Ex parte Jellá (BPAI Precedential Opinion) fd081619-1.pdf
Most modern metal garage doors have four or five panel sections. The older wooden doors often had only one panel. Jella’s invention is simple — have three panels each “substantially twenty-eight inches” in hight. The prior art taught “any number” of panels including one, four, five, or six. Following the examiner’s lead, the Board of Patent Appeals and Interferences (BPAI) found the invention obvious.
The BPAI issued a precedential opinion focusing on obviousness. The prima facie case of obviousness is easy under KSR even without any evidence that anyone had previously considered a twenty-eight inch door.
The Court in KSR noted that “[wlhen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, Section 103 likely bars its patentability.” Changing a conventional seven foot high overhead garage door from a four panel section door to a three panel section door is nothing more than a predictable variation sparked by design incentives in the hope that a new look to the door would result in increased sales.
What it looks like here is that the driver for the innovation really was a need for a new ornamental design – motivating PHOSITA to create the obvious variation.
In our minds, this is an example of market demand driving a design trend, and the Supreme Court in KSR warned against granting patent protection to advances such as this that would occur in the ordinary course without real innovation . . . .
We further find that market pressure existed in the garage door industry to create a new design trend by updating the look of garage doors to spur additional sales in the industry.
In addition to allowing ornamental design needs to serve as the motivator to try a new design, the Board did not require any tight nexus between the design motivation and the new design (other than the need for a new design).
I highlight the lax approach on obviousness to contrast the Board’s strict approach when considering objective or secondary factors of nonobviousness.
Nexus: The bulk of the Jellá opinion is spent repeatedly shooting down the applicant’s arguments on secondary considerations of non-obviousness and the accompanying declarations. The most often repeated point was that any objective evidence must have a clear nexus with the invention as claimed.
“To be given substantial weight in the determination of obviousness or non-obviousness, evidence of secondary considerations must be relevant to the subject matter as claimed, and therefore the examiner must determine whether there is a nexus between the merits of the claimed invention and the evidence of secondary considerations.”
The nexus requirement include being “commensurate in scope with the claims.”
Ornamental Features in Utility Patents: Additionally, the ornamentality or striking good looks of a design cannot be used as evidence of nonobviousness. Here, the BPAI rejected a declaration discussing the “unique” look of the garage door based on a desire to avoid overlap with design patent law: “Were we to allow secondary considerations of non-obviousness to be based on the industry’s reaction to the ornamental appearance of the claimed invention, we would be blurring the distinction between design and utility patent protection. Objective evidence of secondary considerations of non-obviousness should be tied to the functional aspects of the claimed invention for a utility patent application.” Oddly enough, the BPAI did allow the PTO to use the ornamental features to prove a “market pressure” — finding that “market pressure existed in the garage door industry to create a new design trend by updating the look [and appearance] of garage doors to spur additional sales in the industry. … In our minds, this is an example of market demand driving a design trend, and the Supreme Court in KSR warned against granting patent protection to advances such as this that would occur in the ordinary course without real innovation.”