By Dennis Crouch
In re Chevalier (Fed. Cir. 2013) (nonprecedential) (Patent Application Ser. No. 11/407,778)
In a non-precedential but instructive opinion, the Federal Circuit has affirmed the USPTO's obviousness rejection of L'Air Liquide's application covering devices used to form gas-liquid dispersions. The Board rejected claim 1 as obvious, over a combination two prior art references – finding that it "would have been obvious to one skilled in the art to modify the Kwak device in view of the teachings of Howk."
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The difficulty with appealing PTAB decisions is that conclusions of fact made by the USPTO's appellate board are reviewed for substantial evidence. In order to win an appeal on a factual question, the patent applicant must go quite a bit further than simply proving that the PTAB's decision was wrong. Rather, the PTAB decision will only be overturned if not based on "more than a mere scintilla" of evidence. Restated, the question is whether the factual conclusion is based upon "such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." "[T]he possibility of drawing two inconsistent conclusions from the evidence does not prevent an administrative agency's finding from being supported by substantial evidence." Consolo v. Fed. Mar. Comm'n, 383 U.S. 607 (1966).
This case represent the most frequent form of PTAB decision – that the applied-for patent claim is unpatentable as obvious over a combination of references. The ultimate question of obviousness is a question of law (reviewed de novo on appeal). However, that ultimate conclusion is based upon a set of factual underpinnings as explained by Graham v. Deere. The Federal Circuit has also held that "[t]he presence or absence of a motivation to combine references in an obviousness determination is a pure question of fact." In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000).
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Chevalier challenged the combination of references – arguing that the combination of Kwak and Howk would be inoperable. Apparently Chevalier took the drawings from Kwak and Howk and unsuccessfully tried to jam them together. The Federal Circuit saw that process as "misapprehend[ing] the nature of the obviousness inquiry."
The obviousness inquiry does not ask "whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole." In re Etter, 756 F.2d 852 (Fed. Cir. 1985) (en banc); see also In re Keller, 642 F.2d 413 (CCPA 1981) (stating "[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference"). Rather, in a case such as this where each of the elements of the claim are known to the art, the obviousness inquiry requires a finding that the combination of known elements was obvious to a person with ordinary skill in the art.
Here, each of the elements of the claim is taught by Kwak with the exception that the Kwak deflector is not attached to the drive shaft. This deficiency in Kwak is supplemented by Howk, which teaches a deflector attached to the drive shaft. The examiner found, and the Board affirmed, that one of ordinary skill would be motivated to modify Kwak in view of Howk because the modification "would facilitate a more rapid and more complete conversion from axial flow to radial flow of the liquid exiting from the bottom of the device." Ex Parte Gilbert Chevalier, 2011 WL 6747404 (B.P.A.I. Dec. 21, 2011). Chevalier does not challenge this finding. Accordingly, we find no error in the Board's determination that Kwak and Howk could be combined to achieve the claimed invention, nor do we find any error in the Board's determination that one of ordinary skill would be motivated to combine these references to achieve an aeration device that more rapidly and more completely converts axial flow to radial flow in the gas-liquid mixture.
The appellate panel then moved to KSR v. Teleflex to bolster its decision:
Our conclusion is strengthened by Chevalier's admission that the deflectors of Kwak and Howk are "recognized equivalents performing the same function of converting axial flow to radial flow." Appellant's Br. 9. The Supreme Court stated in KSR that "when 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 a predictable result." KSR. Here, the claimed invention merely substitutes the deflector of Howk, which is attached to the drive shaft, for the deflector of Kwak, which is attached to the floor of the basin. This substitution achieved only the predictable result of converting the axial flow of the gas-liquid mixture to radial flow.
Rejection affirmed
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The problem with the appeal here is that the appellate arguments are essentially a repeat of the lawyerly discussion of facts made to the examiner and PTAB. When those do not work at the PTO, they are highly unlikely to work on appeal to the Federal Circuit. (No factual affidavits were submitted in the case at the PTO). If Air Liquide had wanted to win the case, they would have been better served to hire expert witnesses to provide testimony either as affidavits to the PTAB or else bring forth that evidence in a civil action. Of course, that approach is likely more expensive and raises a greater potential of inequitable conduct charges down the line – especially in cases like these where other members of the patent family have already issued.
Leopold:
The question is whether or not the intersection of statement 1 and statement 2 is null. If one assumes it is null, then they are not contradictory, if the intersection contains a claim, then they do contradict each other.
I find it bizarre that people trained as engineers and scientist would be satisfied with these two statements. My take on the two statements: two vaguely written statements that have a large intersection that apply a different standard. In other words, weasel words for a judge to apply to either declare an invention obvious or to declare the invention not obvious.
