2143

D.    Applying a Known Technique to a Known Device (Method, or Product) Ready for Improvement To Yield Predictable Results

Example 1:

DANN

The mere existence of differences between the prior art and the claim does not establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 230 (1976). The issue is “whether the difference between the prior art and the subject matter in question ‘is a differen[ce] sufficient to render the claimed subject matter unobvious to one skilled in the applicable art.’” Dann, 425 U.S. at 228 (citation omitted)

E.    "Obvious To Try" - Choosing From a Finite Number of Identified, Predictable Solutions, With a Reasonable Expectation of Success

 The Federal Circuit may view an obvious-to-try rationale as a type of design-choice rationale. Uber v. X One, 957 F.3d at 1338–39. The court stated “[t]he [Supreme] Court’s discussion of design choices and predictable variations [in KSR] is instructive here.” Id. (citing KSR, Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415–417 (2007)). The court then quoted KSR’s description of “a finite number of identified, predictable solutions” as an “instance . . . [of being] obvious to try.” Uber v. X One, 957 F.3d at 1338– 39 (citing KSR, 550 U.S. at 421). 

Example 1:

A combination of references only renders a claimed invention obvious if the skilled artisan would have had a reasonable expectation that the combination would work for its intended purpose. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007);

Example 2:

 Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006)(“There is flexibility in our obviousness jurisprudence because a motivation may be found implicitly in the prior art. We do not have a rigid test that requires an actual teaching to combine...”).

 “[L]egal determinations of obviousness, as with such determinations generally, should be based on evidence rather than on mere speculation or conjecture.” Alza Corp. v. Mylan Laboratories, Inc., 464 F. 3d 1286, 1290 (Fed. Cir. 2006). 

Example 3:

KUBIN

In Kubin, the court made clear that “where a defendant merely throws metaphorical darts at a board filled with combinatorial prior art possibilities, courts should not succumb to hindsight claims of obviousness.” Kubin, 561 F.3d at 1359.

 In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record explicitly discusses the [limitation], [applicant’s] application itself instructs that [the limitation] is not an additional requirement imposed by the claims on the [claimed invention], but rather a property necessarily present in [the claimed invention]”).

We are not persuaded. Kubin stated that “[r]esponding to concerns about uncertainty in the prior art influencing the purported success of the claimed combination, this court [in O’Farrell] stated: ‘[o]bviousness does not require absolute predictability of success … all that is required is a reasonable expectation of success.”’ In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O’Farrell, 853 F.2d 894, 903-904 (Fed. Cir. 1988)).

see also In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1073 (Fed. Cir. 2012) ("[W]here the prior art, at best, '[gives] only general guidance as to the particular form of the claimed invention or how to achieve it,' relying on an 'obvious-to-try' theory to support an obviousness finding is 'impermissible."' (quoting In re Kubin, 561 F3d 1351, 1359 (Fed. Cir. 2009))

Example 8:

ROLLS ROYCE

As set forth in MPEP § 2143(I)(E), to reject a claim under the “obvious to try” rationale, the Examiner is required to make the following findings: (1) “that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem”; (2) “that there had been a finite number of identified, predictable potential solutions to the recognized need or problem”; and (3) “that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success.” In Rolls Royce, PLC v. United Tech. Corp., 603 F.3d 1325, 1339 (Fed. Cir. 2010), the court explained that under this rationale, the possible options for solving a problem must have been “known and finite.”

ABBOTT LABS4

The Federal Circuit has pointed out that in a proper obvious to try approach to obviousness, the possible options for solving a problem must have been “known and finite.” Rolls-Royce, PLC v. United Techs. Corp., 603 F.3d 1325, 1339 (Fed. Cir. 2010) (citing Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008)). In other words, the obvious to try rationale can properly be used to support a conclusion of obviousness only when the claimed solution would have been selected from a finite number of potential solutions known to persons of ordinary skill in the art. 

F.    Known Work in One Field of Endeavor May Prompt Variations of It for Use in Either the Same Field or a Different One Based on Design Incentives or Other Market Forces if the Variations Are Predictable to One of Ordinary Skill in the Art

Example 2:

LEAPFROG

Obviousness determination is not the result of a rigid formula, and we will consider the facts of a case and the common sense of those skilled in the art. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007). That is, the test for obviousness is rather what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).

