Tuesday, January 27, 2015

CAFC affirms PTAB in Plas-Pak

From Plas-Pak as to obviousness:


Where “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 pre- dictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). However, combinations that change the “basic principles under which the [prior art] was designed to operate,” In re Ratti, 270 F.2d 810, 813 (CCPA 1959), or that render the prior art “inoperable for its intended purpose,” In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984), may fail to support a conclusion of obviousness. 


And as to specifics:


” Such a change in a reference’s “principle of operation” is unlikely to motivate a person of ordinary skill to pursue a combination with that reference. In re Mouttet, 686 F.3d 1322; In re Ratti, 270 F.2d 810. Accord- ingly, the Board did not err in concluding that claims 1– 15 would not have been obvious over Fukuta in view of Morris.

As to "intended purpose"


We agree with Sulzer that the Board’s definition of Jacobsen’s “intended purpose” and the Board’s finding that adding Hunter’s spray nozzle would render Jacobsen “inoperable for its intended purpose” are supported by substantial evidence. 

The conclusion:

 We have considered the remaining arguments and
find them unpersuasive. Because the Board did not err in
finding that the prior art combinations would either alter
Fukuta’s “principle of operation” or render Jacobsen
“inoperable for its intended purpose,” we affirm the
Board’s decision to decline to make the proposed obviousness
rejections of claims 1–15 of the ’384 patent.



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