Aperio loses at PTAB in re-examination 95/000,518 related to US 7,457,446

The rejection of claims in US 7,457,446 in re-examination 95/000,518 [ HAMAMATSU PHOTONICS K.K. v Aperio ] is affirmed.

As to written description:


To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellant possessed the claimed
invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[I]t is the specification itself
that must demonstrate possession. And while the description requirement
does not demand any particular form of disclosure, or that the specification
recite the claimed invention in haec verba, a description that merely renders
the invention obvious does not satisfy the requirement.” Id. at 1352,
citations omitted. Accordingly, even if it would have been obvious to apply
the Specification’s teaching of a single line scan camera to a plurality of line
scan cameras, the Specification fails to meet the written description
requirement under Ariad.



The need for evidence, rather than arguments, is mentioned:


Appellant has not provided sufficient evidence that one of ordinary skill
in the art, upon reading the ‘446 patent disclosure, would have recognized
description of the claimed subject matter. Arguments of counsel cannot take
the place of evidence lacking in the record. Estee Lauder Inc. v. L’Oreal,
S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).

Again, a description that merely renders the invention obvious does
not satisfy the written description requirement. Ariad.



Footnote 4 invokes Borden:

Appellant’s Rebuttal Brief argues for the first time that claim 1 requires
focus adjustments during image acquisition and that Douglass does not
disclose focus adjustments during image acquisition. Reb. Br. 6-7. “[T]he
reply brief [is not] an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner’s rejections, but
were not.” Ex parte Borden, 93 USPQ 2d, 1473, 1474 (BPAI 2010)

Keller is mentioned:



Requester correctly argues that the test is not whether the features of a
secondary reference can be bodily incorporated into the primary reference,
but what the combined teachings would have suggested to one of ordinary
skill in the art. Resp. Br. 7. See also In re Keller, 642 F.2d at 425 (“The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.”)


Of secondary considerations:


In particular, an applicant
asserting secondary considerations to support its contention of
nonobviousness bears the burden of proof of establishing a nexus between
the claimed invention and evidence of secondary considerations. In re
Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996).

Unexpected Results

“One way for a patent applicant to rebut a prima facie case of
obviousness is to make a showing of ‘unexpected results,’ i.e., to show that
the claimed invention exhibits some superior property or advantage that a
person of ordinary skill in the relevant art would have found surprising or
unexpected. The basic principle behind this rule is straightforward – that
which would have been surprising to a person of ordinary skill in a particular
art would not have been obvious.” In re Soni, 54 F.3d 746, 750 (Fed. Cir.
1995). “Mere improvement in properties does not always suffice to show
unexpected results . . . [H]owever, when an applicant demonstrates
substantially improved results, . . . and states that the results were
unexpected, this should suffice to establish unexpected results in the absence
of evidence to the contrary.” Id. at 751.




Here,

Accordingly, Appellant has failed to show a nexus between the purported
unexpected result (no two-dimensional optical distortions) and the claimed
invention. Appellant has, instead, asserted that the unexpected results are
due to an unclaimed feature. The assertion of this unexpected result is
therefore not persuasive to show nonobviousness. (...)
Citing Soni, Appellant contends that because Mr. Soenksen simply
states that the results were unexpected, it should suffice to establish
unexpected results in the absence of evidence to the contrary. App. Br. 29;
Reb. Br. 8. Producing a statement, however, is not the entire Soni test. The
test includes a determination of whether an applicant demonstrates
“substantially” improved results. Moreover, “it is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements in the specification does not suffice.” Soni, 54
F.3d at 750 (internal quotations omitted).

Accordingly, Appellant has the
burden of producing data in its Declaration such as evidence of unexpected
properties in the form of a direct or indirect comparison of the claimed
invention with the closest prior art; for example, Pearson. (...)

Appellant does not provide data or other
evidence showing that its claimed product unexpectedly produces
substantially improved results as required by Soni, rather than a mere
improvement in properties.

Of commercial success:

Objective evidence of nonobviousness, including commercial success,
must be commensurate in scope with the claims. In re Tiffin, 448 F.2d 791,
792 (CCPA 1971). A nexus must be established between the merits of the
claimed invention and the evidence of secondary considerations in order for
the evidence to be given substantial weight. See In re GPAC, Inc., 57 F.3d
1573, 1580 (Fed. Cir. 1995). The nexus requirement requires that the
Appellant establish a factually and legally sufficient connection between the
evidence of commercial success and the claimed invention so that the
evidence is of probative value in the determination of nonobviousness.
Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392
(Fed. Cir. 1988). The Appellant must demonstrate that the successful
product is the invention disclosed and claimed in the patent, and that the
success is due to the merits of the claimed invention. J.T. Eaton & Co. v.
Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997).

And

Even when a nexus has been
established between the merits of the claimed invention and the secondary
consideration, the secondary consideration may be insufficient when the
claimed feature which underlies it was possessed by the closest prior art.
Thus, in In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991),
the prior art possessed the function relied upon by the patent applicant to
establish unexpected results and therefore was not a basis for rebutting a
prima facie finding of obviousness.
As held in J.T. Eaton & Co., Inc. v.
Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997), “the
asserted commercial success of the product [a secondary consideration] must
be due to the merits of the claimed invention beyond what was readily
available in the prior art.”



As to copying:


“[C]opying by a competitor may be a relevant consideration in the
secondary factor analysis.” Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
392 F.3d 1317, 1325 (Fed. Cir. 2004). Copying as objective evidence of
nonobviousness requires evidence of effort to replicate a specific product.
Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010); Iron Grip,
392 F.3d at 1325. Furthermore, just as with commercial success, “a nexus
between the copying and the novel aspects of the claimed invention must
exist for evidence of copying to be given significant weight in an
obviousness analysis.” Wm. Wrigley Jr. co. v. Cadbury Adams USA LLC,
683 F.3d 1356, 1364 (Fed. Cir. 2012) (internal quotation omitted). (...)

Under Federal Circuit jurisprudence, not every competing product that
arguably falls within the scope of a patent is evidence of copying, because
otherwise every infringement suit would automatically confirm the
nonobviousness of the patent. Wyers; Iron Grip, 392 F.3d at 1325.
Assuming for the sake of argument that the Olympus product is a copy of
Appellant’s product, that fact could be insufficient to prove nonobviousness
because copying may be attributable to other factors such as a lack of
concern for patent property or contempt for the specific patent in question,
or the patentee’s ability or willingness financially or otherwise to enforce the
patent. Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1028
(Fed. Cir. 1985) overruled on other grounds by Midwest Industries., Inc. v.
Karavan Trailers, Inc., 175 F.3d 1356 (Fed. Cir. 1999) (en banc). (...)
“[A] showing of copying is only equivocal evidence of nonobviousness
in the absence of more compelling objective indicia of other
secondary considerations.” Ecolochem, Inc. v. Southern California Edison
Co., 227 F.3d 1361, 1380 (Fed. Cir. 2000). (...)
Even assuming for
the sake of argument that the foregoing evidence is sufficient to establish
copying, this evidence is too weak to rebut the strong evidence of
obviousness. Tokai Corp. v. Easton Enterprises, Inc., 632 F.3d 1358, 1371
(Fed. Cir. 2011).