Tag Archives: motivation to combine

Patent Examiners Should Interpret Claims In Light of Specification

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In re Johnston (Fed. Cir. 2006)

Although the CAFC affirmed the B.P.A.I’s use of a dictionary in defining the patent applicant’s claim terms, the court did so only because the patent specification did not otherwise provide any limits the terms.  The court thus indicated that the PTO should apply the principles of Phillips v. AWH during prosecution — rather than the PTO’s current practice of giving claims their “broadest reasonable interpretation.”

In addition, the court provided an excellent review of its string of precedents concerning the standard for combining references in an obviousness rejection:

Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1385 (Fed. Cir. 2001) (“In holding an invention obvious in view of a combination of references, there must be some suggestion, motivation, or teaching in the prior art that would have led a person of ordinary skill in the art to select the references and combine them in the way that would produce the claimed invention.”);

In re Dance, 160 F.3d 1339, 1343 (Fed. Cir. 1998) (“When the references are in the same field as that of the applicant’s invention, knowledge thereof is presumed. However, the test of whether it would have been obvious to select specific teachings and combine them as did the applicant must still be met by identification of some suggestion, teaching, or motivation in the prior art, arising from what the prior art would have taught a person of ordinary skill in the field of the invention.”);

In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988) (there must be “some objective teaching in the prior art or that knowledge generally available to one of ordinary skill in the art would lead that individual to combine the relevant teachings of the references”);

Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cri. 1985) (“When prior art references require selective combination by the court to render obvious a subsequent invention, there must be some reason for the combination other than the hindsight gleaned from the invention itself.”).

Be aware that this particular issue is being considered by the Supreme Court in KSR v. Teleflex.  This decision solidifies the CAFC’s position and increases the odds that KSR will be taken-up on certiorari.  As noted by Professor Wegner, the Johnston panel “says nothing about the Anderson’s-Black Rock or Sakraida Supreme Court standard of patentability” that is the subject of the KSR case.

 * Cite as Dennis Crouch, Patent Examiners Should Interpret Claims In Light of Specification, Patently-O, January 30, 2006 at https://patentlyo.com.

Solicitor General to Opine on Landmark Obviousness Case

Patent, Patent Cases 2005,

PatentlyOImage025_smallKSR International v. Teleflex (On Petition for Certiorari).

KSR is challenging the Federal Circuit’s “teaching-suggestion-motivation test” for determining whether two references can be combined in an obviousness rejection.  This test has been a stalwart of Federal Circuit jurisprudence for twenty years.  During that time, however, the Supreme Court has not heard a single obviousness case. 

The case is now on petition for certiorari at the Supreme Court — awaiting the High Court’s decision on whether to hear the case.  Signaling at least a tepid interest in the case, on October 3, 2005, the Court has asked the Solicitor General to file a brief expressing the views of the US Government.  The new Chief Justice (Roberts) took no part in the decision.

At this point, it is likely that the Court will follow the Solicitor General’s recommendations — although it is still unclear what those recommendations will be.

Support for the petition: Respected law professor John Duffy is an attorney of record on the KSR brief, which argues that the CAFC’s obviousness test goes against Supreme Court precedent, against precedent of other circuits, and is bad policy. Professor Duffy is a former clerk of Justice Scalia.

A consortium of five major corporations, including Microsoft, Cisco, and Hallmark have filed as amicus supporting the petition.  Their brief argues that the current structured test for obviousness is too easy a hurdle for patentees and that the formalities of the test undermines courts ability to truly determine whether an invention is obvious to one skilled in the art.

Documents:

Links:

BPAI: No Motivation to Combine Because Neither Cited Reference Recognized Advantages Discussed in Application

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Ex parte Gottling (B.P.A.I. 2005) (unpublished).

Gottling successfully appealed an Examiner’s rejection based on his argument that there was no motivation for combining the cited prior art references within the references themselves.

Obviousness cannot be established by combining prior art to produce the claimed invention absent some teaching or suggestion supporting the combination.  The mere fact that the prior art may be modified in the manner suggested by an examiner does not make the modification obvious unless the prior art suggested the desirability of the modification.

In this case, the Board found that the Examiner had not explained “why a person of ordinary skill in the art would have found it obvious” to combine the references in the manner proposed by the Examiner.” In particular, the Board noted that neither reference specifically recognized the advantages discussed in Gottling’s application.

