Saturday, April 07, 2018

Coutts case: obviousness relates to what an objective person of ordinary skill in the art would know.

In re Coutts presented an interesting question:

Mr. Coutts contends on appeal that the Board’s obviousness
decision is flawed because Cheung’s inventors
had knowledge of a program that contained the missing
claim limitation disclosed in Kang but did not disclose
that feature in their patent application.
We find this argument unavailing. The Board correctly
found that the 35 U.S.C. § 103 (2012) obviousness test
is not controlled by what a prior art inventor would have
done based on the teachings of the references or anything
else. Instead, the relevant inquiry is what a hypothetical
person having ordinary skill in the art would find obvious
based on the teachings of the references. In applying this
standard, we find that the Board correctly affirmed the
Examiner’s rejection


Following the Examiner’s rejection, Mr. Coutts argued
to the Board that, at the time of Cheung’s invention,
Cheung’s inventors knew of the feature of displaying a list
of messages with corresponding receipt time indications,
did not claim the feature in their patent application, and
therefore, the combination of Cheung and the feature
could not have been obvious. Appx38.
Specifically, Mr. Coutts argued that Cheung had either
actual or constructive knowledge of the chronological
feature because: (1) Cheung described his system using
the program Microsoft Outlook®, which at the time included
the feature of displaying a list of email messages
chronologically with receipt time indications; (2) a reference
in the Information Disclosure packet for the Cheung
application included an image of the Microsoft Outlook®
inbox with the list of email messages displaying according
to corresponding receipt time indications; and (3) Cheung
was a technology worker developing user interfaces for
messaging and notification systems and would have used
an email program to communicate with his co-workers
that listed email messages with receipt time indications.
Mr. Coutts argued that Cheung’s likely knowledge of
the option of displaying messages chronologically meant
that “if it was obvious to Cheung to display a receipt time
indication on his notifications he surely would have
included such.” Appx39. Mr. Coutts supported his argument
by citing to dicta in In re Kleinman, stating that “it
might very well be a significant point in weighing the
content of a patent as a reference if it can be demonstrated
that an inventor had actual knowledge of relevant art.”
484 F.2d 1389, 1392 (CCPA 1973).
The Board explained that the “the test for obviousness
is not what Cheung would have done based on the teachings
of Kang (or even Microsoft Outlook®).

The CAFC observed:

The standard is “objective,” meaning that it is not tied
to the knowledge of any one person or the actual inventor.
KSR Int’l Co., 550 U.S. 398, 406–07 (2007). The hypothetical
person is an “an imaginary being possessing ‘ordinary
skill in the art’ created by Congress to provide a standard
of patentability.” Kimberly-Clark Corp. v. Johnson &
Johnson, 745 F.2d 1437, 1453 (Fed. Cir. 1984). It is a
“legal construct . . . akin to the ‘reasonable person’ used as
a reference in negligence determinations.” In re Rouffet,
149 F.3d 1350, 1357 (Fed. Cir. 1998).

This is not to say that an individual inventor’s or expert’s
individual knowledge is irrelevant.

***Separately, from blawgsearch on 7 April 2018


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