Rexnord v. Kappos

By Jason Rantanen

Rexnord Industries, LLC v. Kappos and Habasit Belting, Inc. (Fed. Cir. 2013) Download 2011-1434.Opinion.1-18-2013.1
Panel: Newman (author), Lourie, Prost

In Rexnord v. Kappos, the Federal Circuit reversed the Board of Patent Appeals and Interferences' conclusion of nonobviousness, concluding that claims 1-14 of Patent No. 6,523,680 are obvious as a matter of law.  The significant aspect of this opinion is the court's rejection of the PTO's arguments that "the Board need not consider other grounds that had been presented during the reexamination, for they had not been raised on the appeal to the Board" and that "the Board does not consider aspects
beyond those relied on by the examiner."  Slip Op. at 12.  The CAFC's ruling on the latter point, however, creates some significant tensions and does not cleanly resolve the issue. 

The '680 patent relates to a mechanical convey belt formed of rows of belt modules interlinked by transverse rods.  Rexnord filed a petition for inter partes review, arguing that claims 1-4 of the '680 patent were invalid as anticipated and obvious.  The issue on appeal focused on a limitation in representative claim 1 that required a web with a diameter of less than 10 mm. In its petition for inter partes reexamination, Rexnord included the argument that the 10mm limitation was merely a "design choice."  Slip Op. at 13.  In holding that this element was obvious in light of the prior art, however, the Examiner did not reference the "design choice" argument.  Instead, the Examiner stated that:

Thompson ’048 discloses the broad teaching of providing a corrugated intermediate portion with
an adjacent web portion to prevent objects from being pinched between adjacent modules where a
space bounded by the web, an outer end of the first link end and the sidewalls of the second link
ends is completely closed. It would have been obvious to one of ordinary skill in the art to [include
in] the modules of Horton ’248 . . . a web adjacent the corrugated portion to prevent objects from being pinched between adjacent modules as taught by Thompson ’048

Slip Op. at 9 (emphasis added).

Habasit, the patent owner, appealed the examiner's rejection to the BPAI.  In its appeal, Habasit argued that the examiner erred because none of the references disclosed a space with a diameter less than 10 mm, as required by the claims. Although only the second argument is discussed in the CAFC opinion, Rexnord raised two arguments in response: (1) both Palmaer and Thompson disclosed a completely closed space (i.e.: a space with a diameter of 0 mm) and (2)

Thompson, Jr. et al. goes beyond merely disclosing a closed space in a preferred embodiment, and teaches the exact subject matter that Habasit asserts is novel in the '680 Patent. Despite the efforts by Habasit to distort the teachings of Thompson, Jr. et al., the reference clearly teaches solving the identical problem, see col. 1, lines 26-34 of Thompson, Jr. et al. (“objects being conveyed are subject to being caught in the gaps between the links”), solved by Habasit using an identical solution, see col. 14, lines 38-41 of Thompson, Jr. et al. (“the plates 51 on the links 25 cover the gaps 37 to prevent catching articles therein, while providing movement between adjacent links so as to allow traversing of a radiused section”). Accordingly, Thompson, Jr. et al. clearly teaches one skilled in the art to prevent objects from being pinched between modules by modifying Horton to at least partially, or completely, cover a gap in which the object can be pinched.

2008 WL 8119276.

The Board ruled in favor of Habasit, holding that "the Examiner has not identified where the prior art discloses that this space has a diameter of less than 10 mm as required by the claims,"  Slip Op. at 10, quoting Board opinion at 11, and rejecting the space of 0 mm argument.  In reaching this conclusion, the Board did not discuss Rexnord's second argument above.  Slip Op. at 9. 

In its request for rehearing from the Board decision, Rexnord subsequently raised two arguments relating to the 10mm limitation: that the 10 mm spacing was inherent in the prior art and that it was merely a design choice in light of the prior art. The Board denied rehearing, stating that “Rexnord’s reasons as to why it would have been obvious to construct a space as recited in the claims (Request, 3–5) were not the rationale of the Examiner’s rejection.” Slip Op. at 11, quoting Dec. on Rehearing at 3.