KSR v. Teleflex, now before the Supreme Court asks the court to review the “teaching-suggestion-motivation test” that was the basis of the Gottling decision.  

Suggestion to Combine References Flows from Ordinary Knowledge of those Skilled in the Art

Patent, Patent Cases 2005,

In re Battiston (Fed. Cir. 2005) (NONPRECEDENTIAL)

by Cory Hojka

In Teleflex v. KSR, a case now awaiting a petition decision at the Supreme Court, the Federal Circuit ruled that the correct “teaching-suggestion-motivation test” for obviousness determination requires “a court to make specific findings showing a teaching, suggestion, or motivation to combine prior art teachings in the particular manner claimed by the patent at issue.”

Joseph Battiston, therefore, appealed a decision by the PTO Board – claiming that the board applied the wrong standard of obviousness. Particularly, Battiston argued that the PTO “used impermissible hindsight to combine the cited art and failed to make findings on a motivation to combine the cited art.” The appellate panel did not agree – rather the panel found substantial evidence supporting the Board’s finding that ordinary knowledge of one skilled in the art would suggest a combination of references. In further support of their position, the CAFC cited In Re Rouffet, noting that “the suggestion to combine references may flow from the nature of the problem . . . [or] the teachings of the pertinent references or from the ordinary knowledge of those skilled in the art that certain references are of special importance in a particular field[.]”

Battiston also failed to convince the court that the PTO improperly grouped his rejected claims. Citing In re McDaniel, the court reaffirmed its rule that “in the absence of a clear statement asserting separate patentability of the claims, the Board is free to select a single claim for each group of claims subject to a common ground of rejection as representative of all claims in that group and to decide the appeal of that rejection based solely on the selected representative claim.”

Rejection Affirmed.

Note: Cory Hojka is a law clerk at McDonnell Boehnen Hulbert & Berghoff LLP and a law student at the University of Chicago Law School in Hyde Park.

Inconsistency Between Views of Two PTO Examiners Found Relevant to Obviousness Determination During Litigation

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PatentlyOImage043Syntex v. Apotex (Fed. Cir. 2005).

Apotex filed an ANDA to begin marketing a generic version of ACULAR, an ophthalmic NSAID protected by a patent owned by Syntex.  Based on the Section IV filing, Syntex filed suit against Apotex for patent infringement.

After a bench trial, the district court determined that the proposed generic infringed the claims of the ACULAR patent and that the patent was not invalid.

Regarding invalidity, the district court concluded that Syntex had overcome obviousness issues by showing that the prior art taught away from the use of the drug/surfactant for opthalmic uses and that such a use created “unexpected results.” In its decision, district court noted that because the prior art at issue had been before the examiner during prosecution, the burden of proving the challenged claims obvious “is particularly high” — and that Apotex had failed to meet this heightened burden. 

On appeal, the CAFC reversed — finding “clear error by the district court in several of the grounds that led it to conclude that the invention claimed by the claims in suit would not have been obvious.” 

Of the several grounds for reversal, the issues of examiner discrepancy, expert testimony, and commercial success may be the most interesting:

Examiner Discrepancies:

Two different PTO examiners worked on various portions of the asserted application and its parent applications and had seemingly inconsistent views regarding patentability of the application.  The CAFC found this relevant to the obviousness determination.

This statement contradicted the express finding of the initial PTO examiner that Syntex’s earlier data failed to show unexpected results. Whether the second examiner was aware of the earlier rejection of Syntex’s claims is unknown. But the relevance of the inconsistency between the views of two examiners is not insignificant.

Although we conclude . . . that Syntex did not commit inequitable conduct . . . we think the unvarnished view of the prosecution history shows some weakness in the conclusion that the patentee established unexpected results for the claimed surfactant.

Expert Testimony:

The Appellate Panel found that the district court erred by failing to examine Apotex’s expert testimony on the question of motivation to combine and unexpected results.

Commercial Success:

The district court relied heavily on the commercial success of ACULAR in its nonobviousness decision.  However, the CAFC requested that the lower court revisit this issue in light of the recent case of Merck v. Teva.

In Merck, the court found that commercial success of an FDA restricted product “has minimal probative value on the issue of obviousness. . . . Financial success is not significantly probative . . . because others were legally barred from commercially testing the [] ideas.”

