Thursday, December 27, 2012

Obviousness affirmed in Ex parte Karr

Many cases are cited in the Board's affirmance in Ex parte Karr:

If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990). To establish a prima facie case of obviousness, so as to meet the notice required of 35 USC § 132, requires (1) “set[ting] forth the statutory basis of the rejection”; (2) “the reference or references relied upon”; and (3) explaining the references “in a sufficiently articulate and informative manner.” In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Further, there must be (4) “a reason to combine prior art references[, which] is a question of fact.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1367 (Fed. Cir. 2012) (internal citations omitted). Also, an obviousness determination cannot rest upon impermissible hindsight reasoning, and to guard against hindsight reasoning the Federal Circuit “flexibly seeks evidence from before the time of the invention in the form of some teaching, suggestion, or even mere motivation (conceivably found within the knowledge of an ordinarily skilled artisan) to make the variation or combination.” Rolls-Royce, PLC v. United Technologies Corp., 603 F.3d 1325 (Fed. Cir. 2010) (internal citations omitted).

The Examiner has provided articulated reasoning with a rational underpinning to support the combination for the legal conclusion of obviousness, i.e., set forth a prima facie case of obviousness in rejecting claims 1-4, 6, and 9-23 under §103(a) over Parkin, Horng, and Fontana, Jr. (Ans. 3-14). In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

Arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Also, while not required to, Appellants have not submitted evidence of secondary considerations. Evidence of secondary considerations “may also serve a guard against slipping into use of hindsight.” Kahn, 441 F.3d at 986 (quoting Graham v John Deere Co., 383 U.S. 1, 36 (1966)). Therefore, we accord very little probative value to Appellants’ conclusory statements that combining the teachings of Parkin, Horng, and Fontana, Jr. required more than ordinary skill in the art.

Footnote 2 states:
Once the Examiner has satisfied the burden of presenting a prima facie case of obviousness, the burden then shifts to Appellants to present evidence and/or arguments that persuasively rebut the Examiner's prima facie case. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

KSR was not cited.


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