CAFC affirms BPAI obviousness in In re Kite

The case on appeal from the BPAI, IN RE PETER KITE AND DAVID HATTON , merited only a token per curiam affirmance at the CAFC.

Looking at the underlying BPAI case, one sees another obviousness rejection:

When assessing the obviousness of a claimed invention, it can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1741 (2007). Evidence of a suggestion, teaching, or motivation to combine
may flow from the prior art references themselves, the knowledge of one of
ordinary skill in the art, or, in some cases, from the nature of the problem to
be solved. In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999). It is
improper to base an obviousness conclusion on impermissible hindsight. Id.

When assessing the obviousness of a claim to 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. KSR, 127 S. Ct. at 1740. The test for obviousness is what
the combined teachings of the references would have suggested to one of
ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Only a reasonable expectation that the beneficial result will be achieved is
necessary to show obviousness. In re Longi, 759 F.2d 887, 897 (Fed. Cir.
1985).

On unexpected results:

A prima facie case of obviousness may be rebutted by a showing of
unexpected results. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Objective evidence of nonobviousness must be commensurate in scope with
the claims which the evidence is offered to support. The showing of
unexpected results must be reviewed to see if the results occur over the
entire claimed range. In re Clemens, 622 F.2d 1029, 1036 (CCPA 1980).
Evidence of unexpected results must be compared to the closest prior art.
In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979).

The totality of the evidence (i.e., evidence of unexpected results and
evidence of obviousness) is weighed to determine whether the claimed
invention by a preponderance of the evidence would have been obvious.
Oetiker, 977 F.2d at 1445. A strong prima facie case of obviousness may
outweigh evidence of secondary considerations, such as unexpected results,
in determining whether a prima facie case of obviousness exists. Newell
Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768-69 (Fed. Cir. 1988).

In re Best is cited:

Where the claimed and prior art products are identical or substantially
identical, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of the
claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977).

Of the losing arguments:

Appellants’ arguments attempt to attack the elements of the prima
facie case by arguing that there is no motivation for the combination, a
reasonable expectation of success is lacking and Raad is non-analogous art.
For the reasons below we are unpersuaded by Appellants’ arguments.

Of substitutions:

Stated differently, the substitution of Raad’s tetrasodium EDTA for
Root’s disodium EDTA is nothing more than the predictable use of prior art
elements (known chelating agents for inhibiting bacterial growth) according
to their established functions (i.e., inhibiting bacterial growth). KSR, 127 S.
Ct. at 1740. Accordingly, we find Appellants’ motivation argument to be
unpersuasive of reversible error.

Of evidence of unexpected results:

Appellants’ attach to the Appeal Brief Exhibits A1, A2, and C from
the Specification as showing that using tetrasodium EDTA produces
unexpectedly good bactericidal and destructive (or inhibitory) effects against
bacteria and yeasts, respectively (App. Br. 5). However, Exhibit’s A1, A2,
and C compare the bacterial effect (MBC) of tetrasodium EDTA to other
EDTAs (i.e., cupric disodium EDTA, magnesium disodium EDTA, ferric-
sodium salt EDTA), none of which is the disodium EDTA used in Root.
Moreover, Appellants have not explained whether the cupric disodium
EDTA, magnesium disodium EDTA or ferric-sodium salt EDTA are
equivalent to or behave similarly to the disodium EDTA in Root. In other
words, Appellants’ Exhibits A1, A2, and C do not compare the claimed
invention using tetrasodium EDTA to the closest prior art, Root. Burckel,
592 F.2d at 1179.

Footnote 4:


In order for a showing of “unexpected results” to be probative evidence of
non-obviousness, an applicant must establish that the results would not have
been expected by one skilled in the art. In re Freeman, 474 F.2d 1318, 1324
(CCPA 1973). Here, the Appellants have also failed to demonstrate that the
higher MBC value for disodium EDTA would have been unexpected.

Tags:

Appeal 2009-0407
Application 10/313,844
Ex parte PETER KITE
and DAVID HATTON

Before EDWARD C. KIMLIN, ADRIENE LEPIANE HANLON, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

**But see a recent BPAI case:
http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2009010849-06-18-2010-1

Ex parte PAVEL NOVAK

Appellant has shown that the Examiner erred by failing to establish a
prima facie case of obviousness of representative independent claim 1 on
appeal based upon Bauer in view of "what is well known in the art."

Appeal 2009-010849
Application 10/601,406