Saturday, November 02, 2013

KSR on steroids dooms appellant in Ex parte Dumond

KSR and common sense arise in Ex parte Dumond

It is well established that “[a] person of ordinary skill is also a person
of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007). The obviousness analysis need not seek out precise
teachings directed to the specific subject matter of the claim, for it is proper
to take account of the inferences and creative steps that a person of ordinary
skill in the art would employ. Id. at 418. Furthermore, an improvement in
the art is obvious if “it is likely the product not of innovation but of ordinary
skill and common sense.” Id. at 421.

We have no doubt that the use of two different photoluminescent
materials in order to produce two different colors in a decorative laminate
would have been within the level of ordinary creativity in the art based on
the applied prior art of Nelson ʼ430, with or without Chien. See Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“We
therefore hold that while an analysis of obviousness always depends on
evidence that supports the required Graham factual findings, it also may
include recourse to logic, judgment, and common sense available to the
person of ordinary skill that do not necessarily require explication in any
reference or expert opinion.”).(5)

footnote 5: See also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006) (“Our suggestion test is in
actuality quite flexible and not only permits, but requires, consideration of
common knowledge and common sense.”).


footnote 4: We also agree with the Examiner that the claimed design may be properly
characterized as nonfunctional descriptive material (e.g., Ans. 13). In the
context of prior art rejections, a distinction over the prior art based on
nonfunctional descriptive material is patentably inconsequential. See In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally
related to the substrate, the descriptive material will not distinguish the
invention from the prior art in terms of patentability).


George C. Best was on the PTAB panel.


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