Concurrence:

In a concurring opinion, Judge Prost disagreed with a portion of the majority opinion that made note of “inconsistency between the views of two examiners” who examined the asserted application and a parent application.

In general, I fail to see how the conduct of a patent applicant is relevant to an obviousness determination. Alleged misconduct at the PTO, in terms of either mischaracterizations or omissions, goes to the heart of an inequitable conduct inquiry but is simply irrelevant to an obviousness inquiry.

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CAFC: Court Can Only Correct Prima Facie Patent Errors

Patent, Patent Cases 2005

Ribbon CurlerGroup One Ltd. v. Hallmark Cards, Inc. (Fed. Cir. 2005)

Group One owns patents on a device for curling ribbon. Hallmark manufactures pre-curled ribbon products and in 1997, was sued by Group One for infringement.

A jury found the patent valid and infringed and awarded $8.9 million in damages to Group One.  However, in a post-verdict ruling, the Judge found the patents invalid.

I. Correctable Mistake on the Patent

One of Group One’s patents included a printing error by the PTO that resulted in the omission of important claim language that was added during prosecution of the application.  The district court held that it lacked authority to correct the error and that only the PTO could correct the printing error. 35 U.S.C. 254.

The appellate court affirmed, finding that a district court may only correct a patent document if the error is “apparent from the face of the patent.”

II. Motivation to Combine

The patent claims require a “stripping means” that was found in several prior art references.  None of the references, however, related to ribbon curling. The jury found that the references did not obviate the claims — a verdict that was overturned by the district court in a JMOL.  The CAFC restored the jury verdict, finding that even the examiner’s failure to consider stripping means references could not “provide a basis for overturning the jury’s factfinding.”

Case Questions CAFC’s Obviousness Jurisprudence

Patent, Patent Cases 2005,

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KSR International v. Teleflex (On Petition for Certiorari)

In January 2005, the CAFC decided Teleflex v. KSR — holding that when combining two or more references in an obviousness finding, there must be a suggestion or motivation to combine the teachings.  This “teaching-suggestion-motivation test” has been a stalwart of Federal Circuit obviousness jurisprudence for twenty years.  During that time, the Supreme Court has not heard a single obviousness case.

Now, KSR has petitioned the Supreme Court for a writ of certiorari.  In its petition, the company makes a couple of interesting points that may push the High Court to accept the case:

  • In Anderson’s-Black Rock (1969) and Sakraida (1976), the Supreme Court held that “a combination which only unites old elements with no change in their respective functions” is precluded from patentability under 103(a).  Under the Sakraida standard, which remains law, the Teleflex patent is arguably obvious.
  • With the emergence of Holmes Group, circuit splits will become more of a possibility in patent law.  On this issue, the Federal Circuit has acknowledged the existence of a circuit split between itself and the Fifth Circuit.  KSR points out that the split extends to other circuits as well.  The other circuits have followed the Sakraisa standard while the CAFC sticks to its requirement of an explicit motivation to combine.

A consortium of five major corporations, including Microsoft, Cisco, and Hallmark have filed as amicus supporting the petition.  Their brief argues that the current structured test for obviousness is too easy a hurdle for patentees and that the formalities of the test undermines courts ability to truly determine whether an invention is obvious to one skilled in the art.

In addition, Teleflex has filed its opposition to the petition — arguing that (1) obviousness is well settled law and need not be revisited; (2) the CAFC’s test is consistent with Graham; and perhaps most importantly (3) this case does not hinge on the obviousness issue.

(more…)

CAFC: District court must specify motivation to combine prior art references

Patent, Patent Cases 2005,

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Teleflex v. KSR (Fed. Cir. 2004) (unpublished).

Intro: Teleflex sued KSR for alleged infringement of Teleflex’s patented adjustable gas-pedal assembly (Patent No. 6,237,565).  The case was dismissed on summary judgment after the judge determined that the invention was obvious.  Teleflex appealed the decision.

Obviousness: A patent claim is obvious, and thus invalid, when the differences between the claimed invention and the prior art "are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art." The determination of whether an invention is obvious is based on a number of factors — commonly termed Graham Factors, including:

  1. the scope and content of the prior art;
  2. the level of skill of a person of ordinary skill in the art;
  3. the differences between the claimed invention and the teachings of the prior art; and
  4. the extent of any objective indicia of non-obviousness.

