2144

2144 **Supporting a Rejection Under 35 U.S.C. 103 [R-6]

>I. < RATIONALE MAY BE IN A REFERENCE, OR REASONED FROM COMMON KNOWLEDGE IN THE ART, SCIENTIFIC PRINCIPLES, ART-RECOGNIZED EQUIVALENTS, OR LEGAL PRECEDENT

Clapp

To support a conclusion that a claim is directed to obvious subject matter, prior art references must suggest expressly or impliedly the claimed invention or an Examiner must present a “convincing line of reasoning’ as to why one of ordinary skill in the art would have found the claimed invention to have been obvious. Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985). When determining whether a rejection based on design choice is appropriate, the Examiner must review the Specification and ascertain if the limitation in question is disclosed as serving any advantage or particular purpose, or whether it solves a stated problem. The Examiner also should explain the reasoning used to determine that the prior art would have performed equally as well as the claimed invention. These two steps help present the aforementioned “convincing line of reasoning.” Ex parte Clapp, 227 USPQ at 973.

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).

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.”).

“It has long been the law that the motivation to combine need not be found in prior art references, but equally can be found ‘in the knowledge generally available to one of ordinary skill in the art.’” Nat’l Steel Car, Ltd. v. Canadian Pacific Ry., Ltd., 357 F.3d 1319, 1337 (Fed. Cir. 2004) (quoting In re Jones, 958 F.2d 347, 351 (Fed. Cir. 1992)).

KOTZAB

[I]dentification in the prior art of each individual part claimed is insufficient to defeat patentability of the whole claimed invention. . . . Rather, to establish obviousness based on a combination of the elements disclosed in the prior art, there must be some motivation, suggestion or teaching of the desirability of making the specific combination that was made by the applicant.

In re Kotzab, 217 F.3d 1365, 1369-70 (Fed. Cir. 2000) (citations omitted);

NILSSEN

We are not persuaded. A reference need not provide an explicit suggestion to combine particular teachings in order to provide the requisite motivation to combine. Cf. In re Nilssen, 851 F.2d 1401, 1403 (Fed. Cir. 1988) (holding that “for the purpose of combining references, those references need not explicitly suggest combining teachings, much less specific references”).

>II. < THE EXPECTATION OF SOME ADVANTAGE IS THE STRONGEST RATIONALE FOR COMBINING REFERENCES

DyStar

“[T]he desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical.” Dystar Textilfarben Gmbh & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).

The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and whether there would have been a reasonable expectation of success." DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006).

[A]n implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the “improvement” is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal - and even common-sensical - we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references.

Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).

[E]vidence of a motivation to combine need not be found in the prior art references themselves, but rather may be found in "the knowledge of one of ordinary skill in the art or, in some cases, from the nature of the problem to be solved." ... When not from the prior art references, the "evidence" of motive will likely consist of an explanation of the well-known principle or problem-solving strategy to be applied.

Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1366 (Fed. Cir. 2006) (emphases in original, quoting In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999)).

Sernaker

When the patentability of dependent claims is not argued separately, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991 (Fed. Cir. 1983).

>III. < LEGAL PRECEDENT CAN PROVIDE THE RATIONALE SUPPORTING OBVIOUSNESS ONLY IF THE FACTS IN THE CASE ARE SUFFICIENTLY SIMILAR TO THOSE IN THE APPLICATION

>IV. < RATIONALE DIFFERENT FROM APPLICANT'S IS PERMISSIBLE

CROSS

In other words, "[o]ne of ordinary skill in the art need not see the identical problem addressed in a prior art reference" in order to apply its teachings. Cross Medical Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005).

This is because one of ordinary skill in the art need not see an applicant's identical problem addressed in a prior art reference to be motivated to apply its teachings. Cross Med. Prods., Inc., v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005).

“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.” Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) (citing In re Oetiker, 977 F.2d 1443, 1448 (Fed. Cir. 1992).

Dillon

It is well settled that the prior art need not disclose the same purpose for a claimed method in order to establish its obviousness under 35 U.S.C. § 103.In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990).

KAHN

In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections 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”).

Lintner

A prima facie case of obviousness is made by presenting evidence that the "reference teachings would appear to be sufficient for one of ordinary skill in the relevant art having the references before him to make the proposed substitution, combination or other modification." In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972).

