Wednesday, August 29, 2012

Applied Materials loses appeal of BPAI cases on re-exams

Applied Materials, represented by Fish & Richardson, lost an appeal (by a 2-1 vote) concerning Reexamination Nos. 90/010,106; 90/010,107; 90/010,108; 90/010,109.

The CAFC ultimately affirmed the BPAI, but:

The Board’s opinions in the present appeals are not a model of clarity, but the Board’s “path may reasonably be discerned.” See Bowman, 419 U.S. at 285-86.

First, the Board’s conclusion that the prior art discloses dimensional values overlapping the ranges claimed in Applied’s Patents is supported by substantial evidence. While the Board failed to cite the relevant cases, this “path” to obviousness is consistent with this court’s precedent. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.”); see In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974). Such overlap itself provides sufficient motivation to optimize the ranges. See Peterson, 315 F.3d at 1330 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of . . . ranges is the optimum combination . . . .”).

Second, the Board’s finding that the dimensional variables were result-effective, rendering their optimization within the grasp of one of ordinary skill in the art, was supported by substantial evidence. See Boesch, 617 F.2d at 276. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” Aller, 220 F.2d at 456. This rule is limited to cases in which the optimized variable is a “result-effective variable.” In re Antonie, 559 F.2d 618, 620 (CCPA 1977); see Boesch, 617 F.2d at 276 (“[D]iscovery of an optimum value of a result effective variable . . . is ordinarily within the skill of the art.”). In the present case, because the prior art disclosed values overlapping the claimed ranges, the “general conditions” of the claim are disclosed. See Aller, 220 F.2d at 456; see also Boesch, 617 F.2d at 276. The question is whether the dimensions were known to be result-effective variables.

Contrary to Applied’s argument, there is evidence that the claimed groove dimensions are result-effective variables—rendering their optimization within the ordinary skill in the art. See Boesch, 617 F.2d at 276.

Of result-effective variables:

In cases in which the disclosure in the prior art was insufficient to find a variable result-effective, there was essentially no disclosure of the relationship between the variable and the result in the prior art. In Antonie, the court found the variable not result-effective because the prior art did not disclose the claimed ratio, or even recog- nize that one of the variables in the ratio was relevant to the desired property. 559 F.2d at 619-20. In In re Yates, 663 F.2d 1054 (CCPA 1981), the court found the variable not result-effective because there was no teaching of the claimed relationship and also “no evidence of this rela- tionship in the prior art.” 663 F.2d at 1056-57 (emphasis omitted). While the absence of any disclosure regarding the relationship between the variable and the affected property may preclude a finding that the variable is result-effective, the prior art need not provide the exact method of optimization for the variable to be result- effective. A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.


The outcome of optimizing a result-effective variable may still be patentable if the claimed ranges are “critical” and “produce a new and unexpected result which is differ- ent in kind and not merely in degree from the results of the prior art.” Aller, 220 F.2d at 456; see Antonie, 559 F.2d at 620. Similarly, a prima facie case of obviousness established by the overlap of prior art values with the claimed range can be rebutted by evidence that the claimed range is “critical” because it “achieves unexpected results.” Peterson, 315 F.3d at 1330 (quoting Geisler, 116 F.3d at 1469-70). But Applied provided no such evidence.


Nothing indicates that the optimization of the variables was anything other than the exercise of ordinary skill in the art. Likewise, the combination of the various dimensions from the different pieces of prior art was also obvious. The mere fact that multiple result-effective variables were combined does not necessarily render their combination beyond the capability of a person having ordinary skill in the art. Evidence that the variables interacted in an unpredictable or unexpected way could render the combination nonobvious, see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), but Applied failed to show anything unpredictable or unexpected in the interaction of the variables.

The KSR automaton is mentioned:

Applied argues that the triangular cross-section of the grooves in Breivogel renders that reference inadequate. One of ordinary skill in the art is not foreclosed from combining the Breivogel dimensions with the Weling cross-sectional shape merely because Breivogel discloses triangular grooves. A reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985); In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). Even though Breivogel describes grooves with a particular cross-sectional shape, this does not preclude one of ordi- nary skill in the art from utilizing Breivogel’s other teachings on the width, depth, and pitch in combination with other features of the Weling pad. One of ordinary skill in the art is not an “automaton.” KSR, 550 U.S. at 421. For the same reasons, Talieh’s teachings on the dimensions can be combined with the Weling pad, despite the fact that Talieh teaches grooves with a centered spiral or offset circular arrangement.

As to teaching away:

“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). While Applied’s alternative interpretation of Weling is plausible, the mere fact that alternative conclusions can be drawn from the evi- dence is not relevant to determining whether substantial evidence supports the Board’s conclusion. See Consolo, 383 U.S. at 620. The substantial evidence inquiry requires this court to determine whether the evidence reasonably supports the Board’s conclusion, which in this case it does. See Consol. Edison, 305 U. S. at 229.

Judge Newman dissented, and cited the recent Dietz & Watson case:

Nothing in the record shows that the patentee’s concurrent changes in width, depth, and pitch were simply “knowledge so basic that it certainly lies within the skill set of an ordinary artisan.” Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012). Yet the evidence is that the consumer has shown a clear preference for the patentee’s product as compared with the prior art products. This is highly rele- vant to the question of obviousness, for the purchasing consumer is in the best position to evaluate technological changes that appear to judges to be minor, yet that are of significance to the product’s properties, as measured in the marketplace. See Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 306 (Fed. Cir. 1985) (“Secon- dary considerations may be the most pertinent, probabitve, and revealing evidence available to the decision maker in reaching a conclusion on the obviousness/nonobviousness issue.”).
The Court observed in Dickinson v. Zurko, 527 U.S. 150, 162 (1999), that “[t]he APA requires meaningful review,” “not simply rubber-stamping agency factfinding.” On the correct law, the polishing pad with the claimed parameters has not been shown to be obvious. From my colleagues’ contrary holding, I respectfully dissent.


Post a Comment

<< Home