Tuesday, May 28, 2013

Patentee loses in re-examination 95/001,362

On the use of "unexpected results" to rebut obviousness:

Whether an invention has produced unexpected results is a question of
fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). "[T]here is no
hard-and-fast rule for determining whether evidence of unexpected results is
sufficient to rebut a prima facie case of obviousness." Kao Corp. v.
Unilever U.S., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re
Dillon, 919 F.2d 688, 692-93 (Fed.Cir.1990) ("[e]ach situation must be
considered on its own facts."). However, a party asserting unexpected
results as evidence of nonobviousness has the burden of proving that the
results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir.
1997). "[I]t is not enough to show that results are obtained which differ
from those obtained in the prior art: that difference must be shown to be an
unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Moreover, "when an inventor tries to distinguish his claims from the prior
art by introducing evidence of unexpected 'synergistic' properties, the
evidence should at least demonstrate 'an effect greater than the sum of the
several effects taken separately.'" Merck & Co., Inc. v. Biocraft Lab., Inc.,
874 F.2d 804, 808 (Fed. Cir. 1989).

Here, the PTAB notes of appellant's arguments on unexpected results:

The Examiner disagrees and finds the test evidence to be unclear and
insufficient to establish unexpected results (RAN 47-48). The Examiner
states that "[w]here the unexpected properties of a claimed invention are not
shown to have significance equal to or greater that [sic] the expected
properties, the evidence of unexpected properties may not be sufficient to
rebut the evidence of obviousness." (RAN 43). Having considered the
evidence and the arguments of the Patent Owner, we agree with the
Examiner that the Patent Owner has not demonstrated unexpected results.

The declarant and the evidence do not adequately establish that one of
ordinary skill in the art would expect interaction between a heat exchanger
and the bypass that would result in increasing the condensing pressure which
would dissuade one of ordinary skill in the art from providing both features
for their known benefits. It is unclear why the benefits of the bypass
recognized in the art (FF 3B, 4B, 5B, 7C) would teach or otherwise lead one
of ordinary skill to exclude pre-cooling the air by a heat exchanger, or viseversa.
The declarant does not persuasively establish that such provision of a
heat exchanger would be expected by those in the art to nullify the benefits
of a bypass recognized in the art, and vice-versa, so as to dissuade one in the
art from providing both features in a dehumidifier.(...)
The above tests and results described by the declarant clearly do
establish the performance and efficiency benefits of providing bypass in a
dehumidifier that includes a heat exchanger. However, such evidence fails
to establish that the observed benefits are "unexpected."
As discussed supra,
the prior art already establishes benefits associated with providing a bypass
in a dehumidifier (FF 3A-7C). The evidence does not establish what
performance gains would have been expected by one of ordinary skill in the
art from implementing a bypass in a dehumidifier with a heat exchanger. (...)
The Patent Owner has the burden of proving that the results are unexpected,
not merely that the results differ from the prior art.
In re Geisler, 116 F.3d at 1469-70; In re Klosak, 455 F.2d at 1080.(...)
The Patent Owner asserts that the Examiner erred by requiring the
Patent Owner to construct a hypothetical model for testing (Reb. Br. 5).
However, neither the Examiner nor the Board requires such construction,
and the Patent Owner misses the point. The Patent Owner is free to submit
evidence it deems appropriate in support of its assertions of unexpected
results. However, not all evidence is of the same quality and probative
value, and ultimately, it is the Patent Owner that has the burden of proving
unexpected results. In re Geisler, 116 F.3d 1469-70.

Of the issue of attacking references separately:

The Patent Owner also asserts that the rejections based principally on
Orion or APA should be reversed because the combinations do not
"demonstrate" that the fourth segment is perpendicular to the second heat
exchange path, and merges with the fourth subsegment downstream of the
second heat exchange path (App. Br. 23-24). However, this argument is
unpersuasive in that it attacks the references separately, and does not take
into account what the collective teachings of the prior art Lewis, Miyoshi,
Adachi or Wetzler would have suggested to one of ordinary skill in the art in
the context of implementing a bypass which provides ambient air via a
parallel flow to the condenser while bypassing the evaporator. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981); In re Merck, 800 F.2d 1091, 1097
(Fed. Cir. 1986). We agree with the Examiner that such recited flows would
have been obvious to one of ordinary skill in the art when the prior art
dehumidifiers of Orion or APA, which include heat exchangers, are
modified to include a bypass.

The examiner was affirmed.


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