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July 1, 2010

BPAI Ballroom

The BPAI and Obzilla are regular dance partners. So far this year, they've held two public balls: two precedential opinions in 2010, both ostensibly about obviousness, but as much about Board review procedure and scope. The most recent decision, Ex parte Magnus Quist was from an appeal rehearing request. Quist's claimed invention had been found obvious. Rehearing request denied. The upshot of how the BPAI works: "the Board panel must consider anew all the relevant evidence of obviousness, both for and against, in view of the argument on the issue."

Ex parte Magnus Quist (BPAI 2008-001183) precedential

B. Standard of Review

The examiner has an initial burden to set forth the basis for a rejection, so as to put a patent applicant on notice of the reasons why the applicant is not entitled to a patent on the claim scope sought. This "prima facie case" is a procedural mechanism that shifts the burden of going forward to the applicant, who must then produce argument, with or without evidence, rebutting the initial case of unpatentability. The applicant's rebuttal evidence may relate to any of the Graham factors including the so-called secondary considerations. "The examiner then determines patentability 'on the totality of the record, by a preponderance of the evidence with due consideration to the persuasiveness of argument.'" Ex Parte Frye, Appeal 2009-006013, 2010 WL 889747 *3-4 (BPAI Feb. 26, 2010) (Precedential).

An appellant may attempt to overcome an examiner's obviousness rejection on appeal to the Board by submitting arguments and/or evidence to show that the examiner made an error in either (1) an underlying finding of fact upon which the final conclusion of obviousness was based, or (2) the reasoning used to reach the legal conclusion of obviousness. Similarly, the appellant may also submit evidence of secondary considerations of nonobviousness. The panel then reviews the obviousness rejection for error based upon the issues identified by appellant, and the particular findings and conclusions in light of the arguments and evidence presented. See id.

The recently published precedential Frye decision specifically describes the role of the Board as that of "[reviewing] the obviousness rejection for error based upon the issues identified by appellant, and in light of the arguments and evidence thereon." (Slip. Op. 9. ) "Specifically, the Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue." (Id. at 10.)

Secondary considerations, including objective evidence relevant to the issue of obviousness, must be considered by the Examiner. Graham at 17-18. The Graham factors (determining the scope and content of the prior art, ascertaining the differences between the prior art and the claims at issue, and resolving the level of ordinary skill), including secondary considerations when present, are the controlling inquiries in any obviousness analysis. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406-7 (2007). "[P]atentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

On Board review, if the appellant raises the issue as to whether the examiner's conclusion of obviousness was in error, based in part on the proffered evidence of secondary considerations, the panel must consider if the examiner erred in determining patentability, based upon the totality of the record. In such instances, the Board panel must consider anew all the relevant evidence of obviousness, both for and against, in view of the argument on the issue. One such instance requiring a reweighing is seen in the present appeal - if the Appellants argue that the Examiner erred in determining that the weight of the evidence supports a conclusion of obviousness, the Board must review that conclusion of obviousness anew to see if the preponderance of relevant evidence properly before the Office supports that conclusion.

Appellants had argued commercial success as a secondary indicator of nonobviousness.

"All evidence bearing on the issue of obviousness, as with any other issue raised in the conduct of the judicial process, must be considered and evaluated before the required legal conclusion is reached." Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739 F.2d 1573, 1575 (Fed. Cir. 1984). However, "[a] nexus between the merits of the claimed invention and evidence of secondary considerations is required in order for the evidence to be given substantial weight in an obviousness decision." Id.

Put another way, commercial success or other secondary considerations may presumptively be attributed to the patented invention only where "the marketed product embodies the claimed features, and is coextensive with them." Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1328 (Fed. Cir. 2008) (citing Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006) and quoting Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000)).

The appellants' "statements, and the broad conclusions reached, are not coextensive with the elements of the claim as written."

In February, Nancy C. Frye's inventive shoe with a "forwardly-inclined, reverse wedge" got a chance to put a new foot forward: examiner rejection reversed by the Board - Ex parte Nancy Fyre.

Standard of Review

The Examiner has the initial burden to set forth the basis for any rejection so as to put the patent applicant on notice of the reasons why the applicant is not entitled to a patent on the claim scope that he seeks - the so called "prima facie case." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial burden of proof is on the USPTO "to produce the factual basis for its rejection of an application under sections 102 and 103"). (quoting In re Warner, 379 F.2d 1011, 1016 (CCPA 1967)). As the Federal Circuit has observed, "[t]he term 'prima facie case' refers only to the initial examination step." Oetiker, 977 F.2d at 1445; see also Oetiker, 977 F.2d at 1449 ("The process of patent examination is an interactive one.") (Plager, J., concurring). The "prima facie case" serves as a procedural mechanism that shifts the burden of going forward to the applicant, who must produce evidence and/or argument rebutting the case of unpatentability. See Oetiker, 977 F.2d at 1445; Piasecki, 745 F.2d at 1472. Applicant's rebuttal evidence "may relate to any of the Graham factors including the so-called secondary considerations." Piasecki, 745 F.2d at 1472 (citations omitted). The examiner then determines patentability "on the totality of the record, by a preponderance of the evidence with due consideration to the persuasiveness of argument." Oetiker, 977 F.2d at 1445.