On appeal, the CAFC rejected Rexnord's inherency argument but agreed with its obviousness argument.  The main aspect of the appeal, however, was the Federal Circuit's rejection of the PTO's argument that Rexnord couldn't argue grounds for affirming the rejection that were not articulated by the Examiner:

When Habasit appealed the examiner’s decision, Rexnord was not barred from presenting this argument in defense of the examiner. The PTO states in its brief on
this appeal:

Just as this Court does not entertain arguments made outside of appellant’s opening brief, see, e.g., In re Watts, 354 F.3d 1362, 1367 (Fed. Cir. 2004); In re Schreiber, 128 F.3d 1473, 1479 (Fed. Cir. 1997), the Board has a rule that similarly bars the presentation of new arguments outside appellant’s opening brief (absent circumstances not alleged here), see 37 C.F.R. § 41.79(b).

PTO Br. 24. We observe that Rexnord was not the appellant before the Board, and that the premise is an incorrect statement of the appellate process. On judicial review, the correctness of the decision appealed from can be defended by the appellee on any ground that is supported by the record, whether or not the appellant raised the argument.

While this general point seems to be solid, the opinion uses it to support two rules that are in tension: (1) that the appellee can include in its response brief arguments that it raised before the examiner but were not discussed in the examiner's decision ("When Habasit appealed the examiner's decision, Rexnord was not barred from presenting this argument in defense of the examiner," Slip Op. at 13), and (2) that the appellee before the Board does not need to raise those arguments until its request for reexamination ("The issue was fully raised before the examiner, and these references were not again a patentability issue until after the Board reversed the examiner," Slip Op. at 13; "Rexnord asked the Board on rehearing to consider the other grounds before the examiner, in support of the examiner's decision," Slip Op. at 14). 

In other words, the CAFC seems to be saying that the appellee to the board can raise these arguments in its response brief or it can wait until it files its request for rehearing (or maybe that it can only raise these arguments in its request for rehearing; I'm not sure given the court's ambiguity).  Both seem somewhat inconsistent with the way appellate practice usually works: if an appellee doesn't argue an issue in its responsive brief, it generally can't argue that issue in its request for rehearing regardless of whether it made the argument before the lower tribunal. 

Note that this opinion invovled an appeal from the BPAI, which is now the Patent Trial and Appeal Board.  If it carries over into PTAB practice, however, it could have significant consquences for how appeals are structured. 

66 thoughts on “Rexnord v. Kappos

  1. It is self evident that my posts do not fit that identity operation either.

    But thanks for noticing my little play on words. An “A” to you for your perceptive abilities.

  2. (note, that is addition, not multiplication, so, no there is no identity function)

    The identity operation in addition is when you add nothing.

  3. but I wouldn’t recommend it.

    Agreed – with a caveat: present the options to the client, and let the client decide.

  4. What I was thinking was along the lines of some rule shifting the burden of persuasion and proof when one shows that the only difference between what is claimed and the prior art is a particular size …

    In practice that is precisely what happens, Ned. The examiner asserts that the only difference is a change in size, adds a quick boilerplate citation to In re Rose, and mails out the rejection. The applicant can pretend that the burden hasn’t shifted at that point, but I wouldn’t recommend it.

  5. 28853 – added.
    You’re seriously going to butcher the holy name of AAA JJ just to pile on against poor 6? Nice.

  6. LB, thanks for the case.

    What I was thinking was along the lines of some rule shifting the burden of persuasion and proof when one shows that the only difference between what is claimed and the prior art is a particular size, which, in truth, is a species of the broader genus where the only difference is in a parameter than can be varied.

    Here, in this case, the applicant and Board placed great weight on the 10mm limitation. But that was a distinction without any real difference as anybody with half a brain would know. It is a wonder that the Board reversed the examiner in this case. It would have been an extreme embarrassment for the Federal Circuit to affirm.

  7. My writing is decent when I’m inclined to write in such a fashion.

    Logic is a show stopper. So is reading.

  8. LOL – just like 101 Integration Expert dismantling the anti-patentists.

    Exactly like.

