Wednesday, January 02, 2013

Zumbiel case on obviousness: the return of the automaton?

In an appeal from the Board in Zumbiel v. Kappos, the CAFC affirmed the decision of the PTAB, as to obviousness of some claims, nonobviousness of others. There was a dissent about the nonobviousness ruling.

In the first footnote, the proper name for the Board was mentioned:

Pursuant to the Leahy-Smith America Invents Act amendments to Title 35, the Board officially changed its name from the Board of Patent Appeals and Interferences to the Patent Trial and Appeal Board on September 16, 2012. Leahy-Smith America Invents Act, Pub. L. No. 112- 29, 125 Stat. 284 (2011).

KSR and Graham were both cited:

Obviousness is a question of law, KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), based on four factual inquiries: the scope and content of the prior art, the differences between the prior art and the claimed invention, the level of ordinary skill in the field of the invention, and any relevant objective considerations. Id. at 406 (citing Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966)).

BRI came up:

“Although the PTO gives claims the broadest reasonable interpretation consistent with the written description . . . claim construction by the PTO is a question of law that we review de novo . . . just as we review claim con- struction by a district court.” In re Baker Hughes, Inc., 215 F.3d 1297, 1301 (Fed. Cir. 2000) (internal citations omitted). In this case, the Board’s construction of “free ends” is legally correct and was met by the prior art, as was the “single tear-line” limitation.

The issue of the limiting effect of preambles arose with a cite to: Allen Eng’g Corp. v. Bartell Indus., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (quoting Krop
v. Robie, 187 F.2d 150, 152 (C.C.P.A. 1951))
AND to Catalina Marketing International, Inc. v. Coolsav-, Inc. 289 F.3d 801, 808 (Fed. Cir. 2002).

Bottom line: The Board’s factual determinations are supported by substantial evidence, and as a result, we hold, independent representative claims 1, 8, and 13 invalid as obvious and dependent representative claims 2, 9, and 14 not obvious. We affirm.

The dissent of Judge Prost, as to findings of non-obviousness, is of interest:

This case is about a paper carton. Claim 2 recites a carton for storing beverage cans, much like the twelve- pack container found all over the country. The patentee nonetheless claims that something about the way his box opens is special, in that it allows consumers to get to the cans quickly without ripping the box open and making a mess. Here is how it works: There is a finger flap (a removable area the size of a finger tip) on the top surface of the box. The finger-flap is centered on a tear-line, which marks the edge of the removable corner of the box. When the consumer wants to open the box, she inserts her finger through the flap and uses it as a grip to tear off the removable corner.
So far, so good. Except that somebody else beat the patentee to his idea by almost fifty years. United States Patent No. 3,178,242 (filed May 13, 1963) (“Ellis”) discloses a beverage carton with a removable corner and a finger opening


So let’s be clear what claim 2 is about. The claimed invention takes the opening from Ellis, takes the stacked can configuration from another box, and puts them to- gether. The result is—as one would expect—a box that has the known benefits of Ellis’s opening and the known benefits of a stacked can configuration.
Why is this assembly non-obvious? Because, the Board explains, the patentee has solved a difficult implementation problem, the solution to which was supposedly not obvious to box makers who lacked extraordinary skill. The secret lies in the proper positioning of the tear line. That is, according to the Board, ordinary box makers would not have put the tear line between the first two cans in the top row.
Where else could have they put it? There are just four other options: (1) above the first can, (2) above the second can, (3) in front of the first can, (4) behind the second can. The first two alternatives are just offensive to common sense: With the cans right below, there would be no room to push the flap through (the flap is positioned at the center of the tear line). The third and fourth options are not quite as illogical, but even without expertise in box making, one may intuit that they make awkward designs (the third opens too little, the fourth too much). More importantly, however, whether some of the alternatives would work just as well or not, the patentee’s choice of tear-line-placement involves no more than the exercise of common sense in selecting one out of a finite— indeed very small—number of options. And there are no unexpected results: The opening works the same way that it did in Ellis, and the stacked can arrangement is the same as it was before. The patentee put the tear-line behind the first can; the opening exposed the first can. Had he put it behind the second can, two cans would have been exposed. That’s just obvious. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Given twelve cans, some cardboard, a pair of scissors, and some time for trial and error, one of ordinary skill in box-making should be able to rearrange the cans in Ellis.

The bottom line in the dissent:

The point here is not that the Board got the facts wrong. The point is that contrary to the Supreme Court’s instructions, an “overemphasis on the importance of [teachings of prior art]” has insulated the Board’s analysis from pragmatic and common sense considerations that are so essential to the obviousness inquiry. KSR, 550 U.S. at 419. The Board’s approach relegates one of ordi- nary skill to an automaton. Should this approach become commonplace, it would lower the obviousness bar and hence hinder competition and innovation. That is why, unlike the majority, I do not see any room for deference to the Board’s determination in this case.

I respectfully dissent.

Note that Judge Prost used the words "low quality":

Because I believe that a common sense application of the obviousness doctrine should filter out low quality patents such as this one


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