on a resist film. One of the central issues was the meaning of the claim term "on." What does the term "on" mean?

The Board began by first contruing the claim term:

We begin by noting that while the term "on" is not expressly defined in the Specification, the broadest reasonable meaning of this term in its ordinary usage is a function word to indicate direct or indirect physical contact. See, e.g., pages 1574 and 1575 of WEBSTER'S THIRD NEW WORLD INTERNATIONAL DICTIONARY (G. & C. Merriam Webster, 1971) (on defined as "used as a function word to indicate contiguity or dependence.").

Based on the dictionary definition of the term "on," the Board followed by construing the Applicant's claim:

Thus, the claim requires forming an array of solid immersion lenses in direct or indirect physical contact with the resist film. This is a reasonable interpretation in light of the Specification as it teaches that its solid immersion lens array 36 may be formed directly on (i.e., in direct physical contact with) the underlying resist film.

Then, the Board went on to define what the Examiner found in the prior art:

"the Examiner maintains that Hugle teaches the disputed claim feature because Hugle' s Figure 4 illustrates a lens array 34 that is spaced above photoresist 35 (corresponding to the claimed resist film feature required by the claims) such that the lens array 34 is on the photoresist"

So the Examiner found a prior art reference that showed a lens array located over, but not touching, a photoresist. Was the Examiner correct in concluding that since the prior art showed A spaced above B, this would obviate a claim reciting A "on" B? The Board did not think so.

"Given the proper construction of the term "on" discussed above, we determine that the Examiner's interpretation of the term "on" to include a position that is spaced above the photoresist 35 is unreasonably broad. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). ... nowhere does Hugle teach that the lens array is formed 'on the resist film' as required by the claims.

The Examiner simply directs us to no credible evidence to support the position that a person having ordinary skill in the art would have understood Appellants' disclosure to support this broader interpretation."

In short, the Board found that a prior art reference showing a lens array space above, but not touching, a photoresist, was not the same as, and does not obviate, a claim reciting a lens array "on" a photoresist. Consequently, the Examiner's rejection was reversed.

What does this mean for patent practitioners? It means that when dealing with claims terms that comprise everyday language, you should challenge claim rejections that interpret that language too broadly. The BPAI is required to analyze claims in their broadest reasonable interpretation. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). In cases involving everyday language that is not defined in the specification, the dictionary definition is used to construe that claim language. So get your dictionary out and make sure the Examiner didn't go beyond the dictionary definition. If he did, you may have grounds for a reversal, as in the Ex parte Goruganthu case.

Continue reading "Board of Patent Appeals Decides Broadest Reasonable Interpretation of Term "On"" »

Yesterday's Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Knox confirms what I've always thought about a "no motivation to combine" argument after the decision of KSR Int'l Co. v. Teleflex, Inc, - it's a narrow argument that doesn't have much punch.

The case of Ex parte Knox involved a computer program invention. The Examiner rejected the claims for being obvious in light of two prior art references - Lai and Bradshaw - under 35 U.S.C. § 103(a). Appellants presented a standard "no motivation to combine" argument.

The Board rejected this argument, first reciting case law that is often recited in BPAI decisions:

[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The test of non-obviousness is not whether one reference can be bodily inserted into another, but, rather, what the references, when considered together, would have suggested to one of ordinary skill in the art, In re Keller, 642 F.2d 413, 425 (CCPA 1981), who is a person of ordinary creativity and not an automaton, KSR, 550 U.S. at 421, and whose inferences and creative steps we may consider, id. at 418.

If you ask me, this is pretty strong language that negates just about any "no motivation to combine" argument. The In re Keller holding appears to eliminate the need to show that two references can even be combined in a technical sense.

In light of the case law cited, the Board concluded the following:

We find that a person of ordinary skill in the art would have recognized that Bradshaw's technique of comparing first checksums with second checksums would improve Lai's file version recording ... We find that a person of ordinary skill in the art, using no more than ordinary skill and creativity, would have recognized that the calculation of a checksum ... could be performed using a checksum algorithm that is insensitive to the ordering of data, such as that taught by Lai

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The lesson learned from this case is that "no motivation to combine" arguments are not among the strongest arguments you can make at the BPAI. Seeing as the case law on combining prior art references is heavily weighted on the side of combining, I would leave this argument at the bottom of your toolbox along with the "non-analogous art" argument. Of course, every practitioner runs into tough situations at some point, and if you have nothing else, digging to the bottom of your toolbox is sometimes necessary.