    (except 101 IE has some mighty fine tutors, and 6 has, well, not)

  9. Real nice, EG. Atticus Finch would be so proud.

    Nothing like being proud to be offensive. If you all missed the origin of this comment, you would be disgusted that MM reaches for it so gleefully.

  10. Funny enough, that actually was one that I did stand a decent chance of getting into, and I don’t want to go there because I found the place to be full of holier than thou t ards, which I mean more literally, and less figuratively, as I usually use the term. Which is why I’m not surprised that you went there. But who knows, maybe the ones of you I’ve met don’t really represent the student pop that well and maybe they’re not so bad once you get to know them.

    Although I will give you that it would be my 3rd choice if I have to go around here (if I got in before I telework).

    PS, do you know about the golden fountain you guys have? Probably the best thing about your school, but it is quite hidden. I will divulge its location if you ask nice.

  11. “Uhm, because you’re not in”

    K, so then, it is simply that you are a ta rd. Not being in, because I didn’t want to waste $$$ applying to schools I didn’t want to go to, hardly implies that I “can’t get in” to those schools. In case you haven’t forgotten it isn’t free to apply to most schools.

    “Are you telling us that you applied and got accepted to your chosen “elite” schools and never enrolled?”

    No, I’m telling you that I never bothered to LSAT and then apply because I figured I wouldn’t get in there if I couldn’t make like 170 LSAT (which is just absurd btw) and I didn’t really care to go to other schools at the time. But then, my educational background wasn’t exactly prep school for ivy league institutions, so on the whole I’m not surprised.

    “As long as a writing sample is required to apply, you ain’t ever getting in.”

    My writing is decent when I’m inclined to write in such a fashion.

    And just btw regarding my education, j esus ch rist, I’ve put the whole history down on here before, if you people are so obsessed with my education you can look it up. I’m rather tired of correcting you tar ds, so I think I will just stop.

  12. Yes, I thought I had seen the proposal for such somewhere, and I suspect you may well be correct about that it being in the rules package.

  13. “Whatever cut rate bs school you went to I most certainly could ‘get into’.”

    I went to Georgetown. If you could most certainly get into that cut rate school, why haven’t you?

  14. 6 wouldn’t know the difference between a “regulation, code, and case law” if it hit him square in the face.

    Real nice, EG. Atticus Finch would be so proud.

  15. “Why do you tar ds presume I ‘couldn’t get in’?”

    Uhm, because you’re not in. Are you telling us that you applied and got accepted to your chosen “elite” schools and never enrolled?

    “Indeed, I may well have been able to get into the elite school that I wanted to go to had I really pressed the matter.”

    As long as a writing sample is required to apply, you ain’t ever getting in.

  16. “His lack of understanding of case law basics is showing greatly over at Patent Docs. ”

    Says EG who couldn’t even correctly read Diehr, and probably still can’t. Not to mention all the other times my “lack of understanding” of case law has led to differences of opinion on the outcomes of cases that have gone my way over the years.

    To be sure, you’ve been to school specifically to learn how to lawl, I have not. When it comes to lawling you should be winning practically every single lawl dispute me and you have with regards to cases. But you don’t old timer, why is that? A layman one upping you at your lawling.

  17. “6 — you really should learn the difference between a regulation, code, and case law.”

    I will, tar d, just as soon as you explain what makes you think I don’t know the difference between rules, lawls and case lawl.

  18. ” and couldn’t get in”

    Why do you tar ds presume I “couldn’t get in”? I have told you numerous times that I “could get in”, quite easily, to all but my chosen “elite” school that I wished to go to. Whatever cut rate bs school you went to I most certainly could “get into”.

    Indeed, I may well have been able to get into the elite school that I wanted to go to had I really pressed the matter.

  19. “His lack of understanding of case law basics is showing greatly over at Patent Docs.”

    Here’s one of his posts from Patent Docs: “Yes, I have re-taken up the books to do this nonsensical LSAT, but I do so with much less vigor than when the law was so blatantly being abused a few years back.”

    He was really motivated before, and couldn’t get in. Now he’s much less vigorous. What are the odd he can get in now?

