Last week I wrote about the petition for en banc rehearing that I recently filed in Plasmart v. Kappos. See Petition for Rehearing en banc filed in Plasmart v. Kappos and How Much Deference Should the CAFC Give the USPTO? The case arose from what was originally an inter partes reexamination of U.S. Patent No. 6,722,674. In the reexamination proceeding the patent examiner found claims 20-33 to be patentable. The Board agreed that claims 20-33 were patentable as not being obvious, but also found claim 1 patentable as well. Then the Federal Circuit, in a nonprecedential decision, determined that none of the claims were patentable. That was when I became involved in the case.
The Board recognized multiple characteristics that differentiate the claimed invention in the “674 patent from the prior art combination of Song and Handong. Among these, the Board specifically determined that the claimed invention possessed a “supporting arm” and that the safety wheels of a resultant combination of Song and Handong would be raised off the ground, unlike what is depicted in the ‘674 patent and recited in the claims. Still, the panel determined that the claims were invalid. How is it possible to find an invention obvious when not all of the elements are within the prior art? This is unfortunately a disturbing trend that has been brought about by a misreading of KSR.
In this case the Board specifically found that the Song safety wheels are “about one centimeter higher than the ground.” The Board further found that when the tricycle moves horizontally, the safety wheels remain off the ground. Only when the scooter engages a sharp turn do the safety wheels touch the ground. As shown in Figure 5 of the ‘674 patent, the wheel is shown as always in a plane such that it will be touching the ground during both horizontal and lateral movement.
The obviousness rationale of the panel decision was that the claimed invention of the ‘674 patent was merely a combination of prior art elements according to known methods to yield predictable results. However, based on the reasonable findings of fact made by the Board there are still components missing even after the combination of Song and Handong. The original panel never articulated why or how the Board’s factual findings were unreasonable.
Given that critical things were missing in the prior art that are specifically recited in the claim, or are necessarily present given the way the invention has been disclosed in the specification the closest rationale that could support the original panel’s decision is from KSR, where the Court noted:
When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.
KSR, at 417. The aforementioned rationale seems to have been used only twice in Federal Circuit decisions – Tokai Corp. v. Easton Enterprises, 632 F.3d 1358 (Fed. Cir. 2011) and Ritchie v. Vast Resources, Inc., 563 F.3d 1334 (Fed. Cir. 2009).
In Tokai, Judge Lourie, also the author of the instant panel decision, writing for a non-unanimous majority stated that a combination of elements is appropriate to render a claimed invention obvious even where “some variation in the selection or arrangement of particular components” is necessary.
In dissent in Tokai, Judge Newman observed that the prior art elements if collected in total could not be assembled to result in the claimed invention absent first modifying one or more of the elements, as is the case here. She explained that this weighs against obviousness. Tokai at 1377; see also Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1023 (Fed. Cir. 1983).
In Ritchie, the Court per Judge Posner (sitting by designation) specifically relied upon the aforementioned KSR quote, but did not use the entirety of the paragraph within which the quote is found, thereby taking the quote out of context. The entire paragraph in the Supreme Court decision reads:
The principles underlying these cases are instructive when the question is whether a patent claiming the combination of elements of prior art is obvious. When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if 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. Sakraida and Andersonís-Black Rock are illustrative – a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.
KSR at 417 (emphasis added).
After reviewing their own jurisprudence relating to obviousness the Supreme Court summarized what a court “must ask,” which is whether the combination is more than a predictable use of the prior art elements according to their established functions. This critical question cannot be left unanswered when attempting to apply the Supreme Court rule to variations.
The critical question, according to the Supreme Court, is whether the claimed invention is a predictable arrangement of the prior art that results in the same manifest functionality. That is simply not the case here. In other words, any arrangement, predictable or not, of the cited prior art in this particular case still fails to result in the same manifest functionality. To be specific, any arrangement of the cited prior art reference yields a scooter that has safety wheels raised off the ground, lacks a supporting arm and employs two safety wheels rather than a single “universal rolling” wheel as shown in Figure 4 of the ‘674 patent. Thus, any resulting combination of Song and Handong is structurally and functionally different when compared to the presently claimed invention. Moreover, there is nothing in the Supreme Court’s KSR decision that authorizes, or even suggests, that an obviousness rejection is appropriate when less than all of the elements are found in the prior art.
The Tokai and Ritchie rationale seems to have never been cited by any other panels of the Court. While this may be due to many reasons, the fact that this reasoning could so easily invalidate virtually any claim in any patent, combined with the fact that it has only scarcely been utilized by the Court, suggests that this is an extraordinarily important issue for the Court as a whole to consider.
As Judge Newman explained in dissent in Tokai, “incremental but unobvious improvements serve the public interest, and are included in the purpose of the patent incentive.” Tokai at 1378. If a reviewing Court or patent examiner can merely conclude that this element or that element would be obvious to modify and then obvious to combine once modified it would become virtually impossible to ever obtain patent protection on incremental improvements, which have been the lifeblood of innovation and patent practice. Cf. In re Hummer, 241 F.2d 742, 744 (C.C.P.A. 1957) (“Progress is as important, however, in crowded arts as well as in those which are in the pioneer stage”).
Expanded to its logical extent the Tokai and Ritchie rationale would turn patent law upside down, thus this issue and this case are most appropriate for en banc rehearing.