Continue reading "Board of Patent Appeals Rejects "No Motivation to Combine" Argument Once More" »

Today's Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Michelle illustrates just how useless the non-analogous art argument really is.

Not to beat a dead horse, since much has been written about the uselessness of this argument by my fellow patent prosecution bloggers (see Karen H.'s blog posting about this subject here), but seriously, don't use this argument anymore. I have yet to see it succeed even once.

The Ex Parte Michelle case involved a telecommunications network claim rejected under 35 U.S.C. 103(a) for being obvious. The Appellant tried his hand at the "non-analogous art" defense. The Board summarily dismissed this argument in one sentence:

"Further, we find that the references Xu, Huitema and Sollee are in the same field of endeavor, involving middleboxes across multiple address realms on a network. They are thus properly combinable."

That's all the Board wrote. They didn't even offer to explain.

The law on non-analogous art is rather straightforward. References within the statutory terms of 35 U.S.C. § 103 qualify as prior art for an obviousness determination only when analogous to the claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); see also In re Wood, 599 F.2d 1032, 1036 (CCPA 1979) and In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).

The moral of the story here is that the non-analogous art argument is pretty much dead and should be removed from every patent practitioner's toolbox.

Continue reading "Stay Away From the Non-Analogous Art Argument" »

Yesterday's Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Peng highlighted the most effective way of reversing a Patent Examiner's 103 obviousness type rejection - contesting the presence of one of the claim elements in the cited prior art. I, a Patent Lawyer practicing in the City of Miami, am always interested in reading about how other attorneys have gotten rejections reversed at the BPAI.

The Ex Parte Peng case involved a method claim performed by a GPS receiver. The claim element at issue involved the storage of certain data in sample RAM, followed by a reallocation of purpose of certain memory spaces. The Examiner issued an obviousness type rejection under 35 U.S.C. 103(a), asserting that the claim element at issue as found in the cited prior art. The Appellant appealed and argued that the claim element was in fact NOT disclosed by the cited prior art.

In a short, one and a half page analysis section, the Board agreed with the Appellant and reversed the rejection. Namely, the Board stated:

"We agree with Appellants that the results of the accumulators are stored in the RAM latch, and not the sample RAM, ... we do not find any teaching or suggestion in the cited reference of a re-allocation for purposes ... there is no indication that some of these time slots ... have been re-allocated in a second mode ... To somehow conclude that the cited re-allocation of the time slots could be accomplished in the RAM latch disclosed in Baranyai would require us to stretch the reference beyond reasonable limits."

It seems like a simple argument - "the prior art does not disclose the claim element" - and it lacks the complexity and depth of standard non-obviousness arguments such as "no articulated reasoning" and "no motivation to combine." But it so happens that this simple argument is the single most successful way to reverse a 35 U.S.C. 103(a) rejection (in electrical cases) on appeal before the BPAI. According to data provided by Michael Messinger, Esq. at the 2010 Board of Patent Appeals conference, 57% of the obviousness reversals in electrical cases were reversed using this argument. The next most successful argument was the "rationale/underpinning", which accounted for 37% of the obviousness reversals in electrical cases.

The lesson here is that if you want to increase your chances of reversing a 35 U.S.C. 103(a) rejection (in electrical cases) on appeal before the BPAI, you would be wise to use "the prior art does not disclose the claim element" argument. This argument is favored by the BPAI, according to the statistics.

Last week's Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Roher affirmed a Patent Examiner's 35 U.S.C. 103 obviousness rejection, thereby rejecting the Appellant's commonly used non-obvious argument. As a Patent Lawyer in Miami Florida, the Ex parte Roher decision was educational in that it highlighted a common losing non-obviousness argument.