2144.01 Implicit Disclosure

PREDA

In evaluating the prior art references for obviousness, it is proper to take into account not only the specific teachings of the references, but also any inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826, (CCPA 1968).

LAMBERTI

[A] reference disclosure is not limited only to its preferred embodiments, but is available for all that it discloses and suggests to one of ordinary skill in the art. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).

2144.02 Reliance on Scientific Theory [R-6]

2144.03 Reliance on Common Knowledge in the Art or "Well Known" Prior Art [R-6]

PROCEDURE FOR RELYING ON COMMON KNOWLEDGE OR TAKING OFFICIAL NOTICE

GARTSIDE

The presence or absence of a reason "to combine references in an obviousness determination is a pure question of fact." In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000) (citing In re Dembiczak, 175 F.3d 994, 1000 (Fed. Cir. 1999)).

A.Determine When It Is Appropriate To Take Official Notice Without Documentary Evidence To Support the Examiner’s Conclusion

AHLERT

The Examiner may take official notice of facts “beyond the record which, while not generally notorious, are capable of such instant and unquestionable demonstration as to defy dispute.” In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (citation omitted). However,

[a]ssertions of technical facts in areas of esoteric technology must always be supported by citation to some reference work recognized as standard in the pertinent art and the appellant given, in the Patent Office, the opportunity to challenge the correctness of the assertion or the notoriety or repute of the cited reference.

Id. (citation omitted).

The Examiner may take notice of facts or common knowledge in the art which are capable of such instant and unquestionable demonstration as to defy dispute. In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970).

Although it is it is permissible to rely on "official notice" in making rejections, such knowledge must be capable of instant and unquestionable demonstration as being well-known. In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970), see MPEP 2144.03. This is not the case here, in the practice field of fluid dynamics, these facts are not capable of instant and unquestionable demonstration as being well-known. See Ahlert, 424 F.2d at 1091 ("Assertions of technical facts in areas of esoteric technology must always be supported by citation to some reference work recognized as standard in the pertinent art and the appellant given, in the Patent Office, the opportunity to challenge the correctness of the assertion or the notoriety or repute of the cited reference.").

EYNDE

First, the predecessor to our reviewing court explained in In re Eynde, 480 F.2d 1364, 1370 (CCPA 1973), that facts constituting the state of the art are normally subject to the possibility of rational disagreement among reasonable people and are not amenable to the taking of official notice. Second, in In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) the court held that assertions of technical fact in areas of esoteric technology must always be supported by citation to some reference work [admitted in evidence] and recognized as standard in the pertinent art. Moreover, the court held, facts officially noticed should not constitute the principal evidence upon which a rejection is based. Thus, mere assertions of fact, unsupported by evidence of record and an explanation, are not persuasive

Materials submitted to prove enablement must be factual evidence such as patents, publications, and affidavits. In re Eynde, 480 F.2d 1364, 1370 (CCPA 1973).

See, e.g., In re Eynde, 480 F.2d 1364, 1370 (CCPA 1973) “[W]e reject the notion that judicial or administrative notice may be taken of the state of the art. The facts constituting the state of the art are normally subject to the possibility of rational disagreement among reasonable men and are not amenable to the taking of such notice.”

FOX

See In re Fox, 471 F.2d 1405, 1407 (CCPA 1973) (affirming the Board’s decision: “In this court appellant has not denied the existence of the facts on which the examiner rested his obviousness rejection nor the added facts of which the board took judicial notice.”); In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964) (“[T]he examiner appears to have considered thoroughly this assertion, and to have found otherwise. Since appellant has not shown this finding to be clearly erroneous, we accept it as fact.”).

KNAPP-MONARCH

To challenge the Examiner's notice, Appellants must present evidence to the contrary. In re Knapp-Monarch Co., 296 F.2d 230, 232 (CCPA 1961) (considering challenge to the taking of judicial notice by Trademark Trial and Appeal Board).