I think too the problem is these verbs: combination and substitution. Your argument is that statement 2 is a subset of statement 1. But, combination seems to read a new element joined on–an adding.
If statement 2 read, when the combination of known elements is merely a substitution of one element in a known device for another known element that performs the function of the known element and the substitution provides no more functionality for the device, then _____
Something like that. Plus, I’d add without a frame work for discussing the functionality and number of elements, etc., the two statements are inherently contradictory as there is no system in which to even analyze the statements.
I like to come back to thinking about a water pump. One can think of four elements: pipes, two values, and slider (water pusher). To which element does one ascribe the functionality of pumping water? Each of the elements of the water pump perform no new function. Each performs exactly the function that is known. Is there a way to ask in the statements below whether a new functionality is enabled by the substitution? or combination? There are weasel words of “nothing more”, but no systematic way of thinking about these issues.
Anyway, what amazes me is that engineers and scientists would not recognize that propositions about system (think about numbers if you want) where the rules for determining the number of elements, for combining the elements, determining the functionality of the elements is not fixed. There isn’t a framework that one can fall back on. There ad hoc disjointed propositions like the two statements below.
Anyway, my thoughts aren’t completely formed on this matter (obviously), but I am sure it is a mess. Just sit down and write a Markman brief and start reading a couple of hundred of cases on claim construction. Sheer nonsense.
Statement 1: “[t]he combination of familiar elements”
Statement 2: “[w]hen a patent claims a [known] structure that is altered by the mere substitution of one element for another”
I’m afraid that I don’t understand you, anon. Is there a dispute over whether there is a difference between “must” and “likely”? If so, I have to come in on the “yes, there is a difference” side. What’s your position?
I understand now how you came up with that 90% figure earlier today, though. You apparently think all of my comments are directed to you. There are therapies for that.
This “lawyering thing” is done by not pretending that my post clearly drew a difference between the words “must” and “likely” – no matter how much dust you try to kick up because it was a post with the moniker “anon.”
Clearly, one is not a “mere” substitution for the other.
I would also add that from what I’ve seen of judges and attorneys the fact they are applying a different standard “must” and “likely” means that all manor or machinations will be used to try to assert that an invention is either a statement 1 type of invention or a statement 2 type of invention. (or as I said an invention that is nothing more than several applications of statement 2.)
But, repeatedly using statement 2 to build the invention may make it inconsistent with statement 1’s intent (at least the intent of statement 1.)
If my client’s invention involved the repeated substitution of elements, then I might argue that this was more than a “mere” substitution. Isn’t that how this lawyering thing is done?
JCD: I don’t think it is quite that straightforward.
I am willing to concede that the way Leopold Bloom and you are reading the two statements that what you say is true.
But, I am not certain that statement 1 is not reducible to several statement 2’s.
Goal Invention : A + B + C built by:
Invention A + B + Z and A + X + C and the use of two statement 2s. So, how much does statement 2 enable you to build where the must remains in tack?
So, I don’t think it is quite so straight forward. Maybe statement 1 is broader in that you can add new elements and not just substitute elements. But, repeatedly using statement 2 to build the invention may make it inconsistent with statement 1’s intent (at least the intent of statement 1.)
In my opinion, these two statements are inherently vague and so it is difficult to determine whether or not they are inconsistent with one another as there aren’t any fixed rules to determine the exact scope of statement 2. How does one deconstruct the invention into its component parts? How does one build the invention with the component parts? That is why it is not “scary” that some attorneys are bothered by those two statements.
“Obviously, the group of situations called out in the second statement is a narrower group of situations than those called out in the first statement.”
Why is that obvious?
I do agree though that the statements refer to the two situations your refer to. Other than that I have no interest in the dispute. But I would like to know why you think the second situation (i.e. mere substitution) is obviously a narrower group than the first situation (i.e. combination of familiar elements).
Thanks.
The two statements are not inherently inconsistent, as should be clear to any attorney who reads them. It’s pretty scary that some people don’t understand that. I assume they just aren’t paying close enough attention.
The first statement refers to situations involving “[t]he combination of familiar elements”, whereas the second statement refers to situations “[w]hen a patent claims a [known] structure that is altered by the mere substitution of one element for another”. Obviously, the group of situations called out in the second statement is a narrower group of situations than those called out in the first statement.
Actually, we had recent evidence that pounding the table and impugning the motives, intelligence and character of the examiners will get you 20+ years pendency.
“Never see the light of day….”
It is always surreal with you, Sarah.