The case of Ex Parte Roher involved packaging for hair color products. The disputed claim limitation included a recitation about alternative hair colors shown on the packaging. The Examiner asserted this claim limitation was obvious in light of the cited prior art, which was also directed to packaging for hair color products. The Appellant asserted the prior did not disclose this claim limitation and further the prior art did not hint or suggest this claim limitation.

The Board rejected the Appellant's argument, and recited the well-known "ordinary creativity" argument with regard to the person of ordinary skill in the art (POSITA). Specifically, the Board stated: "Appellants' argument that [the prior art] ... does not disclose warmer, cooler and natural color fails to account for what the art would have suggested to and the creativity of one of ordinary skill in the art. KSR Int'l Co. v. Teleflex, Inc., 550 US 398, 421 (2007) ("A person of ordinary skill is also a person of ordinary creativity, not an automaton."). Clearly demonstrating variations in tone of a color or even providing different hair color blends for the consumer to view is a desirable feature as taught by [the prior art]."

This decision teaches us that a proper 35 U.S.C. 103 obviousness rejection need not disclose the exact or identical claim limitation at issue. The prior art of record may recite an element that is close to the claim limitation, as long as it would be obvious to a POSITA, who is assumed to have ordinary creativity, to make the leap to the claim limitation. This poses an additional obstacle the patent practitioner must overcome when fighting an obviousness rejection - not only must he support his argument that the prior art of record does not disclose the claim limitation at issue, he must also support his argument as to why it would NOT be obvious to a POSITA to make the logical leap to the claim limitation.

Last week's Board of Patent Appeals and Interferences (BPAI) decision of Ex Parte Lim , which affirmed a Patent Examiner's 35 U.S.C. 103 obviousness rejection, teaches an important lesson - obviousness rejections must address both references - not just one. As a Miami Patent Attorney that reads BPAI decisions frequently, I'm surprised that any practitioners even try this argument anymore.

The case of Ex Parte Lim involved a mobile communications network, such as those used by cell phone providers. The Examiner issued a 35 U.S.C. 103 obviousness rejection based on two references - Lipsanen and Siren. The Appellant argued that Lipsanen did not disclose the claimed subject matter. The Appellant did not address Siren and did not address the combination of the two references.

The Board decided: "Appellants' argument [regarding] Lipsanen ... is unpersuasive as it attacks the disclosure of Lipsanen individually, rather than addressing the combination with Sirén described by the Examiner. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) and In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).

The lesson here is a simple one. When attacking a 35 U.S.C. 103 obviousness rejection, it doesn't help to attack references individually. You must focus on the central concept behind the Examiner's rejection - the combination of the references. This means you must focus on why the combination - not the individual references - fail to disclose the claimed invention. For example, if your argument involves a claim element that is missing from the prior art, then you must argue that the combination - not the individual references - fail to disclose the claim element.

Today's Board of Patent Appeals and Interferences (BPAI) decision of Ex parte Nakamura et al , which reversed a Patent Examiner's 35 U.S.C. 103 obviousness rejection, was remarkable because it illustrated a method for reversing an obvioounsess rejection. As a Miami Patent Lawyer with a large patent docket, the Ex parte Nakamura was educational because it showed me where I might find a hidden structural limitation in an apparatus claim.

Ex parte Nakamura involved a box-like positioning apparatus that included various moving parts. The claim element at issue stated that the amount or distance a particular moving member can be moved was limited to a particular distance. The Examiner gave this claim element short shrift, likening it to a non-existent limitation. But the Board disagreed and found this to be a tangible, structural claim limitation. The Board stated: "as a matter of claim construction, in giving the claim terms thereof the broadest reasonable interpretation consistent with the specification, we agree with Appellants that claim 1 specifies ... thus specifying a structural configuration." See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010) (quoting In re ICON Health & Fitness, Inc., 496 F.3d 1374,1379 (Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).

The moral of the story here is that when it comes to apparatus claims, every claim limitation need not be a positively recited, physical structure. Claim limitations, even structural ones, can be inferred from claim language that indicates what a physical element is capable or not capable of doing. The example in the Nakamura case is a claim limitation stating how far a physical element may be moved.

