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July 2, 2012


In pursuit of a "crossbar arithmetic processor" patent, Blaise Laurent Mouttet provided another lesson in the way of Obzilla: any possible combination of known features is not patentable, even when the prior art technologies are not compatible. Mouttet envisioned an arithmetic processor using a crossbar structure. He cited a prior art publication, Das, that disclosed a "nanoscale crossbar array with molecular switches." The examiner found Falk (5,249,144), which taught a "programmable optical arithmetic/logic device," and Terepin (4,633,386), an analog-to-digital (A/D) converter. The examiner put them together to fabricate Mouttet's claimed invention, a rejection affirmed by the PTO appeals board and CAFC.

In re Mouttet (CAFC 2011-1451) precedential; Judges Prost, O'Malley and Ryna (author)

The examiner rejected the claims by transmuting Falk's optical crossbar into an electrical one via Das, which taught a molecular scale device, with an Terepin's A/D converter a necessary adjunct.

The examiner found that Falk taught all of Mouttet's recited limitations in representative claim 1 except for (1) a crossbar array implemented with electrical wires rather than optical light paths, (2) crosspoints with programmable states based on electrical conductivity rather than optical intensity, and (3) conversion of analog signal outputs to digital output bit patterns in the post-processing unit. Ex parte Mouttet, 2011 Pat. App. LEXIS 15036, at *3-4. The examiner relied on Das to teach the missing crossbar array using wires and crosspoints that are programmable to have electrical conductive states, and on Terepin to teach a component converting analog signals to digital bit patterns. The examiner thus rejected claims 1, 2, 6-12, and 16-20 of the '232 application under 35 U.S.C. § 103(a) as obvious over Falk, in view of Das and Terepin.

The case law basis for finding obviousness:

Whether an invention would have been obvious to one of ordinary skill in the art is a legal determination based on underlying findings of fact. KSR, 550 U.S. at 427; In re Gartside, 203 F.3d 1305, 1316, 319 (Fed. Cir. 2000) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)). The scope and content of the prior art, as well as whether the prior art teaches away from the claimed invention, are determinations of fact. See Para-Ordnance Mfg., Inc. v. SGS Importers Int'l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995). The PTO bears the initial burden of showing a prima facie case of obviousness. In re Mayne, 104 F.3d 1339, 1341 (Fed. Cir. 1997). If the PTO carries its burden, the applicant must rebut the PTO's showing. Id.

A claimed invention is unpatentable "if 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." 35 U.S.C. § 103(a). Where "a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." See KSR, 550 U.S. at 416. A reference may be read for all that it teaches, including uses beyond its primary purpose. See id. at 418-21; see also Beckman Instruments, Inc. v. LKB Pro-dukter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989).

Deference to the PTO appeals board, a fabrication by the court without basis in patent statute:

While this court reviews the Board's legal conclusion of obviousness without deference, it upholds the Board's factual findings if supported by substantial evidence. In re Gartside, 203 F.3d at 1313-16. Substantial evidence is something less than the weight of the evidence but more than a mere scintilla of evidence. Id. at 1312 (citing Consol. Edison Co. v. Nat'l Labor Relations Bd., 305 U.S. 197, 229-30 (1938)). It means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion. Consol. Edison, 305 U.S. at 229-30. Thus, "where two different, inconsistent conclusions may reasonably be drawn from the evidence in record, an agency's decision to favor one conclusion over the other is the epitome of a decision that must be sustained upon review for substantial evidence." In re Jolley, 308 F.3d 1317, 1329 (Fed. Cir. 2002); see also Gartside, 203 F.3d at 1312 (noting that the possibility of drawing inconsistent conclusions from the evidence does not prevent the Board's findings from being supported by substantial evidence).

Mouttet had reasonable arguments that were waved off. Hindsight reasoning works, as long as it is imagined as "predictable," which most everything is in hindsight.

Mouttet makes two arguments on appeal: first, that substituting electronic hardware for optical hardware would destroy the Falk device's principle of operation and physical structure; and second, that Falk teaches away from the claimed invention.

As the examiner found, the type of circuitry used is the main difference between Mouttet's invention, which is based on electrical conductivity, and Falk's invention, which is based on optical paths. But this difference does not affect the operability of Mouttet's broadly claimed device - a programmable arithmetic processor.

Mouttet further objects that replacing Falk's optical crossbar circuitry with Das's electrical crossbar circuitry would destroy the physical structure of Falk. Mouttet argues that there is no evidence that electrical crossbar circuitry would have been recognized by ordinarily skilled artisans as equivalent to, or able to be substituted for, optical crossbar circuitry.

Any alleged nonequivalence in the type of circuit is irrelevant to the Board's determination since the examiner did not rely on art-recognized equivalence in substituting the crossbar arrays. It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements. In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) ("Etter's assertions that Azure cannot be incorporated in Ambrosio are basically irrelevant, the criterion being not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole."); In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."); In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . .").

Thus, it was not requisite to the Board's § 103(a) determination that Das's features be deemed equivalent for purposes of substitution into Falk's device. Rather, the test for obviousness is what the combined teachings of the references would have suggested to those having ordinary skill in the art. Id. The Board properly found that an electrical engineer with several years of related industry experience would indeed have recognized that Falk's arithmetic processor could have been combined with Das's wired crossbar array to predictably yield Mouttet's claimed computing device. See KSR, 550 U.S. at 416, 421.

Preferring an "alternative design" does not "teach away."

Mouttet argues that Falk "teaches away" from the claimed invention. A reference that properly teaches away can preclude a determination that the reference renders a claim obvious. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326-27 (Fed. Cir. 2009). Whether or not a reference teaches away from a claimed invention is a question of fact. See In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995).

In In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994), we emphasized that "[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."

Thus, the "mere disclosure of alternative designs does not teach away." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). This court has further explained that just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes. Gurley, 27 F.3d at 553.


Posted by Patent Hawk at July 2, 2012 12:38 PM | Prior Art