In one of its first decisions today, the Patent Trial and Appeal Board (PTAB) upheld an Examiner's 35 U.S.C. 103 obviousness rejection, citing, as it often does, the KSR v. Teleflex case. This blog post outlines the broadest reasonable interpretation standard and how it relates to 35 U.S.C. 103 obviousness rejections.
In today's Ex parte White (Appeal No. 201100327) decision, the claims involved an ultrasonic consolidation process across the surface of a multi-layered object. At issue was the plain meaning of the disputed term "optimizing" in a claim and whether it encompasses making a process as effective or functional as possible. The Board contemplated whether the Examiner's finding that the prior art's process optimizes the lateral positioning of its sonotrode relative to the geometry of the object being worked upon was reasonable, and the Board further contemplated whether it was reasonable that the process of the prior art would have been as effective or functional as possible.
Appellant provided no evidence or any persuasive line of reasoning explaining why the Examiner's finding of reasonableness was in error.
The Board first explained the broadest reasonable interpretation standard:
It is well established that "the PTO must give claims their broadest reasonable construction consistent with the specification ... Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation."In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) ("[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.").
The Board further stated that:
The Examiner's determinations that one of ordinary skill would predictably optimize the location or position of an ultrasonic welder (Ans.7), and predictably desire to minimize bulk motion (id. at 9), are supported by a preponderance of the evidence and are unrefuted on this record. An improvement in the art is obvious if "it is likely the product not of innovation but of ordinary skill and common sense."KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,421 (2007). See also, Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) ("hold[ing] that while an analysis of obviousness always depends on evidence that supports the required Graham factual findings, 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 or expert opinion").
And thus, since it was reasonable for one of ordinary skill to optimize the location or position of an ultrasonic welder, the Appellant's claims were obvious.
Lessons Learned: When attacking a claim construction in response to an Examiner's 35 U.S.C. §103 obviousness rejection, the savvy patent practitioner should cite evidence. In this case, the practitioner used attorney argument, which is cheap, to combat what he thought was an unreasonable interpretation of the claims. What he should have done was cite some solid evidence (textbooks, treatises, etc.) that supported his argument that one of ordinary skill would NOT have optimized the location or position of an ultrasonic welder. This would have created a higher bar for the Examiner to pass and may have resulted in a reversal at the PTAB.