Obviousness does not Require Prior Art to Fit Together Exactly

ClassCo v. Apple (Fed. Cir. 2016)

In response to being sued for patent infringement, Apple filed for inter partes reexamination of ClassCo’s Patent No. 6,970,695. That litigation (originally filed in 2011) has been stayed pending the resolution here.  Although the patent had survived a prior reexamination, this time the Examiner rejected the majority of the patent claims as obvious; the PTAB affirmed those rejections; and the Federal Circuit has now re-affirmed.

The patent relates to a “caller announcement” system that uses a phone’s speaker (rather than screen or separate speaker) to announce caller identity information.  The system includes a “memory storage” that stores identify information being announced.

The examiner identified the prior art as U.S. Patent No. 4,894,861 (Fujioka) that teaches all of the claimed elements (of representative claim 2) except for use of the phone’s regular audio speaker (rather than a separate speaker) to announce a caller’s identity (claimed as the “audio transducer”).  A second prior art reference was then identified as U.S. Patent No. 5,199,064 (Gulick) that taught the use of the audio transducer for providing a variety of call related alerts.

On appeal, ClassCo argued that the combination of Fujioka and Gulick was unreasonable because it would involve changing the function of the known elements.  The Federal Circuit disagreed writing that:

KSR does not require that a combination only unite old elements without changing their respective functions. . . . Instead, KSR teaches that ‘[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.’ And it explains that the ordinary artisan recognizes ‘that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.

Slip opinion at 8 (quoting KSR).  The court goes on to explain that a combination of known elements can be obvious even the elements don’t fit perfectly together like puzzle pieces.  Rather, the approach is “flexible” in its pursuit of determining whether the combination would have been “predictable” – i.e., obvious.

Although KSR rejected a strict application of a motivation-to-combine, the court consistently required at least an explanation of that motivation.  Here, the court found that “substantial evidence” supports the PTO conclusions since some of the benefits were suggested by both prior art references.

Secondary Indicia: During reexamination, ClassCo had also presented evidence of industry praise for its products covered by the patent.  That evidence was disregarded by the PTO as, inter alia, not commiserate commensurate with the scope of the claims. 🙂 In particular, the Board noted that the industry praised particular embodiments but did not praise other potential embodiments. On appeal, the Federal Circuit rejected those conclusions.  The court found that some of the evidence praised ClassCo features that were not available in the prior art and that were “within the scope” of the representative claims.

[T]he Board found the evidence not commensurate in scope with these claims on the ground that they are too broad, encompassing other embodiments. But “we do not require a patentee to produce objective evidence of nonobviousness for every potential embodiment of the claim.” Rambus. Rather, “we have consistently held that a patent applicant ‘need not sell every conceivable embodiment of the claims in order to rely upon evidence of [objective indicia of nonobviousness].’” In re Glatt Air Techniques, 630 F.3d 1026 (Fed. Cir. 2011) (quoting In re DBC, 545 F.3d 1373 (Fed. Cir. 2008)).

Although the Board erred in its approach to objective indica, that was harmless error since the prior art evidence was strong. “We nonetheless agree that the value this evidence possesses in establishing nonobviousness is not strong in comparison to the findings and evidence regarding the prior art under the first three Graham factors.”  Obviousness affirmed.

Although a different product, the following ClassCo video review is a fun throw-back:

51 thoughts on “Obviousness does not Require Prior Art to Fit Together Exactly

    1. 10.1

      She was obviously selected by Google. In my personal knowledge of her, I’d classify her as nasty, arrogant, and not very bright. Perfect for a stooge of Google.

      1. 10.1.1

        Google’s API, Adobe for forms, the USPTO loves monopolies – the government loves monopolies – ones that don’t expire in 20 years. Did I mention NA Banks? Or health insurance companies? Or cable companies? Who needs patents when the government sanctions and fosters illegal monopolies? Revolving door in action, politicians and officials, available to sell our society to the highest bidder.


            You are welcome, antitrust laws have plenty of exceptions. According to the government, to benefit the public. What a crock. Monopolies have become one with the government. How’s your choice in banks? Health insurance companies? Operating systems? Cable companies? Electrical power? Monopolies have captive bill payers, customer service is nonexistent. They don’t need it and the government stands along side in agreement. Patents become weaker and weaker, just the way monopolies like it.

  1. 9

    Might we see a rehearing or cert petition? No circuit court has authority to affirm an administrative agency on anything other than the reasoning used by that agency. Once the Court found error in the failure to consider objective indicia, it should have remanded.