Still waiting MM – you now have an extra option as to explain how “must” is not actually “must” since an added provision removes the absolute necessity of that word.
The material applies to the same old crrp you post.
It still works too. Why change a thing that works?
another one of your obfuscatory strategies – the oblique reference to an earlier “explanation.”
Then if you try to discuss that earlier (usually incomprehensible) “explanation” and ask for clarification, anon will tell you that you need to answer his question first. And then he’ll call you a liar and invoke “Professor Crouch’s rules” as if that somehow supports his behavior.
It’s called the aNontucket Sleighride.
Btw, including a provisio (as in “unless its application”) also goes against the (over)reading of “must.”
You’ve almost reached China. Don’t stop now!
LOL – open your eyes and just read the messages posted above.
Another vague reference to previous posts, plus stale repeats of your “open your eyes” and “arrow into the ground” lines. Running out of material, are we?
“You don’t do much..”
Phhhffft.
Another arrow into the ground at the feet of Leopold.
Humor you? LOL – open your eyes and just read the messages posted above.
Yes, because cutting to the chase and clearly stating what I want you to do is “obfuscatory.”
Now that’s funny. You don’t do much “clearly stating” of anything, anon.
But humor me, please. What did you clearly state that you want me to do?
Yes, I have a thing about blatant lying – and you are doing it.
Would you care to be more specific?
I didn’t think so. Because that’s how plonkers roll.
I’ve told you what I am really saying (the clue is the “plainly” tip-off).
Ah, another one of your obfuscatory strategies – the oblique reference to an earlier “explanation.” This strategy only works, of course, if the reader doesn’t go back to check the earlier comment.
Here, you appear to be referring to this earlier gem of yours:
Put plainly, the term “likely” CANNOT mean the same thing as the term “must.”
Of course, nobody has ever said that the term “likely” means the same thing as the term “must.”
So, you are “plainly” plonking, again.
OK Leopold Bloom, I agree if the referents are different then the two statements are not inconsistent.
No problem with the “troll” comment.
I’ve told you what I am really saying (the clue is the “plainly” tip-off).
You didn’t see it because for some ridiculous reason you are overcome with an urge to shoot arrows into the ground at your feet any time you see a post by anon.
Nice circle MaxDrei. Don’t hurt your shoulder with that reach.
The “likely” and “must” was the key to my initial post.
Yes, I have a thing about blatant lying – and you are doing it.
LOL – taking pleasure in the company of the man with the stack of dead horses next to the water well is not a good thing (you would know that if you opened your eyes).
I am not the one digging MM – more self-defeat from you (unless your ready to concede that “likely” is not the same as “must”)
Btw, including a provisio (as in “unless its application“) also goes against the (over)reading of “must.”
Better trolling please.
Glad to know typos in an appellant’s notice of appeal justify lazy and shoddy work from a federal circuit court of appeals.
You must be a Fed. Cir. clerk.
Also sad to see people not proofread the captions on their Notice of Appeal (KOPPAS and STATED). An “appeal everything” guru like yourself would not commit such errors.
Thanks, Max. I was beginning to feel like I had stepped into some alternate universe where the language looks like English but operates completely differently. I suppose it’s still possible that I have, but if so, it’s nice to know that there’s at least one other resident alien here.
However, the other two statements have the same referent…
I think this is where we disagree, NWPA. In the two statements from KSR, the first one refers to “a combination of familiar elements according to known methods,” while the second refers to “a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field.” They’re not talking about the same group of inventions in these statements. The second referent is a subset of the first, so the second statement can be more restrictive and still be consistent with the first.
Thanks for responding politely – I apologize for the “troll” suggestion, as that was unnecessary.
Now I’m going to go look for anon’s substantive input.
Can somebody explain something to me: does attaching the deflector to the drive shaft improve conversion (from axial to radial flow) or not? You see, in the last para of Section I, it says it would have been obvious that it does but, in the last para of Section II, it says that all parties agree that it doesn’t.
To decide obviousness, we talk about whether the results of a mere substitution are no more than predictable. So can we be clear: when we modify Howk to include a Kwak deflector, do we unsurprisingly get the same conversion performance or, surprisingly, improved conversion performance?
Thanks Leo for persevering, and for presenting next to each other the two statements under discussion. I see that #2 includes “mere substitution” followed by “must”. That makes it clear for me that, if the claimed matter is cannot be presented as anything higher than a “mere substitution” that yields in results no more than what one would expect anyway, the only outcome is “obvious”.