Last week's Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Byers discredited a flawed 1.132 Affidavit presented by the Applicant and affirmed a Patent Examiner's 35 U.S.C. 103 obviousness rejection. As a Miami Patent Lawyer, I found the Ex parte Byers decision interesting because it showed a common pitfall when using 1.132 Affidavits.

The case of Ex parte Byers involved an online marketplace for selling healthcare products. The Applicant submitted a 1.132 Affidavit in support of its arguments and the Board found it insuficient to rebt the Examiner's prima facie case of obviousness. Specifically, the Board stated: "the conclusory statements in the Declaration are merely factual representations of his opinions."

The Board has broad discretion as to the weight to give to declarations offered in the course of prosecution. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)("[A]ccord[ing] little weight to broad conclusory statements [in expert testimony before the Board] that it determined were unsupported by corroborating references [was] within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.") cf. Ashland Oil, Inc. v. Delta Resins & Refactories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)("Opinion testimonytestimony rendered by experts must be given consideration, and while not controlling, generally is entitled to some weight. Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination." (citations omitted)). Although there is "no reason why opinion evidence relating to a fact issue should not be considered by an examiner," In re Alton, 76 F.3d 1168, 1175 n.10 (Fed. Cir. 1996). The Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations. See Velander, 348 F.3d at 1371; Ashland Oil, 776 F.2d at 294. In re American Academy of Science, 367 F.3d 1359, 1368 (Fed. Cir. 2004).

The lesson here is simple. The focus of a 1.132 Affidavit should not be opinion. It should be a recitation of the facts. Let the Examiner and the Board reach its own conclusion based on the facts recited in the 1.132 Affidavit. Otherwise, the affidavit will look like a paid endorsement of the Applicant's arguments, and it won't be given much weight.

Today, the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner's 35 U.S.C. 103 obviousness rejection of a commonly-used "product-by-process" claim, supporting my theory that product-by-process claims are useless. As a Miami Patent Lawyer, I found the Ex parte Lockemeyer decision interesting because it confirmed my own abandonment of product-by-process claims in the course of patent prosecution.

Ex parte Lockemeyer involved a product-by-process claim of a chemical composition made using a new process. The Examiner issued a 35 U.S.C. 103 obviousness rejection of the product-by-process claim based on a prior art reference that disclosed the chemical composition, but did NOT disclose the Applicant's process. This begs the question - can you properly reject a product-by process claim using a prior art reference that discloses the product but NOT the process? Apparently, you can.

It is well settled that the patentability of a claim in product-by-process form is determined based on the product itself, not on the method of making it. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) ("If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process."). In light of this precedent, the Board affirmed the rejection of the Applicant's product-by-process claim.

As a side note, it should be noted that the Applicant did argue that Applicant's composition possessed characteristics not held by the composition of the prior art reference. Other than attorney argument, the Applicant offered no other evidence. This argument was, of course, shot down by the Board. When Appellants' product and a product of the prior art appear to be identical or substantially identical, the burden shifts to Appellants to provide evidence that the prior art product does not necessarily or inherently possess the characteristics of Appellants' claimed product. See Thorpe, 777 F.2d at 698; In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Fessmann, 489 F.2d 742, 745 (CCPA 1974).

The affirmation of the rejection of the product-by-process claim illustrates the uselessness of these types of claims. The "process" portion of a product-by-process claim clearly has little or no limiting value and is virtually ignored as a claim limitation. Consequently, there is no good reason to add a "process" to a "product" claim. For expediency, product-by-process claims should be avoided and standard chemical composition claims should be used.

In it's first decision of the day this sleepy Monday morning, the Board of Patent Appeals and Interferences (BPAI) rejected a novel "market forces" argument in favor of a Patent Examiner's 35 U.S.C. 103 obviousness rejection. As a Miami Patent Lawyer, I found the Ex parte Scherschel decision interesting because I like to read the novel arguments asserted by patent attorneys when they have a dog of a case. And sometimes the BPAI's response is even more interesting.