G.    Some Teaching, Suggestion, or Motivation in the Prior Art That Would Have Led One of Ordinary Skill To Modify the Prior Art Reference or To Combine Prior Art Reference Teachings To Arrive at the Claimed Invention

DYSTAR

We find Appellants’ argument unpersuasive the Examiner erred reversibly because it fails to address the Examiner’s proffered combination of prior art teachings and reasoning, and it is not necessary that the motivation and reasoning be from the prior art. See, e.g., DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006) (stating motivation to modify the prior art “may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself”) (cited with approval in Alcon Research LTD. v. Apotex, Inc., 687 F.3d 1362, 1368–69 (Fed. Cir. 2012). Nor is it of import that the motivation differs from that of Appellants. DyStar, 464 F.3d at 1368 (“We have repeatedly held that the motivation to modify a prior art reference to arrive at the claimed invention need not be the same motivation that the patentee had.”) As to the argument that disclosure of a single step during which both demolding and delensing occurs leads away from the Examiner’s position, we find it without persuasive merit. See, e.g., Dystar., 464 F.3d at 1364 (“We will not read into a reference a teaching away from a process where no such language exists.”)

DYSTAR

PRINCETON

See Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1338-1339 (Fed. Cir. 2005) (affirming obviousness where motivation was found in the knowledge of those skilled in the art at the time, and where the nature of the problem also supplied a motivation). “In other words, the nature of the problem called for exactly the solutions in the prior art.” Id. at 1339. Accord, DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1366 (Fed. Cir. 2006) (“the ‘evidence’ of motive will likely consist of an explanation of the well-known principle or problem-solving strategy to be applied”).

2143.01 Suggestion or Motivation To Modify the References [R-6]

I.    *PRIOR ART **>SUGGESTION OF< THE DESIRABILITY OF THE CLAIMED INVENTION

FULTON

See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any … alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed .…”)

JONES 

cf., e.g., In re Jones, 958 F.2d 347, 349-51 (Fed. Cir. 1992) (“Conspicuously missing from this record is any evidence, other than the PTO’s speculation (if it be called evidence) that one of ordinary skill in the herbicidal art would have been motivated to make the modifications of the prior art salts necessary to arrive at the claimed . . . salt.”).

II.    WHERE THE TEACHINGS OF THE PRIOR ART CONFLICT, THE EXAMINER MUST WEIGH THE SUGGESTIVE POWER OF EACH REFERENCE

YOUNG

Where the prior art contains "apparently conflicting" teachings (i.e., where some references teach the combination and others teach away from it) each reference must be considered "for its power to suggest solutions to an artisan of ordinary skill.... consider[ing] the degree to which one reference might accurately discredit another." In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).

"The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art, and all teachings in the prior art must be considered to the extent that they are in analogous arts." see In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991)

III.    FACT THAT REFERENCES CAN BE COMBINED OR MODIFIED **>MAY NOT BE< SUFFICIENT TO ESTABLISH PRIMA FACIE OBVIOUSNESS

IV.    *>MERE STATEMENT< THAT THE CLAIMED INVENTION IS WITHIN THE CAPABILITIES OF ONE OF ORDINARY SKILL IN THE ART IS NOT SUFFICIENT BY ITSELF TO ESTABLISH PRIMA FACIE OBVIOUSNESS

KAHN

"‘rejections 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’" KSR Int’l. Co. v. Teleflex Inc. , 550 U.S. 398, 418 (2007) quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

The Federal Circuit has stated that “rejections 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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418.

KSR

"‘rejections 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’" KSR Int’l. Co. v. Teleflex Inc. , 550 U.S. 398, 418 (2007) quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

V.    THE PROPOSED MODIFICATION CANNOT RENDER THE PRIOR ART UNSATISFACTORY FOR ITS INTENDED PURPOSE

DANCE

Since “[o]bviousness can not be established by hindsight combination to produce the claimed invention,” In re Dance, 160 F.3d 1339, 1343 (Fed. Cir. 1998), we find that a prima facie case of obviousness has not been established and, accordingly, we reverse the rejection.

Evidence of obviousness must come from the prior art, not the applicant’s own disclosure. In re Dance, 160 F.3d 1339, 1343 (Fed. Cir. 1998). 

However, the "simplicity of the prior art is rarely a characteristic that weighs against obviousness of a more complicated device with added function." In re Dance, 160 F.3d 1339, 1344 (Fed. Cir. 1998).

GORDON

The mere fact that the prior art may be modified in the manner proposed by the Examiner does not make the modification obvious unless the prior art suggested the desirability of the modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).

If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).

VI.    THE PROPOSED MODIFICATION CANNOT CHANGE THE PRINCIPLE OF OPERATION OF A REFERENCE

RATTI

"If a proposed modification or combination of the prior art would change the principle of operation of the prior art device being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d 810, 813 (CCPA 1959)"

A proposed modification or combination of the prior art that would change the principle of operation of the prior art invention being modified, weighs against a conclusion of prima facie obviousness. In re Ratti, 270 F.2d 810, 813 (CCPA 1959).