    Lulz

  20. Just Saying,

    Frankly, 6 wouldn’t know the difference between a “regulation, code, and case law” if it hit him square in the face. His lack of understanding of case law basics is showing greatly over at Patent Docs.

  21. “Why is everyone picking on MM? Oh wait.”

    MM is brilliant,

    by day and night,

    Be it wrong, or be right.

    Come bask in his blatherskite!

    Someone once said.

  22. “… a pretty good indicator that the examiner is just making stuff up.”

    That’s when I go into my bulldog mode. And others start reaching for their express abandonment forms. :-)

  23. I guess Ned has never gotten seen a “change in size is not patentable, see In re Boilerplate from the case law cheat sheet floating around the PTA and TC’s” rejection.

    I could paper a couple of walls with those rejections. Office action citations to In re Rose, In re Aller, and In re Boesch (the Holy Trinity of poor patent examination?) are a pretty good indicator that the examiner is just making stuff up.

  24. I guess Ned has never gotten seen a “change in size is not patentable, see In re Boilerplate from the case law cheat sheet floating around the PTA and TC’s” rejection.

    Unwritten? Are you aware of the Administrative Procedures Act?

    Just asking. :-)

  25. There ought to be a simple, perhaps unwritten, rule that if the novelty of a claim lies in the particular size of something, that that particular size be considered a design choice absent a showing of unexpected results.

    There is, Ned. It’s in Gardner v. Tec Systems Inc., 725 F.2d 1338.

  26. “It’s odd that you refuse to comment…”

    It is? You s#ck at trolling as much as you s#ck at patent prosecution.

    I’m not anon, and anon is not me. I’m sure Dennis can confirm that for you if so really desperately need proof.

  27. There ought to be a simple, perhaps unwritten, rule that if the novelty of a claim lies in the particular size of something, that that particular size be considered a design choice absent a showing of unexpected results.

    One should note that the original statutes made the size of a machine per se unpatentable. I think our founding fathers demonstrated significant wisdom in that.

    From the 1793 Patent Act, Section 2:

    “SECTION 2, and be it further enacted, That any person who shall have discovered an improvement in the principle of any machine, or in the process of any composition of matter, which shall have been patented, and shall have obtained a patent for such improvement, he shall not be at liberty to make, use, or vend the original discovery, nor shall the first inventor be at liberty to use the improvement: And it is hereby enacted and dcclared, that simply changing the fonn or the proportions of any machine, or composition of matter, in any degree, shall not be deemed a discovery.”

  28. you’re not interested in getting any mileage for your clients

    Of course I’m interested.

    You must really s#ck at it.

    LOL. You and your little yapping puppy are starting to sound more and more alike. Speaking of “s#cking at it”, what do you think about your yapping puppy friend’s use of staff to screen and destroy registered letters addressed to his attorney so his attorney never learns about prior art in the letters? It’s odd that you refuse to comment on that wacko scheme since you seem to have extremely strong opinions about far more trivial matters.

  29. “You argue that B doesn’t teach what the Examiner says. The Examiner responds that your argument isn’t convincing and states that the use of the doohickey is a design choice.”

    Then you go back to your client and tell them to fold up their tent and go home.

    You must really, really s#ck at this.

  30. if you think that the difference between an examiner determining that a particular modification/combination is an obvious design choice or obvious to try is a “strict distinction,”

    You’re still trying pretty hard not to understand, AAA JJ. It’s you that would be making the “strict distinction” argument, remember?

    Let’s walk through it again. You’re prosecuting an invention in the predictable arts. The Examiner argues that the claim is invalid as obvious in view of A and B because (1) A teaches all the elements except a doohickey; (2) B teaches that doohickeys are one of a number of elements that are known to be used to achieve the same purpose achieved by the doohickey in A. The Examiner says that it would be obvious to try the claimed design in view of those facts.

    You argue that B doesn’t teach what the Examiner says. The Examiner responds that your argument isn’t convincing and states that the use of the doohickey is a design choice. Then you go into your bulldog mode and make a huge stink that the Examiner is raising a totally new obvious argument! It’s unbelievable! Because design choice and obvious to try are so utterly and completely different! You’ve been prejudiced! You’ve been prejudiced!