The Board's role in any subsequent appeal is to, "on written appeal of an applicant, review adverse decisions of examiners upon applications for patents." 35 U.S.C. § 6(b) (2006) (emphasis added). An appellant may attempt to overcome an examiner's obviousness rejection on appeal to the Board by submitting arguments and/or evidence to show that the examiner made an error in either (1) an underlying finding of fact upon which the final conclusion of obviousness was based, or (2) the reasoning used to reach the legal conclusion of obviousness. Similarly, the applicant may submit evidence of secondary considerations of non-obviousness. See Kahn, 441 F.3d at 985-86 ("On appeal to the Board, an applicant can overcome a rejection by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.") (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998), overruled in part on other grounds, KSR, 550 U.S. at 422).

The panel then reviews the obviousness rejection for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon. See Oetiker, 977 F.2d at 1445 ("In reviewing the examiner's decision on appeal, the Board must necessarily weigh all of the evidence and argument.") (emphasis added); see also 37 C.F.R. § 41.37(c)(1)(vii) (appeal brief must include "the contentions of appellant with respect to each ground of rejection presented for review in paragraph (c)(1)(vi) of this section, and the basis therefor, with citations of the statutes, regulations, authorities, and parts of the record relied on"). Specifically, the Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue.

Filing a Board appeal does not, unto itself, entitle an appellant to de novo review of all aspects of a rejection. If an appellant fails to present arguments on a particular issue - or, more broadly, on a particular rejection - the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection. See, e.g., Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to make for a given ground of rejection as waived); In re Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004) (declining to consider the appellant's new argument regarding the scope of a prior art patent when that argument was not raised before the Board); In re Schreiber, 128 F.3d 1473, 1479 (Fed. Cir. 1997) (declining to consider whether prior art cited in an obviousness rejection was non-analogous art when that argument was not raised before the Board). Thus, the Board will generally not reach the merits of any issues not contested by an appellant. Cf. In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of this court to examine the claims in greater detail than argued by an appellant . . . ."). For example, if an appellant contests an obviousness rejection only on the basis that a cited reference fails to disclose a particular limitation, the Board need not review the other, uncontested findings of fact made by the examiner underlying the rejection, such as the presence of uncontested limitations in the prior art. Cf. In re Reuning, 276 Fed. Appx. 983, 986 (Fed. Cir. 2008) (nonprecedential) (rejecting Reuning's argument that the Board erred in affirming the obviousness rejection by failing to "explain how each and every element of the rejected claims is taught by the cited references" as "premised on a mistaken assignment of burdens between the PTO and an applicant-appellant" and citing applicant's obligations to respond to a prima facie case with "some argument or evidence").

Anticipation

"A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). To establish anticipation, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).

Obviousness

"Section 103 forbids issuance of a patent when 'the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at 406-07 ("While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.").

"[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418.

The Board's finding hinged upon the claim term "substantially halfway."

Depending on its usage, the word "substantially" can denote either language of approximation or language of magnitude. Deering Precision Instruments, L.L.C. v. Vector Distribution Sys., Inc., 347 F.3d 1314, 1323 (Fed. Cir. 2003) (recognizing the "dual ordinary meaning of th[e] term ["substantially"] as connoting a term of approximation or a term of magnitude"). Here, when referring to the "substantially halfway" limitation, the Specification uses the word "approximately" as a substitute for the word "substantially" (Fact 4). Thus, consistent with its usage in the Specification, the ordinary and customary meaning of "substantially" includes "reasonably close to: nearly, almost, about", connoting a term of approximation (Fact 4). The ordinary meaning of "substantially halfway" is thus reasonably close to or nearly at the midpoint between the forwardmost point of the upper or outsole and the rearwardmost point of the upper or outsole (Facts 4, 5).

The prior art reference relied upon was found "too far forward."

Our decision is limited to the finding before us for review. The Board does not "allow" claims of an application and cannot direct an examiner to pass an application to issuance. Rather, the Board's primary role is to review adverse decisions of examiners including the findings and conclusions made by the examiner. See 37 C.F.R. § 41.50(a)(1) ("The Board, in its decision, may affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner").2 The Examiner in the present case has not based any of the rejections for our review on a theory that locating the claimed point "substantially halfway" as claimed would have been obvious to a person having ordinary skill in the art at the time of Appellant's invention in view of the prior art, and thus we take no position on this issue in the present opinion.

2 The Board also has discretion to enter a new ground of rejection of a claim should the Board have knowledge of any grounds not involved in the appeal for rejecting any pending claim. 37 C.F.R. § 41.50(b). See also Manual of Patent Examining Procedure (MPEP), 8th ed., rev. July 2008, § 1213.02 ("Since the exercise of authority under 37 C.F.R. § 41.50(b) is discretionary, no inference should be drawn from a failure to exercise that discretion").

Posted by Patent Hawk at July 1, 2010 12:24 PM | Prosecution

Comments

Actually in the second case the board didn't understand the designation of various parts of the reference and is an embarrassement to them :(.

Posted by: 6000 at July 6, 2010 11:28 AM