The case of Ex parte Scherschel involved an invention related to cell phone communications systems. This case was on re-hearing, which means the Applicant was attempting to overturn a BPAI decision based on a Patent Examiner's rejection. The Patent Examiner had rejected the Applicant's claim under 35 U.S.C. 103 for being obvious. The Applicant argued that the Examiner and the Board erred because they had not considered market forces. Specifically, the Applicant argued"

• "KSR also mandates that we consider a commonsense consideration of market forces and the effects of demands known to the design community when assessing the obviousness of a given prior art combination. KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 417-418 (2007).

Now that's a novel argument. Patent practitioners know that market forces are rarely, if ever, a subject that we bring up during patent prosecution. The only commonly-used exception is when you make an argument of long-felt need - usually done in a 1.132 Affidavit - and even then, it is categorized as a "secondary consideration" and not given great weight. See MPEP 716.04 for long-felt need arguments.

How did the Board respond? The Board stated: "The Court in KSR does not 'mandate[] that we consider a common-sense consideration of market forces and the effects of demands known to the design community when assessing the obviousness of a given prior art combination,' as argued by Appellants. Anderson 's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62 (1969) specifically precludes Appellants' reading of KSR."

The Board went on: "

• A combination of elements may result in an effect greater than the sum of the several effects taken separately. No such synergistic result is argued here. It is, however, fervently argued that the combination filled a long felt want and has enjoyed commercial success. But those matters 'without invention will not make patentability.' Great A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147, 153, 71 S.Ct. 127, 130, 95 L.Ed. 162. Anderson's-Black Rock, 396 U.S. at 61.

The educational moment here is that long-felt need and market forces arguments are secondary considerations and cannot be used as the main component of your non-obviousness argument. In order to combat a 103 obviousness rejection, you must focus your argument on the basics, i.e., why the references don't disclose every element of the claimed invention, why the two references should not be combined, etc. In other words, long-felt need and market forces arguments can be used as a spice, but not as the main dish.

In one of it's last decisions of last month, the Board of Patent Appeals and Interferences reversed a Patent Examiner's 35 U.S.C. 103 obviousness rejection in response to the Applicant's arguments that the combination of the cited prior art would render the main reference inoperable. As a South Florida patent practitioner, the case of Ex parte Regini was interesting to me because it illustrated the burden an Examiner must meet when issuing a 103 obviousness rejection.

The case of Ex part Regini involved a chemical process for etching channels into a wafer used in fabricating a microprocessor. The claimed process recited the use of chemically reactive gas to etch the channels. The Patent Examiner rejected the claimed process using a combination of two prior art references - Vassalli (for etching) and Fong (for chemically reactive gas). The Applicant argued the Vassalli reference expressly stated that even when a small amount of chemically reactive gas is introduced, "the effectiveness of the technique has been lost." I.e., Applicant argued that combining Vassalli with Fong would render Vassalli inoperable - thereby rendering the combination improper. In other words, it couldn't possibly be obvious to combine two references if the combination would result in an inoperable result. The Patent Examiner did not respond to this argument and simply argued that it would have been obvious to combine Vassalli and Fong.

If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Further, "a reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

In Ex part Regini, the Board found the Examiner "fails to respond to Appellants' teaching away argument. In this regard, the Examiner does not explain why it would have been obvious to employ Fong's plasma of inert gas and chlorine-containing gas, which are known to be chemically reactive, to remove a silicon native
oxide layer on Vassalli's wafer in view of Vassalli's teaching that 'the effectiveness of the technique has been lost' when 'even a small amount of chemically reactive gas' is introduced to its polycrystalline silicon, which is positioned above its wafer." Consequently, the Board reversed the Examiner's 103 rejection on the grounds that the combination of Vassalli and Fong was not proper.

What can we learn from this case? First, if a cited reference expressly teaches away from a certain combination, then you have grounds for reversing a 103 rejection asserting the combination - and you don't need outside evidence such as textbooks, 1.132 Affidavits or other patents to support your point. The express teaching-away language in the cited reference can be enough to get a reversal! Second, an Examiner is required to provide a reason why a combination is obvious in a 103 rejection, especially in response to an inoperability argument. If he does not provide such a reason, this is grounds for a reversal of the103 rejection.