    Under SEC v. Chenerey Corp., 318 U.S. 80 (1943), an agency action can be upheld only on the agency’s stated grounds. Id. at 87 (“The grounds upon which an administrative order must be judged are those upon which the record discloses that its action was based.”). But the Federal Circuit has (in conflict with other circuits) divided questions of law from questions of fact for purposes of Chenerey (e.g., In re Comiskey, 554 F.3d 967, 974 (Fed. Cir. 2009)), so as to reach alternative legal grounds for affirmance. Even so, it has not permitted alternative factual grounds to support a Patent Office administrative outcome. See, e.g., NEC Home Electronics, Ltd. v. United States, 54 F.3d 736, 743 (Fed. Cir. 1995) (“We are powerless to affirm an administrative action on a ground not relied upon by the agency.”); Drumheler v. Dep’t of the Army, 49 F.3d 1566, 1573 (Fed. Cir. 1995) (“We must review the Board’s decision on the grounds on which it was made.”); see also In re Thrift, 298 F.3d 1357,1366-67 (Fed. Cir. 2002) (refusing to consider potential ground for obviousness not relied on by the Board).

    1. 9.2

      Robert, check this out:

      In SERVER TECHNOLOGY, INC. v. AMERICAN POWER CONVERSION, link to cafc.uscourts.gov, the Federal Circuit without comment consider a jury verdict where validity was tried to a jury under Rule 39(c), which reads,

      “(c) Advisory Jury; Jury Trial by Consent. In an action not triable of right by a jury, the court, on motion or on its own:
      (1) may try any issue with an advisory jury; or
      (2) may, with the parties’ consent, try any issue by a jury whose verdict has the same effect as if a jury trial had been a matter of right,

      This development is significant.


          Well, someone believes that there is no right to a trial by jury for validity even though the Federal Circuit has ruled in In re Lockwood. Apparently, the somebodies believe that MCM Portfolio LLC may have somehow overruled Lockwood.

          Anyhow, during oral argument, Judge Dyk actually suggested that they might directly overruled Lockwood.

  2. 8

    So, the USPTO does not need to fact find as to the identical function? To show by a preponderance of evidence that the identical function is disclosed? Rather, it can reason (by impermissible hindsight) that the identical function would have been obvious? As to means-plus-function, applicant is limited to described means for the stated function. However, the USPTO can demonstrate obviousness by using means that “might” perform the stated function (again, using impermissible hindsight)?

    MPEP 2143.02: A rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 538, 416, 82 USPQ2d 1385, 1395 (2007); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).

    1. 8.1

      Sister anon, I am not sure what your position is (but I can guess by the tone of the words you start with).

      Can you tie the quote more into your point?


      1. 8.1.1

        Sure – the majority is ignorant of fact finding as to function, the law requires that the element performs the identical function. It is not obvious to use a knife as a screw driver absent EVIDENCE! The majority relies on hindsight, impermissibly, and misconstrues KSR.

  3. 7

    “…not commiserate with the scope of the claims.”

    I myself NEVER commiserate with the claims. Although sometimes I commiserate with the losing party when I think the court has erred in its decision.

  4. 6

    I sometimes think of the entropy of invention.

    Before the invention is made, the prior art starting points are dispersed in a sea of technology like particles of salt in a dilute salt/sand solid particle mixture.

    A search of the prior art would deliver only an unstructured sample of the prior art.

    After the invention is made, a focused search is made to gather closest starting point A together with points B and/or C which supply the features missing from A. The collection of A, B and C is then used to evaluate obviousness.

    However, the Examiner/Defendant search involves hindsight because it is known what to look for.

    In that regard, I often remind myself of the following passage from Arthur Conan-Doyle’s story Silver Blaze which, in my submission, is a “must-read” for any intending lawyer:

    “My dear Inspector, you surpass yourself!” Homes took the bag, and, descending into the hollow, he pushed the matting into a more central position. Then stretching himself upon his face and leaning his chin upon his hands, he made a careful study of the trampled mud in front of him. “Hullo!” said he, suddenly. “What’s this?” It was a wax vesta half burned, which was so coated with mud that it looked at first like a little chip of wood.

    “I cannot think how I came to overlook it,” said the Inspector, with an expression of annoyance.

    “It was invisible, buried in the mud. I only saw it because I was looking for it.”

    “What! You expected to find it?”

    “I thought it not unlikely.”

    Inspector Gregory had no theory about what had happened, his search was unfocused, and his result was negative. Sherlock Holmes had such a theory, his search was focused insofar as he was looking for a small piece of burnt match, and the likelihood of his finding it was much greater. It made all the difference.

