Pro se appellant defeated on obviousness in In re MOUTTET
The CAFC affirmed the Board in an appeal brought by a pro se appellant in In re MOUTTET.
Substantial evidence supports the Board’s factual determinations, and we agree with the Board’s conclusion that Mouttet’s claimed invention would have been obvious to one having ordinary skill in the art. We therefore affirm.
Of the Board
On March 29, 2011, the Board affirmed the examiner’s rejection of all twenty claims.5 Ex parte Mouttet, 2011 Pat App. LEXIS 15036, at *1. The Board agreed that an ordinarily skilled artisan, i.e., an electrical engineer with several years of related industry experience, would have recognized that substituting Das’s wired crossbar array for Falk’s optical path crossbar would have predictably yielded Mouttet’s claimed computing device. Id. at *6, *9 (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007)). The Board found that while Falk notes certain advantages to optical devices, the reference in no way suggests that using electronic hardware instead of optical hardware would destroy Falk’s operability as a programmable arithmetic unit, nor that it teaches away from electrical circuitry.
The basic law on 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). 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.
As to evidentiary standards:
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.
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); Gartside, 203 F.3d at 1312 (noting that the possibility of drawing inconsistent con-
clusions from the evidence does not prevent the Board’s
findings from being supported by substantial evidence)
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.
As to teaching away:
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 re Gurley, 27 F.3d 551, 553, we
emphasized that “[a] reference may be said to teach away
when a person of ordinary skill, upon reading the refer-
ence, would be discouraged from following the path set
out in the reference, or would be led in a direction diver-
gent 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.
Substantial evidence supports the Board’s factual determinations, and we agree with the Board’s conclusion that Mouttet’s claimed invention would have been obvious to one having ordinary skill in the art. We therefore affirm.
Of the Board
On March 29, 2011, the Board affirmed the examiner’s rejection of all twenty claims.5 Ex parte Mouttet, 2011 Pat App. LEXIS 15036, at *1. The Board agreed that an ordinarily skilled artisan, i.e., an electrical engineer with several years of related industry experience, would have recognized that substituting Das’s wired crossbar array for Falk’s optical path crossbar would have predictably yielded Mouttet’s claimed computing device. Id. at *6, *9 (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007)). The Board found that while Falk notes certain advantages to optical devices, the reference in no way suggests that using electronic hardware instead of optical hardware would destroy Falk’s operability as a programmable arithmetic unit, nor that it teaches away from electrical circuitry.
The basic law on 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). 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.
As to evidentiary standards:
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.
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); Gartside, 203 F.3d at 1312 (noting that the possibility of drawing inconsistent con-
clusions from the evidence does not prevent the Board’s
findings from being supported by substantial evidence)
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.
As to teaching away:
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 re Gurley, 27 F.3d 551, 553, we
emphasized that “[a] reference may be said to teach away
when a person of ordinary skill, upon reading the refer-
ence, would be discouraged from following the path set
out in the reference, or would be led in a direction diver-
gent 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 Lawrence B. Ebert at 9:06 AM
1 Comments:
This decision is a major logical blunder by the CAFC (and PTO). As a matter of engineering logic the two main prior art references (Das and Falk) do not even share any analogous structure to be combinable. The only reason they were used in combination was because they both used the word "crossbar" in different contexts (obviously found by a text search without any understanding of the technology).
This shows to me there is no apparent equivalence between the legal "obviousness" standard for patents and the real world standard of obviousness used in engineering.
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