Tuesday, May 22, 2012

CAFC reverses BPAI in inter partes re-exam 95/000,355

The beginning of the CAFC decision in Plasmart v Kappos notes

Because the Board erred both in reversing the examiner’s rejection of representative claim 1 as obvious and in affirming the examiner’s allowance of claims 20–33 as patentable, we reverse.

The technology concerned a scooter.  The CAFC noted the issues:

During reexamination, the Examiner rejected claim 1 of the ’674 patent as anticipated by Song and obvious over Handong in view of Song. The Examiner found that Song discloses all the limitations of claim 1, including both “a supporting arm frontwardly extended from said driven portion of said twister member” and “a safety wheel which is rotatably mounted to a free end of said supporting arm to support a front portion of said scooter body and prevent said scooter from being flipped over” at issue in this appeal. In particular, the examiner found that the front end of the tricycle’s base plate in Song meets the “support- ing arm” limitation. The examiner then held claims 20– 33 to be patentable because the safety wheel in Song was not attached in the same position or manner as in claims 20–33 and the claimed features have not been shown to be predictable variations of claim 1.

The BPAI had reversed the examiner:

The Board reversed the rejection of claim 1, holding that Song did not clearly disclose the “supporting arm” of claim 1, noting that while Song disclosed safety wheels attached to the tricycle base plate, it did not disclose the means of attachment. The Board also found that Song Figure 1, read in light of the disclosure in the written description, could not anticipate alone because no portion of the tricycle body base plate is an “arm.” The Board held that the combination of Song and Handong would result in a scooter with two safety wheels, raised off the ground, and attached to the base plate, necessarily lack- ing the “supporting arm” limitation required for claims 1 and 20–33. PlaSmart appealed the Board’s decision to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

Of drawings as prior art:

We also reject PlaSmart’s argument that each draw- ing in a prior art reference must always be viewed in isolation from the rest of a reference. Our precedent has held that drawings can be used as prior art, without referring to the surrounding description, only if the prior art features are clearly disclosed by the drawing. See, e.g., In re Wagner, 63 F.2d 987, 986–87 (CCPA 1933) (“While it is true that drawings may not always be relied upon for anticipation of a later application, it is also true that, if a drawing clearly suggests to one skilled in the art the way in which the result sought is accomplished by a later applicant, it is immaterial whether the prior pat- entee’s showing was accidental or intentional.”) (internal citations omitted); see also In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (“[W]e did not mean that things patent drawings show clearly are to be disregarded.”); In re Seid, 161 F.2d 229, 231 (CCPA 1947) (“[A]n accidental disclo- sure, if clearly made in a drawing, is available as a refer- ence.”).

KSR was invoked as to claim 1:

“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). In other words, when there exists a finite number of identified, predict- able solutions to a known problem, a combination that results in “anticipated success” is likely the product not of innovation, but of ordinary skill and common sense. Id. at 421. That is the case here.

The concept of a "common sense alternative design choice"was invoked:

The decision to attach the Song safety wheel directly to the twister member instead of the body would have been a common sense alternative design choice and reasonably obvious to one of ordinary skill in designing a safety feature to prevent tipping of the Handong scooter. Such a modification is nothing more than a predictable use of prior art elements (universal wheels in contact with the ground in front of the twister member) to address a known problem (stability), and would thus have been obvious. See KSR, 550 U.S. at 417. We therefore reverse the Board’s holding that claim 1 would not have been obvious over the prior art.

The CAFC disagreed with both the examiner AND the BPAI as to claims 20-33:

Because claims 20–33 add only minor, predictable variations to claim 1, we agree with PlaSmart that those claims would have been obvious as well. Accordingly, the Board’s decision is reversed.

As a final tally, the CAFC agreed with the examiner as to the obviousness of claim 1, and disagreed with both the examiner and the BPAI on everything else.

JEFFREY SONNABEND was the attorney for Plasmart, the winner in the case.


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