“Judicial notice permits proof by evidence to be dispensed with where common knowledge supports the truth of a proposition. Judicial notice also may be taken of facts though they are neither actually notorious nor bound to be judicially known, yet they would be capable of such instant and unquestionable demonstration, if desired, that no party would think of imposing a falsity on the tribunal in the face of an intelligent adversary.” In re Knapp-Monarch Company, 296 F.2d 230, 232 (CCPA 1961)

B.If Official Notice Is Taken of a Fact, Unsupported by Documentary Evidence, the Technical Line of Reasoning Underlying a Decision To Take Such Notice Must Be Clear and Unmistakable

Chevenard

Soli

See MPEP § 2144.03(B) (“[t]he examiner must provide specific factual findings predicated on sound technical and scientific reasoning to support his or her conclusion of common knowledge.”) (citing In re Soli, 317 F.2d 941, 946 (CCPA 1963) and In re Chevenard, 139 F.2d 711, 713 (CCPA 1943)).

To adequately traverse the Examiner's finding of Official Notice, Appellants' traversal must contain information or argument that is adequate to create, on its face, a reasonable doubt as to the circumstances justifying the Examiner's notice. See In re Boon, 439 F.2d 724, 728 (CCPA 1971). Appellants must specifically point out the supposed errors in the Examiner's action, which would include stating why the noticed fact is not considered to be common knowledge or well known in the art. See 37 C.F.R. § 1.111(b); see also MPEP § 2144.03.

See In re Chevenard, 139 F.2d 711, 712-13 (CCPA 1943) (declining to consider the belated challenge by an appellant to an examiner’s assertion as to “common knowledge” in the art “in the absence of any demand by appellant for the examiner to produce authority for his statement”); In re Boon, 439 F.2d 724, 728 (CCPA 1971) (requiring “a challenge to judicial notice … contain adequate information or argument so that on its face it creates a reasonable doubt regarding the circumstances justifying the judicial notice”).

C.If Applicant Challenges a Factual Assertion as Not Properly Officially Noticed or Not Properly Based Upon Common Knowledge, the Examiner Must Support the Finding With Adequate Evidence

ZURKO

The question of obviousness is "based on underlying factual determinations including . . . what th[e] prior art teaches explicitly and inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citations omitted).

Although this

Board has subject matter expertise, [] the Board cannot accept general conclusions about what is “basic knowledge” or “common sense” as a replacement for documentary evidence for core factual findings in a determination of patentability. . . . To hold otherwise would be to embark down a slippery slope which would permit the examining process to deviate from the well-established and time-honored requirement that rejections be supported by evidence. It would also ultimately “render the process of appellate review for substantial evidence on the record a meaningless exercise.”

K/S Himpp v. Hear-Wear Technologies LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014) (quoting In re Zurko, 258 F.3d 1385—86 (Fed. Cir. 2001)); see generally, Manual of Patent Examining Procedure § 2144.03(C) (“If applicant adequately traverses the examiner’s assertion of official notice, the examiner must provide documentary evidence in the next Office action if the rejection is to be maintained”).

D.Determine Whether the Next Office Action Should Be Made Final

E.Summary

2144.04 Legal Precedent as Source of Supporting Rationale [R-6]

I. AESTHETIC DESIGN CHANGES

HILTON

Compare Ex parte Hilton, 148 USPQ 356, 356-57 (Bd. App. 1965) (claims were directed to fried potato chips with a specified moisture and fat content, whereas the prior art was directed to french fries having a higher moisture content. While recognizing that in some cases the particular shape of a product is of no patentable significance, the Board held in this case the shape (chips) is important because it results in a product which is distinct from the reference product (french fries)).

SEID

see also In re Seid, 161 F.2d 229, 231 (CCPA 1947) (differences in ornamentation are entitled to little weight in determining the obviousness of a claim to a structure).

Responding to this argument, the Examiner cites In re Seid for the proposition that "the particular artwork and shape conforming to the artwork was deemed to be purely ornamental, since matters relating to ornamentation only, which have no mechanical function, cannot be relied upon to patentably distinguish the claimed invention from the prior art." Ans. 2; see

In re Seid, 161 F.2d 229, 231 (CCPA 1947).