Where, as here, the proposed modification to the assembly of the primary reference would require a substantial reconstruction and redesign of the elements shown in the primary reference, the modification is likely unobvious. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959).

I am persuaded by Appellant’s arguments that the Examiner’s modification of “provid[ing] the APA with a freely movable blocking member” 17 as taught by vom Hofe would render APA unfit for its intended purpose and would change the principle of operation of APA. See In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“This suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principles under which the [primary reference] construction was designed to operate.” (Emphasis added)). In Ratti, the modification suggested by the Examiner changed the basic principle of sealing from attaining sealing through a rigid, press-fit, interface between the components, to attaining sealing by providing a resilient interface between the components. Id. at 811-13. This modification fundamentally changed the technical basis of how a seal performed its sealing function and how a sealed interface was attained.

Cf. In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“Once appellant had taught how this could be done, the redesign may, by hindsight, seem to be obvious to one having ordinary skills in the [relevant] art. However, when viewed as of the time appellant’s invention was made, and without the benefit of appellant’s disclosure, we find nothing in the record which suggests appellant’s [invention].”).

For example, our reviewing Court held that an invention was not obvious where the prior taught the device required rigidity for operation whereas the claimed invention required resiliency. In re Ratti, 270 F.2d 810, 813 (CCPA 1959).

2143.02 Reasonable Expectation of Success Is Required [R-6]

I.    < OBVIOUSNESS REQUIRES ONLY A REASONABLE EXPECTATION OF SUCCESS

>II.    < AT LEAST SOME DEGREE OF PREDICTABILITY IS REQUIRED; APPLICANTS MAY PRESENT EVIDENCE SHOWING THERE WAS NO REASONABLE EXPECTATION OF SUCCESS

O'FARRELL

We are not persuaded. Kubin stated that “[r]esponding to concerns about uncertainty in the prior art influencing the purported success of the claimed combination, this court [in O’Farrell] stated: ‘[o]bviousness does not require absolute predictability of success … all that is required is a reasonable expectation of success.”’ In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O’Farrell, 853 F.2d 894, 903-904 (Fed. Cir. 1988)).

O’Farrell states that “[o]bviousness does not require absolute predictability of success.” In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988). O’Farrell identifies two kinds of error. In some cases, what would have been

“obvious to try” would have been to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful…. In others, what was “obvious to try” was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.

The admonition that "obvious to try" is not the standard under § 103 has been directed mainly at two kinds of error. In some cases, what would have been 'obvious to try' would have been to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful. In others, what was "obvious to try" was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.

In re O'Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988) (citations omitted).

RINEHART

Obviousness does not require absolute predictability; however, at least some degree of predictability is required. Evidence showing there was no reasonable expectation of success can support a conclusion of non-obviousness. In re Rinehart, 531 F.2d 1048, 1053-54 (CCPA 1976).

When prima facie obviousness is established and evidence is submitted in rebuttal, the decision-maker must start over. . . . An earlier decision should not, as it was here, be considered as set in concrete, and applicant’s rebuttal evidence then be evaluated only on its knockdown ability. . . . Facts established by rebuttal evidence must be evaluated along with the facts on which the earlier conclusion was reached, not against the conclusion itself. 

In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (quoting In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976)).

>III. < PREDICTABILITY IS DETERMINED AT THE TIME THE INVENTION WAS MADE

2143.03 All Claim Limitations Must Be **>Considered< [R-6]

FINE

In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988).

WILSON

It is elementary that to support an obviousness rejection all words in a claim must be considered in judging the patentability of that claim against the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970)

As the court in In re Wilson, 424 F.2d 1382 (CCPA 1970) stated:

[a]ll words in a claim must be considered in judging the patentability of that claim against the prior art. If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious -- the claim becomes indefinite.

>I.    < INDEFINITE LIMITATIONS MUST BE CONSIDERED

WILSON

All words in a claim must be considered in judging the obviousness of the claimed subject matter. See In re Wilson, 424 F.2d 1382, 1385.

STEELE

A rejection should not be based on "speculations and assumptions." In re Steele, 305 F.2d 859, 862 (CCPA 1962).

Having determined that claims 1–9 are indefinite, we cannot sustain the rejections of these claims under 35 U.S.C. § 103(a) because to do so would require speculative assumptions as to the meaning and scope of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a)).

>II.    < LIMITATIONS WHICH DO NOT FIND SUPPORT IN THE ORIGINAL SPECIFICATION MUST BE CONSIDERED

For obviousness, words in a claim must be considered even if they lack written description or enablement in the Specification.  See, e.g., Ex parte Grasselli, 231 USPQ 393, 394 (BPAI 1983), aff’d mem., 738 F.2d 453 (Fed. Cir 1984); MPEP § 2143.03(II).