Conversely, if the claimed subject matter is some combination or other of “familiar elements” (which of course embraces a much wider range of possibilities than a “mere substitution”) the outcome is not automatically obvious, even when the results are what one would have predicted, though it is “likely” to be obvious (under Graham). Nothing to get excited about there then.
And your earlier statement pair about postings to this blog was useful too. I say again, I appreciate your powers of persevereance. If it’s any encouragement to you, it is entertaining.
Actually, “invention” should be something like “for all inventions that are members of inventions that combine known elements with the known functions.”
So, 1 is saying that set of inventions likely has some characteristic. 2, is saying it must have that characteristic.
The reason they are not consistent is the statements are speaking to an entire set of inventions. Likely obvious implies that some are not. Must denotes none are. =><=
Maybe I am confused, but I am not troll.
Your two statements are consistent, but they differ from the other two statements in that your (1) is a genius and your (2) is a species. So, your (2) can be more restrictive and still be consistent with (1).
1 —> Person likely grade-A plonker
2 —-> (subset of person) is grade-A plonker
However, the other two statements have the same referent, and “likely” leaves open the possibility that the combination may not be obvious, whereas “must” does not. So, the statement are not consistent.
1 –> Invention likely obvious
2 —> Invention must be obvious
Invention is the same invention so these statements are not consistent.
anon: ony MM would tak emy statement of “I’m enjoying this” as a meltdown.
Except that’s not what precipitated my comment at all, anon. It was this:
your tried and true douchebag ways
That was in response to this comment:
In the case of “mere substitution” of known elements for known purposes, without additional countervailing facts, the result is certain: no invention, no patent.
From KSR:
“if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” page 13.
Go ahead and keep digging, anon.
I think you’re confused. Or trolling. Nobody said that “likely” and “must” are consistent. The question is whether the statements are consistent with one another, not whether they say exactly the same thing.
How about these two statements – leaving aside (for the moment) their accuracy, are the statements consistent with one another?
1. When you read comments on law-related blogs, you are likely to encounter some grade-A plonkers.
2. When you read comments signed by “anon” on the Patently-O blog, you have unquestionably encountered the king of grade-A plonkers.
I have seen NO substantive discussion from you or Leopold.
You’re not telling the truth – I gave you substantive answers at 9:21 am and 12:58 pm. Aren’t you the one who whines about lying on this blog?
And I am still waiting for that substantive explanation of how “likely” means the same thing as “must.”
No you’re not, because nobody has ever said that “likely” means the same thing as “must.” What you’re doing is throwing up a lot of dust because you’re too pigheaded to admit that you were wrong, even though you know that you were.
(and try not to ignore how I actually have shown the quote used at 9:21 AM was not the quote in the immediate case).
A prime example of your obfuscation. What on earth does “not the quote in the immediate case” mean? The Federal Circuit accurately quoted KSR for a rule of law. KSR got that statement from Adams, which it quoted approvingly, and in the process reaffirmed that rule of law. You do know, don’t you, that the proper thing to do, when relying on that rule of law, is to cite the later case (KSR), noting that the later case was quoting an earlier case (Adams)? By the way, this is precisely what the Federal Circuit did.
Now, back to your latest plonking: You said, and I quote: “The two statements CANNOT be consistent with each other.” The two statements at issue are reproduced below. Are you really saying that these statements are inconsistent?
1. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.
2. When 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 a predictable result.
I bet I don’t get a yes or no answer. Because that’s how plonkers roll.
And ony MM would tak emy statement of “I’m enjoying this” as a meltdown.
Lovely imaginary world you live in MM. But you might try visiting this reality once in awhile.
LOL – If you equate insults with meltdowns, then you are the top meltdown artist, bar none.
(Yet another glorious MM self-defeat).
I have seen NO substantive discussion from you or Leopold. He’s too busy shooting arrows at his feet.
And I am still waiting for that substantive explanation of how “likely” means the same thing as “must.”
Maybe you can take your tinfoil hat off and read the same blog as everyone else and point out where you or Leopold have actually addressed this (and try not to ignore how I actually have shown the quote used at 9:21 AM was not the quote in the immediate case).
“likely” and “must” are not consistent. Statement 1 should read “methods will be obvious” to be consistent with “must.” Statement 2 should read “the combination likely needs to do more” to be consistent with statement 1.
The two statements CANNOT be consistent with each other.
The two statements are right there for everyone to compare. Everybody can decide for himself who the plonker is. Here, I’ll make it really easy. The allegedly inconsistent statements are as follows:
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.
When 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 a predictable result.
Are you actually going to venture into a substantive discussion
I already did. So did LB. Your response was to behave like an ignorant plonker, as usual.
your tried and true douchebag ways
Nobody could have predicted yet another anon meltdown.
