CAFC: References need not be physically combinable for obviousness rejection

Federal Circuit buildingAllied Erecting & Dismantling Co. v. Genesis Attachments, LLC (Fed. Cir. June 15, 2016) (Before Dyk, Wallach, and Newman, J.) (Opinion for the court, Wallach, J.)

Genesis Attachments, LLC (“Genesis”) filed a petition for inter partes reexamination of a patent owned by Allied Erecting & Dismantling Co. (“Allied”) on an interchangeable jaw apparatus for building demolition.  The patent claimed a jaw apparatus with two moveable blades which rotate about a main pivot pin, where the pivot pin is part of an interchangeable bridge housing.  The patent further claims that the jaw apparatus can be removed or attached to a construction vehicle using separate attachment pins, without needing to remove the main pivot pin. In this way, the jaw apparatus can be easily attached or removed as a single unit.

The examiner initially rejected the claims as obvious over various prior art references.  Allied amended the claims to further recite that the bridge housing “encased” the main pivot pin, and that both blades were “moveable” relative to the bridge housing.  The Examiner allowed the amended claims.  Genesis appealed the decision of the Examiner to the Patent Trial and Appeal Board (“Board”).  On appeal, the Board concluded that the claims would be obvious over two references – Caterpillar and Ogawa.

Caterpillar described an interchangeable jaw apparatus where both jaws rotated around a main pivot pin, but one would be connected to the construction vehicle such that it would not move, and the other would be connected to a hydraulic cylinder, allowing it to move. Because the jaws were only connected to the equipment via attachment pins, the jaws could be easily removed when worn, or when a different tool was needed.

Ogawa disclosed a bucket attachment for excavation, where the bucket attachment included a bucket and a sub-bucket, both of which rotated around a main pivot pin in a pincer-like motion.  Through a linkage system, both the bucket and sub-bucket could be moved by a single hydraulic cylinder.  Ogawa was designed so the two buckets could be moved relative to one another along a wide range of angles.

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The Board rejected Allied’s claims as obvious over Caterpillar in view of Ogawa by combining the quick-change feature of Caterpillar with the two movable components around a main pivot pin of Ogawa.  Further, a person of ordinary skill would be motivated to make the combination so that the immovable jaw of Caterpillar could move like the sub-bucket of Ogawa, while maintaining the interchangeability of Caterpillar.  Because this was a new ground of rejection, Allied was able to submit further amendments to the claims.  The examiner rejected the twice-amended claims over Caterpillar and Ogawa.  The Board affirmed the examiner’s rejections. Allied appealed to the Federal Circuit.

Allied argued that the Board’s finding of a motivation to combine was based on hindsight reasoning.  In particular, the jaw apparatus of Caterpillar was not physically combinable with the bucket mechanism of Ogawa.  The Court disagreed, and found that substantial evidence supported the Board’s decision.  The test for obviousness is not whether the devices disclosed in various references are physically combinable, but whether a person of ordinary skill, in possession of teachings of the references, could arrive at the claimed invention. Further, the modification of Caterpillar would be minimal, as it would simply require replicating the mechanism for moving the first jaw to move the second jaw.

Allied also argued that Caterpillar expressly teaches away from Ogawa because Caterpillar requires that the main pivot pin not be the attachment point to the frame.  Instead, a separate set of pins is used, allowing the device of Caterpillar to be easily removed from a construction vehicle.  In contrast, Ogawa’s mechanism attaches the two buckets to a vehicle frame using the main pivot pin.  Thus, because the teachings of Ogawa require ignoring the teachings of what Caterpillar suggests, Caterpillar teaches away from the combination with Ogawa.  The Court disagreed.  While Caterpillar did teach separate pivot and attachment pins, it was the quick attachment system of Caterpillar which was used to modify Ogawa to arrive at the claimed invention, not the jaw apparatus.  Further, the Board based its decision on Ogawa’s teaching of a wide angular range of movement, and not Ogawa’s use of a single, rather than two hydraulic cylinders, to support its finding.

The Court affirmed the finding of the Board.

Also contributing to this summary was Parker Hancock.

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Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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Discuss this

There are currently 2 Comments comments.

  1. Ely Erlich July 4, 2016 2:36 am

    Is there a US patent attorney out there that has analyzed this case and thinks the authors here have overstated the CAFC ‘general’ stance on obviousness? If this analysis is correct and this is precedential it basically makes all mechanical patents in the US obvious… tell me it ain’t so!

  2. Anon July 4, 2016 9:44 am

    Ely,

    I have not analyzed this case, and only glossed over this article because the contents did not seem like a deep analysis to me (lot’s of “this is what the case said” and little of “this is why the larger take-away supports the ( perhaps hyperbolic) Headline.

    It indeed would be highly suspect if such a “bah, combining things destroying the references themselves does not matter” rule of law were to be the takeaway. But I think that such a takeaway is unwarranted, and that the decision is a bit more nuanced as to the ability to combine individual aspects within a reference without regard to a position of “feedback” check to see whether or not the reference survives alteration of the taken smaller individual aspect.