Tuesday, August 28, 2012

Obviousness: “articulated reasoning with some rational underpinning"

In BPAI decision in Milan v. Apple, concerning re-exam 95/001,083

Of wikipedia:

Reliance on this Wikipedia information is improper because it was presented for the first time in Appellant’s brief and has not been entered by the Examiner. See 37 C.F.R. §§ 41.67(c)(2) (“A brief shall not include any new or non-admitted amendment, or any new or non- admitted affidavit or other evidence. See . . . § 41.63 for amendments, affidavits or other evidence after the date of filing the appeal.”).20 Furthermore, Appellant has not provided a copy of the Wikipedia entry relied upon or demonstrated that it describes the understanding of “memory drive” as of the November 12, 2004, filing date of the ‘483 patent. See In re Voss, 557 F.2d 812, 818 n.15 (CCPA 1977) (later-issued patents and publications can be relied on to construe claim language only if a showing is made that such claim language is the “language of the present art” as of the filing date of the application in question).

As to arguments made by counsel:

Appellant also argues that “[a] flash memory device, as is understood in the art, clearly provides for memory storage, and includes the necessary processing circuitry so that data can be directly transferred between the memory associated with the flash memory device and a second device” (id. at 27; emphasis added). However, no evidence is cited in support of such a definition of “flash memory device.” See Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (citation omitted). (“[A]rguments of counsel cannot take the place of evidence lacking in the record.”).


Both rationales are consistent with KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), which held, inter alia, that “if a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. at 417. As a result, we are not persuaded by Appellant’s argument that the Examiner has not met the burden of providing “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” as required by In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). App’t Br. 31.

Of analogous art:

The argument that Palm and Tungsten are nonanalogous art is unpersuasive for the following reasons. As explained in In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2011):
Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.

The field of endeavor is a function of the scope of the claimed invention. See Bigio, 381 F.3d at 1325-26:

[T]he field of endeavor test . . . for analogous art requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention. See [in re] Wood, 599 F.2d [1032,] 1036 [(CCPA 1979)] (confining the field of endeavor to the scope explicitly specified in the background of the invention); see also Deminski, 796 F.2d [436,] 442 [(Fed. Cir. 1986)] (determining that the cited references were within the same field of endeavor where they “have essentially the same function and structure”).
The Deminski court explained that
Deminski’s invention “relates generally to double-acting high pressure gas transmission compressors,” such as those used “for transmitting natural gas and other compressible fluids through pipe lines.” More particularly, the invention is directed to a horizontally reciprocating, double-acting piston type gas compressor in which the valves can be removed easily for replacement.
796 F.2d at 437.

Of substitution and alternative design choice, the appellant had argued:

Sirichai only provides that both USB and firewire connector tips could utilize the light source disclosed; it does not disclose that the pin configuration, the wiring scheme required or operation of the two are equivalent. Simply substituting the USB connector of Tungsten with the connector body for a firewire connector will not result in functionality of the resulting connector.


This argument is unpersuasive a teaching of such equivalence is not required to support the rejection under the KSR rationale that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416. As explained at MPEP § 2143(B), a rejection for prima facie obviousness based on this rationale requires the following findings:

(1) a finding that the prior art contained a device (method, product, etc.) which differed from the claimed device by the substitution of some components (step, element, etc.) with other components;
(2) a finding that the substituted components and their functions were known in the art; [and]
(3) a finding that one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable[.]
Appellant has not demonstrated that the Examiner erred in determining that the cited references support such findings regarding the subject matter recited in claims 3 and 4.


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