“The Federal Circuit quoted another statement from KSR.”
LOL – That “another statement” must be read in light of the actual statement of the case or else it is a misrepresentation (exactly how I said it was).
The two statements CANNOT be consistent with each other – that’s the point (and I am sure that you too will recognize that the the highest Court is not always consistent in what it says). Put plainly, the term “likely” CANNOT mean the same thing as the term “must.”
Why don’t you quit being wrong just for the sake of it?
Leopold pick up the arrow at your feet and then explain the quote I used from the case itself
Your original statement was that the Federal Circuit misrepresented KSR in using the word “must.” You were wrong. The Federal Circuit quoted another statement from KSR.
If you actually read them, the two statements are different, but completely consistent with one another. The Court explains that one of them is a specific application of the broader “doctrine,” which is represented by your quote: “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” The quote relied on by the Federal Circuit applies to a more specific situation: “When 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 a predictable result.” KSR thus says that is conceivable (although unlikely) that a combination of familiar elements according to known methods is not obvious, even if the results are predictable. But it also reaffirms that “mere substitution of one element for another known in the field must yield more than a predictable result.”
The Federal Circuit quoted the narrower rule. I don’t particularly care whether they got the result right in this case, but that narrower rule is good law.
You do recognize the priority of meaning within a judicial decision, right?
I might if I had any idea what you are trying to say. Why don’t you quit being disagreeable just for the sake of it?
LOL.
I am enjoying this alright – feel free to join Leopold in explaining the actual words used by the Court in the immediate case (hint: the words actually used in the immediate case were not “must.”)
What does “likely” mean? Why was that the word that was actually used (and used twice, both before and after the examples)?
Are you actually going to venture into a substantive discussion and give answers, or retreat to your tried and true douchebag ways of not answering, asking questions or just being insulting?
I read your post, anon. As Leo notes, the law is quite clear and the Federal Circuit is not “overstating” a thing.
In the case of “mere substitution” of known elements for known purposes, without additional countervailing facts, the result is certain: no invention, no patent.
From KSR:
“if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” page 13.
Just in case you have difficulty following this conversation, let’s rewrite it for you:
“if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way and the improvement requires mere substitution without any special skill, using the technique is obvious.”
Got it? Enjoy.
And for good measure, check out slip op page 13 (after the examples are given:
“The principles underlying these cases are instructive when the question is whether a patent claiming the combination of elements of prior art is obvious. When 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, §103 likely bars its patentability.” (emphasis added).
Your proper response is “Thank you.”
Oh the horror of you not reading my post at 11:02 and making the same mistake addressed therein.
Leopold pick up the arrow at your feet and then explain the quote I used from the case itself (and not your “approvingly used example” case.
You do recognize the priority of meaning within a judicial decision, right?
If the facts in this case are analogous to the facts in KSR, the only result is a finding of obviousness. That seems to be what the Federal Circuit was correctly observing.
From KSR:
“if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”
page 13
Same difference. As the Federal Circuit noted, in the case of “mere substitution” of known elements for known purposes, without additional countervailing facts, the result is certain: no invention, no patent.
I guess they got the page number wrong? Oh, the horror.
I’ve read it many times, anon. The “must” I am using was used by the Supreme Court in KSR. Yes, they were quoting an earlier case, but they did so approvingly. If you doubt that the statement is good law, you are mistaken.
If Air Liquide had wanted to win the case, they would have been better served to hire expert witnesses to provide testimony either as affidavits to the PTAB or else bring forth that evidence in a civil action.
Or just hire a lawyer to pound the table over and over and say “If it was so obvious, why isn’t it in the prior art??!?!” Bonus points if you hire someone to sit in the audience and say “Amen!” after every repetition of this phrase.
I’m told that this works. You just have to have faith.
Read the case again Leopold.
The must you are using is from an example case (US v Adams).
It is the later case (KSR itself) from which I quote. As you might see, a later Supreme Court case overrides the earlier case.
I’ve been seeing this in rejections.
Sad to see APJ’s cite form paragraphs (e.g. with In re Keller), but even sadder still to see Fed. Cir. judges do it.
No it doesn’t. The Federal Circuit quotes KSR exactly:
“The Court recognized that when 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 a predictable result.” KSR slip op at 12 (emphasis added).
The Court misstates (overstates) KSR with its “must:
“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR slip op at 12. (emphasis added)
Dennis,
Points well-taken in your review of this case. But I would also note that this Federal Circuit panel (Prost, Mayer, and Moore) is hardly the most “friendly” when it comes to patentability.
Comments are closed.