Board discusses secondary considerations in appeal of re-exam 95/000,161
An appeal in re-exam 95/000,161 ( Aircraft Medical v. Verathon ) produced discussion of many legal issues.
On claim broadening in the context of a re-exam:
“A patentee is not permitted to enlarge the scope of a patent claim during reexamination . . . Whether amendments made during reexamination enlarge the scope of a claim is a matter of claim construction . . . . In so doing, we must analyze the scope of the claim prior to reexamination and compare it with the scope of the claim subsequent to reexamination.” Creo Products, Inc. v. Presstek, Inc., 305 F.3d 1337, 1344 (Fed. Cir. 2002) (internal citations omitted).
“A [reexamined] claim that is broader in any respect is considered to be broader than the original claim even though it may be narrower in other respects.” In re Freeman, 30 F.3d 1459, 1464 (Fed. Cir. 1994). During reexamination, as with a reissue application, a claim “is broader in scope than the original claims if it contains within its scope any conceivable apparatus or process which would not have infringed the original patent.” Id.
On scope of invention:
Moreover, the claims, not the specification, measure the protected patent right to exclude others. Novo Nordisk of North America Inc. v. Genentech Inc., 77 F.3d 1364, 1369 (Fed. Cir. 1996). Patent Owner directs us to no language in the claims that constitutes a disavowal of straight-bladed devices, only to the content of the Specification discussing some perceived deficiencies arising from the use of such devices. While the claims must be read in view of the specification of which they are a part, Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005), Patent Owner has asked us to harmonize the Patent Owner’s narrow interpretation with the Specification, rather than with the claim language itself. We decline to do so when it is the Patent Owner’s burden to precisely define the invention in the claims. See In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (citing 35 U.S.C. § 112 ¶ 2 (“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”) (emphasis added)). Patent Owner has also provided no reason or evidence as to why a skilled artisan would have interpreted the 30 degree angle of the amended claims to reference both the elongate base to elongate lifter angle and the horizontal to elongate lifter angle.
Of claim construction:
“While the Board must give the terms their broadest reasonable construction, the construction cannot be divorced from the specification and the record evidence.” In re NTP, Inc., 654 F3d 1279, 1288 (Fed. Cir. 2011) (citing In re Suitco Surface, 603 F.3d 1255, 1259 (Fed. Cir. 2010).
In re Best is cited:
When a claimed device appears to be substantially identical to a device disclosed by the prior art, the burden properly falls to the Patent Owner to prove that the device of the prior art does not necessarily or inherently possess characteristics or properties attributed to the claimed product. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). In this case, we find the testimony of Dr. Blandford persuasive. It is reasonable to find that the relative movement of the camera along the blade as disclosed in Wood provides a view of at least the laryngopharynx at least at one point along the track thereof.
On overlapping ranges:
The overlapping ranges of Bellhouse suggest the recited base-lifter angles of claims 10-12. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997)(citing In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974)(“[a] claimed invention is rendered prima facie obvious by the teachings of a prior art reference that discloses a range that touches the range recited in the claim.”).
KSR is invoked:
To do so would be no more than the predictable use of a camera for improved viewing over the naked eye during intubation. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (The question to be asked is “whether the improvement is more than the predictable use of prior art elements according to their established functions.”).
As to references:
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. Merck & Co v. Biocraft Laboratories, 874 F.2d 804, 807 (Fed. Cir. 1989)(“all disclosures of the prior art, including unpreferred embodiments, must be considered.”)(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
Of secondary considerations:
Once a prima facie case of obviousness has been established, objective evidence of secondary considerations must be considered in making an obviousness decision. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538- 39 (Fed. Cir. 1983). Any initial obviousness determination is reconsidered anew in view of the proffered evidence of nonobviousness. See In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976); In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990).
Considering the totality of the evidence, we are of the opinion that Patent Owner’s evidence of secondary considerations is insufficient to outweigh the evidence of obviousness of record. (...)
However, for objective evidence to be accorded substantial weight, an applicant must establish a nexus between the evidence and the merits of the claimed invention. In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995) (appellant offers no evidence that the market reaction to appellants’ invention is rooted in the subject matter claimed). Put another way, commercial success or other secondary considerations may presumptively be attributed to the claimed invention only where “the marketed product embodies the claimed features, and is coextensive with them.” Ormco Corp. v. Align Tech. Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006) (quoting Brown & Williamson Tobacco Corp. v. Phillip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000)). (...)