    Then your client gets his awesome claims granted and pays you handsomely for your manly toughness in the face of such tyrannical governmental abuse. Another obvious patent and, more importantly, another job is born. Hooray! The system works!

  31. Thanks.

    “I’ll remind you again that I prosecute…”

    But you’re not interested in getting any mileage for your clients? You must really s#ck at it.

  32. What happened to having the nuts to admit when you are wrong?

    Instead, you break out the shovel and start digging, employing your twist (which fools no one), this turning a minor faux pau into yet another MM self-defeat moment. Is your ego that fragile?

    Nice job.

  33. BTW, if you think that the difference between an examiner determining that a particular modification/combination is an obvious design choice or obvious to try is a “strict distinction,” then you’re doing it all wrong. And I mean all.

  34. “And you may get mileage out of your strict distinctions…”

    I do. But I don’t need your permission.

    You might want to try it some time. You may actually get some mileage for your clients, even the ones that exist solely in your imagination. Otherwise, keep up the great work.

  35. So … the “articulated reasoning” for a determination of obviousness … actually makes a difference… as it affects the … arguments that must be presented to successfully overcome such an “articulated reasoning.”

    I boiled your comment down for you and deleted the ad hominems/insults. I agree with your statement. Of course, it’s a non-controversial point, just as the Supreme Court quote you provided is non-controversial. Rational arguments for obviousness must be provided. No doubt about it.

    I don’t think there is much that is controversial about the point I’m making, either: in certain contexts (such as in the instant case) the argument that references A and B, when combined with the knowledge of one skilled in the art, motivates the skilled artisan to “try” the claimed design is not different from the argument that the claimed invention was a “design choice” in light of those facts.

    Don’t get me wrong: I do appreciate the hair-splitting. I’ll remind you again that I prosecute in both the unpredictable and predictable arts (far more in the former) so I’m very familiar with the law regarding obviousness. And you may get mileage out of your strict distinctions if, say, you wish to make a stink about an Examiner raising some “new” argument because he used a different word in a rejection than he used previously. That’s truly awesome for you and your client! Congratulations. You really showed that Examiner a thing or two about which words to use. Keep up the great work.

  36. In the unpredictable arts, where utility comes from delivering an effect, there is not much that is “obvious to try” because you don’t know in advance what will “work”. By contrast, in the predictable arts, there’s an infinity of new things that are “obvious to do”.

    That’s why predictability and obviousness are as seen by a person of ordinary skill in that art. More things are obvious in predictable arts, because a person of ordinary skill has a better idea of what will work. Nobody is telling chemists that everything is predictable, we’re asking them what is predictable.

  37. On Jan 26, in the Soverain thread, I wrote:

    “Whether or not this is the correct outcome, I’m uneasy about the reasoning. Even more so now, I’m not at all sure it was a good idea for SCOTUS in KSR to tell chemists (masters of the unpredictable) that if it COULD have been predicted it WOULD have been obvious.”

    and my comment in the present thread is on the samer theme, how to handle obviousness objectively.

    In the unpredictable arts, where utility comes from delivering an effect, there is not much that is “obvious to try” because you don’t know in advance what will “work”. By contrast, in the predictable arts, there’s an infinity of new things that are “obvious to do”.

  38. From page 11 of the BPAI decision in U.S. Application 10/759,585:

    “Design choice applies when old elements in the prior art perform the same function as the now claimed structures. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed features solves no stated problem and presents no unexpected result and ‘would be an obvious matter of design choice within the skill of the art’). However, when the claimed structure performs differently from the prior art a finding of obvious design choice is precluded. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious design choice precluded when claimed structure and the function it performs are different from the prior art). See In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995) (‘design choice’ is appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function.”

    Contrast that with SCOTUS’s take on “obvious to try” from KSR:

    “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.” 127 S.Ct. 1727, 1742 (2007).

