Icon Health and Fitness, Reexamination No. 90/005,117 (CAFC 2006-1573)

The backdrop -

The present dispute involves only the final limitation, requiring a gas spring “to assist in stably retaining” the tread base in the upright position. On reexamination, the examiner rejected Icon’s claims as obvious under 35 U.S.C. § 103, based on the combination of an advertisement by Damark International, Inc. (“Damark”) and U.S. Patent No. 4,370,766 to Teague, Jr. (“Teague”).

Damark consists of an advertisement for a folding treadmill; Icon does not challenge the Board’s finding that Damark demonstrates all claim elements other than the gas spring. The present inquiry, therefore, focuses on Teague’s disclosure of gas springs and the applicability of Teague to Icon’s invention.

The Board affirmed the examiner’s determination that the combination of Teague and Damark rendered claim 1 obvious. First, the Board rejected Icon’s argument that Teague does not provide analogous art. Specifically, because Teague and the current application both address the need to stably retain a folding mechanism, the Board found Teague reasonably pertinent to the current application. Further, it found that discussion of a lifting force in the present application paralleled Teague’s mechanism for creating a lifting force.

Next, the Board looked to the broad scope of the appealed claims and held that Teague’s teachings fell within that broad scope.

Because there was nothing limiting in the '624 specification about the spring used, which would have intrinsically limited claim scope, the claim is construed by the appeals board, and the CAFC, broadly. One does not typically limit a claim term in the specification if it can be helped. The problem is, instead, drafting claims of appropriate scope: neither so broad as to be invalid, or so narrow as to miss claiming what could have been claimed. The common solution is to draft a variety of claims with different scopes, so that if the broader claims are invalidated, the narrower ones may survive.

During reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation. As this court has discussed, this methodology produces claims with only justifiable breadth. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984). Further, as applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee. Am. Acad., 367 F.3d at 1364.

Icon gets no traction arguing that a bed spring is outside the technical field of treadmills. The problem approached is the same: how to hold something in its current position.

Icon disputes the Board’s conclusion that one skilled in the art would have found it obvious to combine the teachings of Teague and Damark. As the first of its two major arguments on appeal, Icon argues that Teague falls outside the “treadmill art” and addresses a different problem than the present application, removing it from the relevant prior art. We agree that, describing a folding bed, Teague comes from a different field than Icon’s application. We disagree, however, that Teague addresses a different problem.

If reasonably pertinent to the problem addressed by Icon, Teague may serve as analogous art. Paulsen, 30 F.3d at 1481. “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). In other words, “familiar items may have obvious uses beyond their primary purposes.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1742 (2007). We therefore have concluded, for example, that an inventor considering a hinge and latch mechanism for portable computers would naturally look to references employing other “housings, hinges, latches, springs, etc.,” which in that case came from areas such as “a desktop telephone directory, a piano lid, a kitchen cabinet, a washing machine cabinet, a wooden furniture cabinet, or a two-part housing for storing audio cassettes.” Paulsen, 30 F.3d at 1481–82.

One skilled in the art would naturally look to prior art addressing the same problem as the invention at hand, and in this case would find an appropriate solution. Indeed, while perhaps not dispositive of the issue, the finding that Teague, by addressing a similar problem, provides analogous art to Icon’s application goes a long way towards demonstrating a reason to combine the two references. Because Icon’s broad claims read on embodiments addressing that problem as described by Teague, the prior art here indicates a reason to incorporate its teachings.

Icon tried arguments of teaching away that didn't work. One skilled in the art is quite creative in combining known elements.

“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); see KSR, 127 S. Ct. at 1739–40 (explaining that when the prior art teaches away from a combination, that combination is more likely to be nonobvious). Additionally, a reference may teach away from a use when that use would render the result inoperable. McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001).

Finally, Icon argues that the counterweight mechanism from Teague uses a large spring that would overpower Icon’s treadmill mechanism, thus producing a result inoperable for its intended purpose. Icon correctly states the principle that a reference teaches away from a combination when using it in that combination would produce an inoperative result. See McGinley, 262 F.3d at 1354. But we do not ignore the modifications that one skilled in the art would make to a device borrowed from the prior art. Optivus Tech., Inc. v. Ion Beam Applications, S.A., 469 F.3d 978, 989–90 (Fed. Cir. 2006). One skilled in the art would size the components from Teague appropriately for Icon’s application, therefore producing an embodiment meeting Icon’s claims.

Therefore, Icon’s arguments fail to convince us that Teague teaches away from Icon’s claims. Teague discloses two types of mechanism that would satisfy Icon’s gas spring limitation, and does not indicate the undesirability or unsuitability of either mechanism for Icon’s purpose. To the contrary, one skilled in the art would naturally look to Damark and Teague, finding reason to combine them; forming that combination would produce a device meeting all of Icon’s claim limitations.

All patent claims were found obvious, including dependent claims gunned down in a three-way crossfire.