Posts Tagged: "obvious"

In re: Natural Alternatives, LLC, 2015-1911 (opinion and errata) is a non-precedential but still notable case from the U.S. Court of Appeals for the Federal Circuit that finds the claims of a patent that was in reexamination to be patentable, despite the examiner and the Patent Trial and Appeal Board finding that the claims were obvious. While the examiner had cobbled together various references to make an obviousness rejection, the examiner failed to set forth “sufficient facts” supporting his position that the prior art disclosed the limitations of Natural’s claims in a manner that renders the claimed invention obvious.

The Court affirmed the Board’s finding that two previous patents render the ‘695 Patent obvious. The Court rejected ClassCo’s argument that “[a] basic characteristic of a KSR combination is that it only unites old elements with no change in their respective function.” Slip op. at 7 (internal quotation marks omitted). The Court instead emphasized KSR’s flexible approach to a § 103 analysis.

The Court recognized that “‘[c]ommon sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning.’” However, “there are at least three caveats to note in applying ‘common sense’ in an obviousness analysis.” First, common sense is typically invoked to provide a known motivation to combine, and not to supply a missing claim limitation. Second, while some cases have allowed use of common sense to supply a missing claim limitation, “the limitation in question was unusually simple and the technology particularly straightforward.” Third, common sense “cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified.”

O’Malley recognized that in Perfect Web the Federal Circuit did authorize the use of common sense to supply a missing claim limitation, but she pointed out that this was the only case where that has been done. O’Malley further explained that in Perfect Web that which was missing was “unusually simple and the technology particularly straightforward.” In fact, in Perfect Web, which dealt with sending e-mail to an e-mail list, the missing claim limitation was nothing more than merely repeating the step of resending e-mails in accordance with the claim. Thus, O’Malley explained that Perfect Web is properly considered an exception to allowing common sense to supply a missing claim limitation, rather than the rule.

Amongst the appeals involving patent-eligibility rejections, the most recently filed appeal brief was filed in November 2015. Thus, all of the appeal briefs and most of the PTAB decisions were filed prior to the development of more recent case law that has further illustrated why and how various software technologies can be patent eligible. Further, most of the eligibility-involved PTAB decisions were issued prior to these recent cases, which may further have disadvantaged the appellants. Continued assessment of PTAB decisions on post-Alice appeals will provide further insight as to the Board’s interpretation of this area of law fraught with uncertainty and applicant frustration.

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

The Court noted that decisions related to compliance with the Board’s procedures are reviewed for abuse of discretion. As far as the “reasonable expectation of success” requirement, the Court noted that the Board improperly looked to whether one would reasonably expect the references to operate as those references intended once combined. The Court held that this was the incorrect standard, and instead one must have the motivation to combine with the expectation of achieving what is claimed in the patent-at-issue. The Court held, however, that while the Board conflated the reasonable expectation of success standard and motivation to combine, it nonetheless made sufficient factual findings to support its judgment that the claims at issue were not invalid.

The Court affirmed the obviousness rejection, noting that even under the proper claim construction, substantial evidence supported the Board’s factual findings underlying its obviousness determination. The examiner properly relied on evidence from the request for reexamination showing a motivation to combine prior art, by combining a base system combined with a known improvement. , Man Machine did not introduce any objective indicia of nonobviousness. Thus, the Court affirmed the finding of obviousness.

the Courts have found it difficult to use the Mayo two-part test in the examination of a patent’s validity thus creating great uncertainty… One should not confuse the uncertainty of the complex U.S. patent system with the clarity of the Alice decision. There is no reason to believe any new legislation will provide any improvement in deciding what should, and what should not, be patentable.

The Court held that dealing “physical playing cards” did not constitute patent eligible territory. This constituted a “purely conventional” activity, like the conventional computer implementation that fell short in Alice. The Court found there was no inventive concept sufficient to transform the subject matter into a patent-eligible application of an abstract idea.

A patent is a proprietary right granted by the Federal government pursuant to laws passed by Congress. The Congressional power to authorize patents is found in Article I, Section 8, Clause 8, of the United States Constitution. exclusive rights are provided for a limited time as an incentive to inventors, entrepreneurs and corporations to engage in research and development, to spend the time, energy and capital resources necessary to create useful inventions; which will hopefully have a positive effect on society through the introduction of new products and processes of manufacture into the economy, including life saving treatments and cures. See Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480 (1974).

The Court affirmed the obviousness rejection. “As the Board properly found, one of ordinary skill would have been motivated to pursue the desirable properties taught by Wong [a shorter reaction time like Urbanski’s], even if that meant foregoing the benefit [of more stable fibers from a longer reaction time] taught by Gross.” One of ordinary skill could have been motivated to modify Gross in view of Wong to achieve the desired effects.

The PTAB refused entry of the supplemental information because Redline did nothing to justify submitting it after filing the initial IPR petition and even after the institution decision was made, other than to say that submitting it then was cost effective. The PTAB pointed out that the authorization to submit supplemental information under 42.123 does not require the PTAB to accept such information even if it is timely, noting that the moving party bears the burden in all cases to demonstrate entitlement to the relief, a rule that patent owners seeking to amend are all too familiar with (i.e., despite there being a right to file an amendment the PTAB says there is no associated right to amend).

The issue on appeal was whether a mixture comprising at least 92% of the (6S) isomer of leucovorin would have been obvious when both the 50/50 mixture of isomers and the pure (6S) isomer were known in the art. Affirming the district court, the Federal Circuit agreed that “one of skill would have been motivated to modify the prior art 50/50 mixture to make the claimed mixture,” especially when it was known that the desired activity lies with the (6S) isomer. The Court found no evidence indicating that the claimed mixture “possess[ed] unexpected advantages over the prior art pure material” so as to overcome obviousness.

The legal determination about whether an invention is obvious seems completely subjective and sometimes even arbitrary. In some technology areas nothing ever seems to be obvious, in other areas virtually everything seems to be obvious. This requires a patent attorney or patent agent to have familiarity with how patent examiners interpret the law of obviousness in a particular innovative area. You might suspect that this would mean that for low-tech gadgets it is more difficult to describe an invention that is non-obvious; while in high tech areas it would be easier to describe an invention as non-obvious. That frequently isn’t the case though, which leads to even greater frustration for inventors.