Tuesday, May 17, 2005

A case finding obviousness

The recent amicus brief by 24 law school professors has given some attention to rejections for obviousness under 35 USC 103.

Merely for information, from a recent case wherein obviousness was found. [IN RE DANIEL S. FULTON and JAMES HUANG, 391 F.3d 1195, 73 U.S.P.Q.2D 1141 (CAFC 2004)]

Of the requirement for motivation/suggestion-->

"When a rejection depends on a combination of prior art references,
there must be some teaching, suggestion, or motivation to combine the references." In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998). Stated another way, the prior art as a whole must "suggest the desirability" of the combination. In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992) (internal quotation omitted); Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340 (Fed. Cir. 2000) ("Trade-offs often concern what is feasible, not what is, on balance, desirable.
Motivation to combine requires the latter." (emphasis added)). The source of the teaching, suggestion, or motivation may be "the nature of the problem," "the teachings of the pertinent references," or "the ordinary knowledge of those skilled in the art." In re Rouffet, 149 F.3d at 1355.

Appellants first argue that the Board's finding of a motivation to
combine lacks substantial evidence because the Board failed to demonstrate that the characteristics disclosed in Pope, hexagonal surfaces in a facing orientation, are preferred over other alternatives disclosed in the prior art. This argument
fails because our case law does not require that a particular
combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.
"The question
is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination," not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available. See In re Beattie, 974 F.2d at 1311
(internal quotation omitted; emphasis added). A case on point is In re Gurley, 27 F.3d 551, 552-53 (Fed. Cir. 1994), in which we upheld the Board's decision to reject, on obviousness grounds, the claims of a patent application directed to one of two alternative resins disclosed in a prior art reference, even though the reference described the resin claimed by Gurley as "inferior." Far from requiring that a disclosed combination be preferred in the prior
art in order to be motivating, this court has held that "[a] known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use" and the reference "teaches that epoxy is usable and has been used for Gurley's purpose."
Id. Thus, a finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed by the patent applicant is the preferred, or most desirable, combination.

[page 1201] In this case, the Board found that "Bowerman clearly suggests that cylindrical polygon shaped studs or projections other than those expressly described (square, rectangular, or triangular) may be employed to
provide sharp
edges which bite into artificial turf for good traction." Ex parte
Fulton, 2003
Pat. App. LEXIS 88 at *7. Bowerman thus provides a motivation to
combine its
teachings with other prior art references that disclose cylindrical
shapes other than squares, triangles, and rectangles. The Board
also found that Pope discloses a shoe sole with hexagonal surfaces, which is a cylindrical polygon-shaped surface, and a facing orientation. Finally, the Board found that no other prior art references taught away from the combination of Bowerman and Pope that it adopted. These secondary findings are sufficient to support a primary finding that the prior art as a whole suggests the desirability of the combination of Bowerman and Pope described by the Board.

Appellants disagree with the Board's finding that no prior art
taught away from the combination of Bowerman and Pope adopted by the
Appellants quote language from In re Gurley that "[a] reference may be
said to
teach away when a person of ordinary skill, upon reading the reference,
would be
discouraged from following the path set out in the reference, or would
be led in
a direction divergent from the path that was taken by the applicant."
27 F.3d at
553. Appellants argue that "the prior art disclosed alternatives to
each of the
claimed elements A [the perimeter], B [the shape of the surface], and C
orientation of the surface]. Choosing one alternative
necessarily means rejecting the other, i.e., following a path that is 'in a divergent direction
from the path taken by the'" applicant. This interpretation of our case law fails. The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed in the '198 application. Indeed, in the case cited by appellants, In re
Gurley, we held that the invention claimed in the patent application
was unpatentable based primarily on a prior art reference that disclosed two alternatives, one of which was the claimed alternative. Accordingly, mere disclosure of alternative designs does not teach away.


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