Thursday, October 31, 2013

CAFC reverses Board decision in Randall case as "infected by prejudicial error" ; common sense discussed

From Randall v. Rea, concerning an inter partes re-exam related to bulkheads for trucks:

On appeal,
the Board of Patent Appeals and Interferences (now
the Patent Trial and Appeal Board) reversed, unable to
discern any reason that one of ordinary skill in the art
would have been motivated to combine the cited references.
Randall appeals the Board’s determination to this
court. Because the Board failed to consider a wealth of
well-documented knowledge that is highly material to
evaluating the motivation to combine references to arrive
at the claimed invention, we vacate the Board’s decision
and remand the matter.

Background law

A claimed invention is unpatentable if the differences
between the claimed invention and the prior art are such
that the claimed invention as a whole would have been
obvious to one of ordinary skill in the relevant art. 35
U.S.C. § 103. Whether a claimed invention would have
been obvious is a question of law, based on factual determinations
regarding the scope and content of the prior
art, differences between the prior art and the claims at
issue, the level of ordinary skill in the pertinent art, and
any objective indicia of non-obviousness. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007); Graham v. John
Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). On
appeal, we review the Board’s compliance with governing
legal standards de novo and its underlying factual determinations
for substantial evidence. In re Sullivan, 498
F.3d 1345, 1350 (Fed. Cir. 2007).

Common sense arises

In recognizing the role of common knowledge and
common sense, we have emphasized the importance of a
factual foundation to support a party’s claim about what
one of ordinary skill in the relevant art would have
known. See, e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d
1372, 1377 (Fed. Cir. 2012); Perfect Web Techs., Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1328 (Fed. Cir. 2009). One
form of evidence to provide such a foundation, perhaps the
most reliable because not litigation-generated, is documentary
evidence consisting of prior art in the area.
Randall relied on just such evidence in citing to extensive
references of record showing a familiar, even favored,
approach to bulkhead stowage. For instance, Randall
cited four U.S. patents (Nos. 1,148,382; 2,752,864;
2,866,419; and 4,019,442) that disclose bulkheads designed
to be lifted and stowed near the ceiling, three of
which (the ’382, ’864, and ’419 patents) describe such
stowage for movable, track-mounted panels.


The Board’s failure to consider that evidence—its
failure to consider the knowledge of one of skill in the art
appropriately—was plainly prejudicial.3 Once it is established
that a prevalent, perhaps even predominant,
method of stowing a bulkhead panel was to raise it to the
ceiling, it is hard to see why one of skill in the art would
not have thought to modify Aquino to include this feature—
doing so would allow the designer to achieve the
other advantages of the Aquino assembly while using a
stowage strategy that was very familiar in the industry.4
Moreover, although FG claims that, as depicted, the
panels of Aquino may have been impeded by the rails
from being raised all the way to the ceiling, there is no
dispute that it would have been well within the capabilities
of an ordinary bulkhead designer to adjust the geometry
(e.g., drop the hinge axis down a few inches) so that
the panels could be freely raised to the ceiling. There are
no apparent functional concerns that would have discouraged
a bulkhead designer of ordinary skill from attempting
the combination.


Particularly when viewed in the context of the background
references Randall provided, the evidence strongly
supports the notion that the bulkhead design FG claimed
was nothing more than the “combination of familiar
elements according to known methods,” “‘each performing
the same function it had been known to perform,’”
“yield[ing] predictable results.” KSR, 550 U.S. at 416-17
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)). In addition, neither FG nor the Board points to
any objective indicia of non-obviousness. On this record,
the Board’s finding of lack of motivation to combine is
infected by prejudicial error. We accordingly vacate the
Board’s reversal of the Examiner’s rejection of claims 11-
12, 38-40, 48-56, 75-79, and 83-91 for obviousness.


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