    I think it’s pretty clear that these are different “articulated reasonings” for a determination of obviousness. I seem to recall SCOTUS also saying that “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”. Id. at 1741. That was a 9-0 decision, BTW.

    So whether the “articulated reasoning” for a determination of obviousness is “obvious design choice” or “obvious to try” actually makes a difference to those who actually practice, which of course excludes Mooney and the professor, as it affects the evidence and/or arguments that must be presented to successfully overcome such an “articulated reasoning.”

  39. MD Where I’m sitting, “obvious to try” is a notion used in the unpredictable arts, where a reasonable expectation of success falls to be distinguished from a mere hope to succeed.
    It’s true that when courts want to disparage a “design choice”, they will say that it was “merely obvious to try” because (e.g., as you noted, MD) the “art is not predictable and there was not reasonable hope of success.”

    But the three words “obvious to try” simply mean what they say: “This element was known in the prior art and it would have been obvious to try to incorporate this element into the claimed invention.”

    I do not think it is an area in which “obvious to try” jurisprudence has anything useful to contribute.

    I think you meant to say “merely obvious to try jurisprudence”. ;)

    Again, if something is obvious to try and it’s a so-called predictable art then there’s no difference between “obvious to try” and a “design choice”. As a reminder (not to you, MD), the instant case was not in the so-called unpredictable arts.

    It seems that in the wake of KSR there have been (predictable) efforts on the part of patentees and applicants to splinter various sub-doctrines of obviousness into airtight cabins and then argue that whatever rationale the Examiner/infringer is arguing is the “wrong” obviousness sub-doctrine. It’s probably worthwhile to revisit KSR and consider why the Supreme Court ruled the way they did.

    “Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.”

    That was a 9-0 decision.

  40. might or might not be a matter of design choice, routine, or obvious but I do not think it is an area in which “obvious to try” jurisprudence has anything useful to contribute.

    A design choice, or a routine or obvious modification is “obvious to do”, which isn’t that different from “obvious to try”, except that you’re more confident that the modified device will work.

    So long as the rejection is based on a number of alternatives known in the prior art, and the person of ordinary skill having to select one of them based on his knowledge to arrive at the claimed invention, I don’t see the bases for invalidity as being very different at all.

  41. Where I’m sitting, “obvious to try” is a notion used in the unpredictable arts, where a reasonable expectation of success falls to be distinguished from a mere hope to succeed.

    KSR was not in the unpredictable arts. In mech eng, shifting from, say, a journal bearing to a pin roller bearing might or might not be a matter of design choice, routine, or obvious but I do not think it is an area in which “obvious to try” jurisprudence has anything useful to contribute.

  42. “The difference, while nuanced…

    It’s not that nuanced. They are separate and distinct arguments and rationales for obviousness. As are the counter arguments to them.

    Word.

  43. I’m curious as to whether or not the particular niche market of intellectual property is seeing a reflection of the larger general trend, or is innoculated, given the technical (even geeky) bent that is also required.

    Any insight out there?

  44. “Design choice” is just another word for “obvious to try”

    Not really. The difference, while nuanced, is real.

    (and no, I am not going to explain the difference to you).

  45. Just Saying: When you use “these words” in your rejection, you are binding yourself to the type of showings described by these cases.

    Do you mean “when Examiner’s use these words” they are stuck with those particular words and no reviewing tribunal is permitted to infer the existence of an argument that is similar or identical and is based on art and facts in the record but uses a term (“design choice”) that is not found in another case?

    You should take a close look at this case and reflect upon how it might impact your narrow understanding.

    As I noted above, it’s worth looking at this from another perspective. Let’s say I argue in district court that a claim is invalid as obvious in view of A and B because (1) A teaches all the elements except a doohickey; (2) B teaches that doohickeys are one of a number of elements that can be used to achieve the purpose achieved by the doohickey in A. I never use the term “design choice.” I lose in district court because there’s disagreement about what B teaches.

    I raise the same arguments on appeal. I win. The Federal Circuit agrees with me that the claims are obvious and in their opinion they state that use of the doohickey was simply a “design choice”. They site some case that uses that term.

