Thursday, September 11, 2014

Scientific Plastics at the CAFC: what can happen when there are mistakes in the specification

SPP argues that the Board improperly relied on the
inventors’ description of the problem solved
in order to find the solution obvious, an analytic procedure that relies
on hindsight by using the inventors’ own reasoning
against them.

SPP points out that the statement in
the patents that threaded connections are not used with
plastic LPLC cartridges was actually
, as evidenced by the Yamada
reference, which shows a plastic LPLC
cartridge with threaded connections.
SPP argues that a person of ordinary skill
would not have perceived
any need to improve such cartridges, and that only
through improper hindsight
was the Board able to
justify its finding of a known leakage problem.

Judge Moore dissented:

I dissent from the majority because this record does not
contain substantial evidence that one of skill in the rele-
vant art would have modified the chromatography car-
tridge in Yamada by replacing its sealing configuration
with that of a soda pop bottle. (...)

One of skill in the art would not have modified Yamada to fix a
leakage problem that never existed in the first place.
You wouldn’t seek to “improve [a] sealing arrangement” that
doesn’t leak. (...)

It is troubling that the majority and the
Board rely on the inventors’ disclosure
of the problem their inventions
solve as the primary basis for modifying the prior art.
This is hindsight of the worst kind, “wherein that which
only the invention taught is used against its teacher.” (...)

The Board’s failure to make this determination
is especially pernicious where the analogous art question is far
from clear. Soda pop bottles and methods for using chro-
matography cartridges are
clearly not in the same field of endeavor.



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