If obviousness is found by combining multiple references, there must also be some motivation to combine the prior art teachings in the particular manner claimed. In re Kotzab.

The Case: In its decision, the Appellate Court agreed with Teleflex, that the district court applied an incomplete teaching-suggestion-motivation test. 

This is because the district court invalidated claim 4 of the ’565 patent on obviousness grounds without making “finding[s] as to the specific understanding or principle within the knowledge of a skilled artisan that would have motivated one with no knowledge of [the] invention to make the combination in the manner claimed.” . . . The district court was required to make specific findings as to whether there was a suggestion or motivation to combine the teachings of Asano with an electronic control in the particular manner claimed by claim 4 of the ’565 patent.

Because the district court failed to make specific findings as to the suggestion or motivation to combine references, the CAFC vacated and remanded.

Conclusory Statements by Patent Examiner are Inadequate to Support Motivation to Combine References

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In re Bruce Beasley (Fed. Cir. December 7, 2004) (04-1225 Unpublished Opinion).

In 1991, Beasley filed a patent application directed to the generation of images on a video screen using a light pen that operates by mapping the screen into a memory on a point-by-point basis. 

The patent appeals board (BPAI) found that the invention was obvious based on prior art patents cited by the patent examiner during prosecution.  Beasley then appealed to the Court of Appeals for the Federal Circuit (CAFC).

On appeal, Beasley argued that the examiner never established a prima facie case of obviousness.  Specifically, Beasley urged reversal because there was no motivation or suggestion to combine the references cited by the Examiner and BPAI.

The Court agreed with Beasley and reversed the BPAI’s rejection — finding that:

The record reflects that the examiner and the Board have managed to find motivation for substituting one type of memory for another without providing a citation of any relevant, identifiable source of information justifying such substitution. The statements made by the Examiner, upon which the Board relied, amount to no more than conclusory statements of generalized advantages and convenient assumptions about skilled artisans. At least under the MPEP then in effect, such [conclusory] statements and assumptions are inadequate to support a finding of motivation, which is a factual question that cannot be resolved on subjective belief and unknown authority.

Vacated and Remanded.

In Dissent, Judge Dyk would have affirmed the obviousness rejection.

I see no error in the Board’s reliance on the PTO’s own specialized knowledge [for a motivation to combine]. The effect is merely to create a prima facie case, and to shift the burden to the patent applicant. Here the applicant did not refute the factual findings of the Board and the patent examiner, but merely offered lawyer argument to contradict the Board’s findings. Under these circumstances the application was properly rejected.

With this said, I agree that the MPEP provision in effect at the time is not a model of clarity and can be read as recognizing only a very limited scope for the use of the PTO’s expertise. MPEP § 2144.03 (7th ed. 1998). However, the current version appears to allow greater latitude. MPEP § 2144.03 (8th ed., rev. 2, 2004). In future cases, where the PTO has provided us with an interpretation of the new MPEP provisions, we will need to address the extent to which the new version of the MPEP gives the PTO greater scope to rely on its own expert knowledge.

 

35 U.S.C. 103(a): Disclosure of alternative embodiments does not constitute teaching away.

Patent, Patent Cases 2004,

In a case involving the design of shoe tred, the Federal Circuit provided further insight into the motivation to combine references under 103(a).

In re Fulton (Fed. Cir. 2004) (04-1267).

After receiving an obviousness rejection at the Board of Patent Appeals and Interferences (BPAI), inventors Fulton and Huang appealed to the Federal Circuit.  Their utility patent application is directed to a shoe sole with increased traction.  The BPAI found that the prior art as a whole suggested a combination of the orientation of hexagonal surfaces found in the application. 

Motivation to Combine Need Not Come from Preferred Alternatives: On appeal, the inventors argued that there was no motivation to combine because the characteristics disclosed in the references were not the preferred alternative.  The CAFC rejected this argument — finding that “our case law does not require that a particular combination must be the preferred or the most desirable, combination described in the prior art in order to provide motivation for the current invention.”  The appeals court went on to clarify that the “prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives” unless the disclosure criticizes, discredits, or otherwise discourages the solution.

Rejection for obviousness affirmed.