    The defendant/Examiner search is focused and hindsight. Distortions inevitably result.

    1. 6.2

      Silver Blaze, indeed, my good man.

      But sometimes dogs don’t bark, which is why the story is normally cited, which might fit here, too, because . . . well, it’s durn’d obvious once you think about it.

  5. 5

    This sort of decision depresses me. I appreciate it is obviousness on appeal so that only if there is no substantial evidence can the underlying factual findings at first instance be changed.

    But still. As things stand, it seems to me to be that if the claimed combination of technical features delivers an enhanced performance attribute of the apparatus, an enhancement not mentioned in the prior art, the claim still falls down as obvious merely because (knowing the invention) it was “predictable” that the feature combination would deliver that attribute. How convenient for the patent owner.

    I really do dislike analysis processes, to determine what was obvious, that start from (and rely upon) ex post facto knowledge of the features and effects of the claimed invention.

    It doesn’t have to be that way. A fundamental imperative of the EPO Approach, for example, is rigorous exclusion of any reliance on hindsight knowledge of the claimed solution of the objective technical problem.

    A big improvement, don’t you think, on “It’s legally obvious because my common sense tells me, the judge, that it was obvious”. It is more impartial, objective and fair, and delivers more legal certainty.

    1. 5.1

      Max, synergy means there is an advantage beyond the sum of the parts. What is expected is that each part in a combination does same work and that the combination would not produce some new advantage that the parts operating serially would not.

      This seems to be an objective test provable with evidence that the combination of known produces the same effect as the parts operated separately.

      However, the PTAB and the Federal Circuit now invalidate patents without evidence of lack of synergy because they place the burden on the patent owner to prove synergy when the parts are known and there is some reason or motive to combine them. Still, when the combination produces something new and unexpected, that seems to be a discovery.

      Another way to prove that the combination produces something unexpected is market success.

      But I still would like a requirement to prove lack of synergy to invalid a patent on a combination of old elements.

      1. 5.1.1

        Another way to prove that the combination produces something unexpected is market success.

        Indicated by, perhaps.

        But prove? Not in the current climate.

      2. 5.1.2

        Ned, do you distinguish between a mere collocation and a new “combination”? English law does, and so does the EPO.

        You put your money on “synergy” but I wonder whether you are setting the bar too high.

        The granddaddy English case is the sausage machine claim in Williams v. Nye. It had a stuffing station and, downstream of it, a linking station (I may have misremembered the names of the stations). No dispute as to novelty, but in themselves both stations were old. The court held that the subject matter was an obvious collocation. What we (and Paul Cole, and the EPO) take from this is that if the operation of each of the two stations had been inter-related, it would have been a true combination, with results not achievable except with the combination, and with better chances of surviving obviousness attacks.

        With the case discussed here, I’m not sure to categorize the litigated subject matter as a collocation or a combination.

  6. 4

    Just because there is a “reason” for an invention, doesn’t make it obvious. Necessity always provides a reason. Otherwise, only frivolous inventions may be patentable. KSR validates TMS plus CS (common sense) Even with this low bar of patentability, examiners misrepresent the disclosures of the asserted prior art.

  7. 3

    This is one of those cases where the invention, if any, was in the recognition of a problem, because the solution was obvious. Once one decided to integrate caller ID and a voice line into one audio, the means to do so were known.

    The first time I heard caller ID being announced, I was impressed — not with the technology, but with the fact that the invention solved a problem that had existed for years.

      1. 3.1.1

        Are you stating your opinion that the invention was non-obvious, or are you trying to impress us with your knowledge of cliches?


          My reply was to Anon. Note the exact time of posting with Ben. Encountered a prior art assertion with the identical date of filing as the applicant. However, didn’t become the critical issue and wasn’t resolved. With e-filing will clock time be relevant?

    1. 3.2

      Ned I recall a Paper by Duffy, musing that the greater the length of time elapsed, between i) the publication of the prior art relied upon in the obviousness attacks and ii) the date of the claim, the more that tends to point to the presence of an inventive step. Perhaps you sympathise with Duffy’s point.

      I found the Duffy proposition interesting, but I am sceptical whether it should decide a case, given the artificiality of the concept of the PHOSITA. He/she does not share the limitations of the brains of real people.

      I note that the patent in suit here issued in 2005 but declared a 1992 priority date. Gestation period 13 years. A lot happened in those 13 years. Difficult to put the PHOSITA back to 1992/3.

