Monday, December 03, 2012

Alternative design choice found obvious without explicit motivation

In the case Ex parte AHUJA , the Board showed that explicit motivation for an alternative design choice is not needed for an obviousness rejection to stand.

We agree with the Examiner’s findings because to the extent Appellants are looking for an explicit motivation, suggestion, or teaching in the art, this rigid test has been foreclosed by the Supreme Court's holding in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). In KSR, the Court characterized the teaching, suggestion, motivation test as a “helpful insight” but found that when it is rigidly applied, it is incompatible with the Court’s precedents. Id. at 418-19. Thus, we find that an explicit teaching for substituting a supply side switch with a load side switch is a design choice and not required. See also In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed feature solves no stated problem and presents no unexpected result and “would be an obvious matter of design choice within the skill of the art” (citing Graham v. John Deere Co., 383 U.S. 1 (1966) and In re Gazda, 219 F. 2d 449 (1955))).

On the matter of teaching away, the use of an alternative is not, by itself, teaching away:

As to Appellants’ teaching away argument, the Examiner finds that Montague’s transformer is fully capable of functioning if the supply side switch were substituted with a load side switch. Ans. 4, 16. As such, merely substituting Montague’s supply side switch with a load supply switch, is not necessarily teaching away, but rather is an alternative or equivalent method of selecting that arrives at the same result. “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). Teaching an alternative or equivalent method, however, does not teach away from the use of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965). In this case, since Montague’s supply side switch is an alternative teaching to the claimed load side switch, Appellants have not shown that Montague teaches away from the load side switch recited in claim 1.

Separately, the Board's response as to an accusation of hindsight reasoning:

Any judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper.

In re McLaughlin 443 F.2d 1392, 1395 (CCPA 1971).

And, Keller is cited:

That is, all of the features of the structure in the secondary reference need not be bodily incorporated into the primary reference, but consideration should be given to what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art (see In re Keller, 642 F.2d 413, 425 (CCPA 1981)).

In that regard, the Supreme Court has indicated that:
[It is error to] assum[e] that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem. . . . Common sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (citation omitted). Furthermore, the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of independent judgment (see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984)). As such, we find that Montague would be adjusted to accommodate teachings from Dallhammer by one of ordinary skill in the art.


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