See Ormco, 463 F.3d at 1311- 12. (...) Moreover, Patent Owner failed to show that the commercial success and acclaim that the GlideScope enjoyed was due to anything disclosed in the ‘447 patent which was not readily available in the prior art. Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 1580 (Fed. Cir. 1983) (holding claimed invention obvious where patent holder “failed to show that such commercial success ... was due to anything disclosed in the patent in suit which was not readily available in the prior art”). Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If commercial success is due to an element in the prior art, no nexus exists.”); Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006) (“[I]f the feature that creates the commercial success was known in the prior art, the success is not pertinent.”). (...)
Patent Owner’s statements do not even discuss Bellhouse or Wood in relation to the commercial success and acclaim. (see PO Res. Br. 4-6). Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008) ("While the evidence shows that the overall system drew praise as a solution to a felt need, there was no evidence that the success of the commercial embodiment . . . was attributable to the . . . only material difference between [the prior art] and the patented invention.") (citation omitted, emphasis added); In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) ("Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention"). Here, neither the angle nor the use of a camera in laryngoscopy is novel.
Of new rejections:
It is the teachings of Bellhouse as a whole, and not the BelScope embodiment, that is prior art being applied in the Requester’s proposed rejection. See Merck, 874 F.2d at 807; Lamberti, 545 F.2d at 750. Accordingly, negative properties of the BelScope are not indicative of negative properties of the prior art as a whole.
Thus, in view of the above, the Examiner’s refusal to adopt the Requester’s proposed rejection of claim 37 under 35 U.S.C. § 103(a) as unpatentable over Bellhouse and Berall is REVERSED and denominated as a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.77(a) & (b).
As to petitionable matters:
We do not have jurisdiction to make a determination on this issue. Therefore, the Examiner’s objection, as well as the entry of the Amendment dated April 6, 2010, is properly addressed by way of petition. See MPEP § 1201; see also Ex Parte Frye, 94 USPQ2d 1072, 1077-78 (BPAI 2010) (precedential). Our decision rendered herein is not affected by the duplicity of claims 321 or 322.
On claim broadening in the context of a re-exam:
“A patentee is not permitted to enlarge the scope of a patent claim during reexamination . . . Whether amendments made during reexamination enlarge the scope of a claim is a matter of claim construction . . . . In so doing, we must analyze the scope of the claim prior to reexamination and compare it with the scope of the claim subsequent to reexamination.” Creo Products, Inc. v. Presstek, Inc., 305 F.3d 1337, 1344 (Fed. Cir. 2002) (internal citations omitted).
“A [reexamined] claim that is broader in any respect is considered to be broader than the original claim even though it may be narrower in other respects.” In re Freeman, 30 F.3d 1459, 1464 (Fed. Cir. 1994). During reexamination, as with a reissue application, a claim “is broader in scope than the original claims if it contains within its scope any conceivable apparatus or process which would not have infringed the original patent.” Id.
On scope of invention:
Moreover, the claims, not the specification, measure the protected patent right to exclude others. Novo Nordisk of North America Inc. v. Genentech Inc., 77 F.3d 1364, 1369 (Fed. Cir. 1996). Patent Owner directs us to no language in the claims that constitutes a disavowal of straight-bladed devices, only to the content of the Specification discussing some perceived deficiencies arising from the use of such devices. While the claims must be read in view of the specification of which they are a part, Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005), Patent Owner has asked us to harmonize the Patent Owner’s narrow interpretation with the Specification, rather than with the claim language itself. We decline to do so when it is the Patent Owner’s burden to precisely define the invention in the claims. See In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (citing 35 U.S.C. § 112 ¶ 2 (“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”) (emphasis added)). Patent Owner has also provided no reason or evidence as to why a skilled artisan would have interpreted the 30 degree angle of the amended claims to reference both the elongate base to elongate lifter angle and the horizontal to elongate lifter angle.
Of claim construction:
“While the Board must give the terms their broadest reasonable construction, the construction cannot be divorced from the specification and the record evidence.” In re NTP, Inc., 654 F3d 1279, 1288 (Fed. Cir. 2011) (citing In re Suitco Surface, 603 F.3d 1255, 1259 (Fed. Cir. 2010).