      1. 3.2.2

        Max, long existence of similar means did not impress the Supreme Court in Sakraida. link to scholar.google.com There the Supreme Court cited Hercules cleaning the stables of Augeaus by diverting a river when it overturned a lower court opinion that a barn flush invention was nonobvious.

        Why it seems obvious, does it not, to divert rivers?


          Sakraida might be an example of a claim being obvious in the light of common general knowledge (rather than over the content of a single obscure and abstruse 50 year old printed document).

          Another example for Duffy’s “timing” theory: Suppose the claim is to a balloon for a catheter, characterized in that the balloon is made of PET. If both balloon catheters and PET are decades-known, then a new proposal to make the one of the other might involve an inventive step. By contrast, if PET film, and its handy mechanical properties, have been made3 available to the public only in the last two years than the suggestion to make the catheter balloon of the new wonder film might, in contrast, be obvious.

          What say you, Ned? any mileage in the Duffy theory?


            Sounds a bit like the oft-stated “if it was so obvious, then why was it not done before” line….

            (and then analyzing the timing of “before” in relation to the timing of the art and the timing of the elements)


            Max, without any other explanation for why the invention was suddenly made even though the parts for making it have been around for quite some time, I think there is a lot to Duffy’s position.

            I like your a balloon example. It is very much like the Hotchkiss v. Greenwood decision where the invention was the use of clay in a doorknob. The Supreme Court said that the claim was the work of the ordinary mechanic because the use of clay in doorknobs was known. But had that not been the case, they suggested, the clay doorknob invention may have been a patentable invention.

            And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter’s clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise; as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

            Hotchkiss v. Greenwood, 52 U.S. 248, 265 (1851). link to scholar.google.com


              I don’t think that MzxDrei’s balloon example fits your “this knob of potter’s clay is not new” point, Ned.

              In fact, it appears with “ as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.” that the new composition of matter being the new (relatively new, and certainly new to stents) is opposite that which MaxDrei would state as obvious in his “contrasted” view.


                Anon, you might be right in your interpretation of Hotchkiss. However I always took it to mean that if the material being claimed for use in a doorknob was unknown to be useful in that application, then it is application might be inventive.

                1. Again Ned – that is the opposite of what MaxDrei is saying.

                  Maybe you should listen to what MaxDrei is saying….


              Ned, anon, the PET balloon might or might not have been inventive, depending on the facts. So:

              Suppose doctors always thought they wanted a compliant balloon. So the balloon makers gave them a PE balloon and they were happy.

              Then one day a doctor said privately to the balloon maker that she wanted a balloon that didn’t stretch so much. Less like a party balloon and more like a paper bag. Soon afterwards, the balloon makers suggested a PET balloon.

              Alternatively, suppose there was a giant conference, at which the results of a research project were trumpeted, one which demonstrated how patients are better off with balloons that are not so compliant as PE. After that, is the PET balloon still patentable?


                Max, clearly the PET balloon provides a technical solution to a problem of too much elasticity in the context of a stent. The discoverer of that problem, for which the solution PET is the answer, is an inventor.

                The situation seems to be different if the problem is publicly known. Applying known techniques to solve known problems does not seem to rise to the level of invention.

  8. 2

    Honestly, this doesn’t even need go that far. If caller ID, and text-to-voice existed, this is obvious. Under KSR you don’t even need the phone alert art, there is no patentable difference between an alert and regular noise.

    1. 2.1

      Honestly, this doesn’t even need go that far. If cloth, and lumber existed, this is obvious. Under KSR you don’t even need the flying machine art, there is no patentable difference between a sail boat and a flying machine.

      1. 2.1.1

        One can Gist these to be nothing more than “directed to” the Abstract idea of movement, using common materials and “just applying” the “laws of nature”

        Gee, cut and paste enough of these decisions and we can just close the patent doors.

  9. 1

    The new embodiments use 3-D technology and olfactory chemical technology to present a 3-D picture of the caller that you can actually smell before you connect.

    That’s totally different from this patent which used existing technology to announce the caller’s identity.

    The CAFC: the ordinary artisan recognizes ‘that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.

    Maybe someday the PTO will hire ordinary artisans to examine Apple’s junky patents. In the meantime, they could consider hiring people who haven’t been comatose for the past 30 years.

    1. 1.1

      Is that what this is all about? Is that why you hate patents so much? Did the PTO reject your application to be an examiner?

      1. 1.1.1

        It is obvious that Malcolm would be ineligible. Rejections based on feelings and ad hominem are not on the Office script.


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