    This is your idea of a miscarriage of justice? “Design choice” is just another word for “obvious to try” which is what KSR is about, for cripes sake.

  46. This was something that Dudas tried to include in his rules package. There was even something about applets being required to show where each argument in an appeal brief had been argued previously. Thankfully, those rules are NOT in effect.

  47. Law school applications are plummeting and law schools are desperate to fill up their classrooms to keep the tuition dollars flowing in. It’s never been easier to get into law school than right now. But he still won’t make it in.

  48. “People (particularly lawyers) can get really hung up on these words, sometimes, to the extent that they miss the forest for the trees.”

    The reason why you are continually ridiculed is that you don’t understand the law and “these words.” There are several Federal Circuit cases that involve “design choice,” and if you invoke “design choice” you invoke these cases. Design choice, however, is usually a bad argument to make if you are looking to reject a claim. Hence, you are better off making a different type of argument.

    You would know all this if you’ve had much experience prosecuting applications and took the time to research the case law the Examiner was trying to push (i.e., rejecting claims based upon “design choice”).

    In the end, “these words” are code words for specific fact patterns the Federal Circuit has already addressed. When you use “these words” in your rejection, you are binding yourself to the type of showings described by these cases. Other examples of code words are “inherent” and “simple substitution.”

    Use them at your own peril.

  49. There is no regulation. It is something that the BPAI pulled from the Federal Circuit … while pretending that the PTAB was a court.

    Of course, the PTAB has little qualms constructing arguments out of whole cloth.

    6 — you really should learn the difference between a regulation, code, and case law.

  50. The Examiner’s formulation of the rejection was “design choice” light. It reads like design choice, but doesn’t say “design choice.”

    The Federal Circuit thus viewed Rexnord’s “design choice” argument as a “supporting argument” and not an alternate rationale for obviousness (new argument not earlier presented).

    Word.

    I’d go further and state that “design choice” is simply shorthand for the use of common sense and the knowledge of the skilled artisan to determine whether the prior art provided sufficient motivation such that the invention is deemed unworthy of a patent.

    People (particularly lawyers) can get really hung up on these words, sometimes, to the extent that they miss the forest for the trees.

  51. This is a case where the Federal Circuit agreed with the examiner’s obviousness rejection and reinstated it.

    The Examiner’s formulation of the rejection was “design choice” light. It reads like design choice, but doesn’t say “design choice.”

    The Federal Circuit thus viewed Rexnord’s “design choice” argument as a “supporting argument” and not an alternate rationale for obviousness (new argument not earlier presented).

  52. Hey does anyone know off the top of their heads if there is a regulation stating that the board will not ordinarily entertain arguments beyond those presented in the applicant’s initial appeal brief in a normal ex parte appeal?

    If so, would you mind sharing where it is?

  53. Both seem somewhat inconsistent with the way appellate practice usually works: if an appellee doesn’t argue an issue in its responsive brief, it generally can’t argue that issue in its request for rehearing regardless of whether it made the argument before the lower tribunal.

    It gets difficult keeping track of events here (I suggest re-writing the procedural history strictly chronologically and not discussing any details of the CAFC’s opinion until the end). Still complicated though.

    It seems to me the CAFC is recognizing that in an inter partes review it’s hardly fair to punish the party requesting reexamination for an oversight by the Examiner. Wouldn’t the opposite of the CAFC’s ruling here be equivalent to preventing an appellant from a district court ruling from raising arguments that were made in the district court but somehow didn’t make it into the judge’s decision?

    With respect to these particular facts, it seems the Board was operating in the world of maximum anal retentivity. It’s not like there was some new art or a wildly different argument being raised for the first time. Obvious in view of “design choice” or obvious because the references are motivating when the knowledge of the ordinarily skilled artisan is taken into account … I don’t see much daylight between those two arguments, frankly.

  54. How is this decision at all consistent with the case law clearly holding that the Board cannot make unauthorized new grounds of rejection without giving the appellant a fair chance to rebut? (Stepan, Leithem, Kumar). Those cases were were not, I think, inter partes, but I don’t see how that should make a difference? (Does it?)

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