In the last decision of this past Thursday, the Board of Patent Appeals and Interferences (BPAI) reiterated the rule that attorney argument is not enough to meet certain burdens in course of patent prosecution. As a Board Certified patent lawyer in Miami with a sizable docket of cases, I'm constantly staying abreast of the current state of the law on issues relating to patent prosecution.

The Patent Examiner in the Ex parte Zechlin case asserted that a characteristic of the claimed chemical process was found in a prior art patent. Specifically, the Patent Examiner found the claimed cyclic ketone removal characteristic was "inherent" in the chemical process shown in the Forlin (U.S. Pat. App. No. 2004/0092773) prior art reference. On appeal, the Applicant presented his arguments as to why the Examiner's assertion was incorrect. The Applicant, however, provided no other evidence, such as affidavits, extrinsic evidence, etc.

What does the law say about an inherency rejection and the burden of proof? Read on ...

When the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. See In re Ludtke, [441 F.2d 660 (CCPA 1971)]. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 459 F.2d 531. . . ([CCPA]1972). In re Best, 562 F.2d 1252, 1255 (CCPA 1977).

The applicant has the burden of coming forward with evidence in rebuttal, when the prior art includes a method that appears, on its face, to be capable of producing the claimed composition. This burden may be met by presenting sufficient reason or authority or evidence, on the facts of the case, to show that the prior art method would not produce or would not be expected to produce the claimed subject matter. In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005).

In Ex parte Zechlin, the Examiner presented a legitimate inherency rejection and the Applicant responded using only "attorney argument" and did not present any 1.132 affidavits, references to text books, scientific treatises, etc. That was a bad move by the Applicant's attorney, since he carried the burden of proving the inherency rejection was not accurate. As a result, the Board in Ex parte Zechlin found the Applicant did not meet his burden in rebutting the Examiner's finding of inherency.

The moral of the story here is that once the Examiner makes a finding of inherency, the burden is moved to the Applicant to properly rebut the Examiner's finding. And it's a high burden. You wont get off with a few paragraphs of attorney argument. In order to properly rebut a finding of inherency, the patent practitioner should err on the side of caution and get a professor or creditted engineer to provide a 1.132 affidavit and/or provide a good bibliography of textbooks, scientific journals and academic articles that support his position.

How do you reverse a Patent Examiner's 35 U.S.C. 103 rejection of your design patent application based on obviousness? That was the issue in the Ex parte Kellerman (BPAI 2009-009310) decision at the Board of Patent Appeals and Interferences (BPAI) where a Patent Examiner was reversed. As a Miami Patent Attorney with a sizable docket of design patent cases, this case taught an important lesson on the anatomy of an obviousness rejection in a design patent case.

The Kellerman case involved a design patent application for a serving tray that looks like a ceramic cooking pan. In Kellerman, the Examiner argued that the shape of Appellant's orifice in the handle was de minimis or did little to distinguish Appellant's claimed design from the prior art. The BPAI, however, attested to the significance of the shape of an orifice in a design patent application. The Board reviewed the Patent Examiner's obviousness rejection of petitioner's claimed design in view of the prior art. The Board found that the almond-shaped opening of petitioner's claimed design differed from the oval-shaped opening of the prior art. The Board in Kellerman held that the prior art would have to be further modified to at least include the almond-shaped opening of the petitioner in order to meet the ornamental design characteristics as disclosed and that such a modification was not obvious under 35 U.S.C. §103. Thus, the difference in the shape of the openings, in concert with other differences, was significant enough for the Board in Kellerman to reverse the Examiner's obviousness rejection of the petitioner's design.

This teaches us two things with regard to a 35 U.S.C. 103 obviousness rejections in a design case: 1) the shape of orifice can be a significant distinction that affects an obviousness determination and 2) modifying a prior art reference to meet the ornamental characteristic of a claimed design must be obvious to one of ordinary skill in the art. Thus, when appealing an Examiner's obviousness rejection in a design case, it is important to discuss the significance of any difference in shape - especially if it pertains to the shape of an orifice. Second, it is important to contest the Examiner's assertion that modifying the prior art to meet the ornamental characteristic of the claimed design is obvious. This can be done many ways, but one of my favorites is to use a 37 C.F.R. 1.132 Affidavit.