Monday, January 31, 2011

KSR invoked in affirming obviousness in Tokai v. Easton

The CAFC stated:

Accordingly, the undisputed facts in this case—
including the state of the prior art, the simplicity and
availability of the components making up the claimed
invention, and an explicit need in the prior art for safer
utility lighters—compel a conclusion of obviousness as to
the subject matter of each of the asserted claims. KSR
Int’l Co., 550 U.S. at 419–20 (“One of the ways in which a
patent’s subject matter can be proved obvious is by noting
that there existed at the time of invention a known prob-
lem for which there was an obvious solution encompassed
by the patent’s claims.”). A strong case of prima facie
obviousness, such as that presented here, cannot be
overcome by a far weaker showing of objective indicia of
nonobviousness. See Media Tech. Licensing, 596 F.3d at
1339; Ryko Mfg. Co., 950 F.2d at 719.

The CAFC confirmed that mechanical arts are predictable:

Although a need in the prior art for safer utility light-
ers is not disputed, Tokai contends that the solutions to
this problem were “not at all predictable” and required
“radical modification” of the asserted prior art. We reject
these arguments. One of ordinary skill in the art would
not have viewed the subject matter of the asserted claims
as unpredictable. As the Supreme Court recognized in
KSR, the nature of the mechanical arts is such that
“identified, predictable solutions” to known problems may
be within the technical grasp of a skilled artisan. 550
U.S. at 421; see also Rothman, 556 F.3d at 1319 (stating
that, in the predictable arts, a claimed invention may be
invalidated more readily by showing “a motivation to
combine known elements to yield a predictable result”)

Of predictable variations:

The only missing claim limitation—the intended position of
the finger and thumb when using the lighter—is nothing
more than a predictable variation on the prior art. KSR
Int’l Co., 550 U.S. at 417. In both the claimed invention
and in Morris, the lighter is operated via sequential
action of the finger and thumb; a mere reversal in the
order of these actions does not confer patentability.

There were also issues concerning expert witnesses.


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