Thursday, January 31, 2013

Appellant Coleman wins obviousness reversal in food bar case

From Ex parte Coleman:

KSR was cited in a way to "cut back" on obviousness:

During examination, the Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

Appellants win:

Appellants argue, and we agree, that the Examiner has not adequately explained why one skilled in the art would modify the food bar of Manning to incorporate water-soluble dietary fibers in each of the components of the food bar. App. Br. 12-14. The Examiner has not adequately explained why the redistribution of water-soluble dietary fibers would lead to any organoleptic property that would offset the fibers’ off taste because, as argued by Appellants, the off flavors would still exist whether or not the fibers are in one layer or in multiple layers. Id. at 13. Thus, the Examiner’s proposed modification does not solve the problem of the fibers’ off taste.

KSR was cited as to hindsight:

Here, the Examiner’s proposed modification appears premised on using Appellants’ claimed invention as a road map rather than an articulated reasoning based on teachings derived from the applied references’ disclosures. The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 421(citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”)); see In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (“The mere fact that the prior art may be modified in the manner suggested by the Examiner does not make the modification obvious unless the prior art suggested the desirability of the modification.”).


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