In re Best is cited:
When a claimed device appears to be substantially identical to a device disclosed by the prior art, the burden properly falls to the Patent Owner to prove that the device of the prior art does not necessarily or inherently possess characteristics or properties attributed to the claimed product. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). In this case, we find the testimony of Dr. Blandford persuasive. It is reasonable to find that the relative movement of the camera along the blade as disclosed in Wood provides a view of at least the laryngopharynx at least at one point along the track thereof.
On overlapping ranges:
The overlapping ranges of Bellhouse suggest the recited base-lifter angles of claims 10-12. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997)(citing In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974)(“[a] claimed invention is rendered prima facie obvious by the teachings of a prior art reference that discloses a range that touches the range recited in the claim.”).
KSR is invoked:
To do so would be no more than the predictable use of a camera for improved viewing over the naked eye during intubation. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (The question to be asked is “whether the improvement is more than the predictable use of prior art elements according to their established functions.”).
As to references:
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. Merck & Co v. Biocraft Laboratories, 874 F.2d 804, 807 (Fed. Cir. 1989)(“all disclosures of the prior art, including unpreferred embodiments, must be considered.”)(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
Of secondary considerations:
Once a prima facie case of obviousness has been established, objective evidence of secondary considerations must be considered in making an obviousness decision. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538- 39 (Fed. Cir. 1983). Any initial obviousness determination is reconsidered anew in view of the proffered evidence of nonobviousness. See In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976); In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990).
Considering the totality of the evidence, we are of the opinion that Patent Owner’s evidence of secondary considerations is insufficient to outweigh the evidence of obviousness of record. (...)
However, for objective evidence to be accorded substantial weight, an applicant must establish a nexus between the evidence and the merits of the claimed invention. In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995) (appellant offers no evidence that the market reaction to appellants’ invention is rooted in the subject matter claimed). Put another way, commercial success or other secondary considerations may presumptively be attributed to the claimed invention only where “the marketed product embodies the claimed features, and is coextensive with them.” Ormco Corp. v. Align Tech. Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006) (quoting Brown & Williamson Tobacco Corp. v. Phillip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000)). (...)
See Ormco, 463 F.3d at 1311- 12. (...) Moreover, Patent Owner failed to show that the commercial success and acclaim that the GlideScope enjoyed was due to anything disclosed in the ‘447 patent which was not readily available in the prior art. Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 1580 (Fed. Cir. 1983) (holding claimed invention obvious where patent holder “failed to show that such commercial success ... was due to anything disclosed in the patent in suit which was not readily available in the prior art”). Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If commercial success is due to an element in the prior art, no nexus exists.”); Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006) (“[I]f the feature that creates the commercial success was known in the prior art, the success is not pertinent.”). (...)
Patent Owner’s statements do not even discuss Bellhouse or Wood in relation to the commercial success and acclaim. (see PO Res. Br. 4-6). Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008) ("While the evidence shows that the overall system drew praise as a solution to a felt need, there was no evidence that the success of the commercial embodiment . . . was attributable to the . . . only material difference between [the prior art] and the patented invention.") (citation omitted, emphasis added); In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) ("Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention"). Here, neither the angle nor the use of a camera in laryngoscopy is novel.
Of new rejections:
It is the teachings of Bellhouse as a whole, and not the BelScope embodiment, that is prior art being applied in the Requester’s proposed rejection. See Merck, 874 F.2d at 807; Lamberti, 545 F.2d at 750. Accordingly, negative properties of the BelScope are not indicative of negative properties of the prior art as a whole.
Thus, in view of the above, the Examiner’s refusal to adopt the Requester’s proposed rejection of claim 37 under 35 U.S.C. § 103(a) as unpatentable over Bellhouse and Berall is REVERSED and denominated as a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.77(a) & (b).
As to petitionable matters:
We do not have jurisdiction to make a determination on this issue. Therefore, the Examiner’s objection, as well as the entry of the Amendment dated April 6, 2010, is properly addressed by way of petition. See MPEP § 1201; see also Ex Parte Frye, 94 USPQ2d 1072, 1077-78 (BPAI 2010) (precedential). Our decision rendered herein is not affected by the duplicity of claims 321 or 322.
posted by Lawrence B. Ebert at 6:25 AM
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