Friday, January 25, 2013

KSR defeats appellant in Ex parte INGRAM

Within Ex part INGRAM

prima facie obviousness is supported by the undisputed facts mentioned earlier and by established legal precedent. In this latter regard, we assess the obviousness of a claim to a combination of prior art elements by asking "whether the improvement is more than the predictable use of prior art elements according to their established functions." KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Here, Nevin shows that the prior art included the claim 22 elements of an elongated structural member (e.g., a pole) comprising a plastic sleeve containing rubber particles and cement binder whereas Kvesic shows the prior art included the claim 22 elements of a product comprising bound rubber particles which do not contain steel components. Based on the record before us, the claimed combination of these prior art elements yields no more than the predictable use of such elements according to their established functions.


As correctly explained by the Examiner, the PVC referred to by Appellant is not required by Nevin, and the molding temperatures referred to by Appellant are not required by Kvesic (Ans. 10-11). Moreover, Appellant has not supported this argument with any evidence that PVC would be incapable of withstanding such molding temperatures. Finally, the argument is contrary to the established principle that "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." KSR at 420-21. In combining Nevin with Kvesic in the manner proposed by the Examiner, such a person would have utilized a plastic for Nevin's sleeve which would be compatible with the processing temperatures required for Kvesic's resin binder.

As to result effect variables:

Contrary to Appellant's argument, "[a] recognition in the prior art that a property is affected by the variable [in question] is sufficient to find the variable result-effective." In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012).

Appellant's argument is further undermined by the legal principle that the discovery of optimum values for recognized result effective variables is ordinarily within the skill of the art. See Applied Materials at 1295. This argument is yet further undermined by the fact that the claimed particle size range overlaps Nevin's particle size range and concomitantly by the legal principle that a prima facie case of obviousness typically exists when the claimed range overlaps the prior art range. Id.


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