The Examiner's citation is not on point. In Seid, the allegedly novel features where shown in the prior art. In re Seid, 161 F.2d at 231 ("[t]hat concept, however, is old in the patent to Kirchner et al., wherein the cardboard figure representing the upper half of the human body conceals the bottle neck and is supported thereon, while the body of the bottle represents the lower half of the human display figure"). Here, the Examiner provides no example of any item having "a plurality of evenly-spaced rounded bumps protruding from said one edge" as evidence that the claimed shape was known in the art. Appeal Br. 28.

The predecessor to our reviewing court has held that “an accidental disclosure, if clearly made in a drawing, is available as a reference.” In re Seid, 161 F.2d 229, 231 (CCPA 1947) (emphasis added)

II. ELIMINATION OF A STEP OR AN ELEMENT AND ITS FUNCTION

A. Omission of an Element and Its Function Is Obvious if the Function of the Element Is Not Desired

B. Omission of an Element with Retention of the Element"s Function Is an Indicia of Unobviousness

EDGE

The Examiner appears to be relying on the Manual of Patent Examining Procedure (MPEP) § 2144.04 II B, which states that “the omission of an element and retention of its function is an indicia of (un)obviousness.[sic]” See In re Edge, 359 F.2d 896 (CCPA 1966).

Therefore, the “reentry” step of Pathiyal is omitted in the claim 1 method, but the function of outputting a list is retained by claim 1. “While it may often be true that the mere omission of an element together with its function does not produce a patentable invention, it may also be unobvious to omit an element while retaining its function.” In re Edge, 359 F.2d 896, 899 (CCPA 1966). We are therefore, constrained to reverse this rejection.

To the contrary, “the omission of an element and retention of its function is an indicia of unobviousness.” Id.; see In re Edge, 359 F.2d 896 (CCPA 1966).

III. AUTOMATING A MANUAL ACTIVITY

VENNER

In In re Venner, the court held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art. In re Venner, 262 F.2d 91, 95 (CCPA 1958).

In re Venner, 262 F.2d 91, 95 (CCPA 1958) (explaining that the provision of “automat[ed] means to replace manual activity which has accomplished the same result” is well within the ambit of one of ordinary skill in the art)

In re Rundell, 18 CCPA 1290, 48 F.2d 958, 9 USPQ 220[, 221] [“Appellant argues that his rejected claims rest upon an automatic mechanism. The mere statement that a device is to be operated automatically instead of by hand, without a claim specifying any particular automatic mechanism, is not the statement of an invention. Marchand v. Emken, 132 U. S. 195; In re Gill, 17 C. C. P. A. (Patents) 700, 36 F. (2d) 128.”]” In re Venner, 120 USPQ 192, 194 (CCPA 1958).

IV. CHANGES IN SIZE, SHAPE, OR SEQUENCE OF ADDING INGREDIENTS

A. Changes in Size/Proportion

GARDNER

However, it is well settled that it is an obvious matter of design choice to change the general shape or size of a known element in the absence of a disclosed non-obvious advantage associated with the change. Gardner vs. TEC Systems Inc., 725 F.2d 1338, 1349-50 (Fed. Cir. 1984); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975); In re Dailey, 357 F.2d 669, 672 (CCPA 1966).

Further, it is also well established that where the difference between the prior art and the claims are a recitation of relative dimension of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. See, e.g., Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1346 (Fed. Cir. 1984);

ROSE

We are also not persuaded by the Examienr's design choice argument relying on In re Rose. In Rose, the invention was drawn to lumber packages formed into bundles with encircling bands, which could be lifted by hand in the prior art, but where the claimed packages required a lift truck. In re Rose, 220 F.2d 459, 463 (CCPA 1955) ("the size of the article under consideration ... is not ordinarily a matter of invention.")...

B. Changes in Shape

DAILEY

In re Dailey, 357 F.2d 669, 676 (CCPA 1966) (configuration of a claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent pervasive evidence that the particular configuration of the claimed container was significant).

C. Changes in Sequence of Adding Ingredients

BURHANS

See also In re Burhans, 154 F.2d 690, 692 (CCPA 1946) (affirming obviousness rejection “in the absence of any proof in the record that the order of performing the steps produces any new and unexpected results”).

V. MAKING PORTABLE, INTEGRAL, SEPARABLE, ADJUSTABLE, OR CONTINUOUS

A. Making Portable

LINDBERG

The record reflects that it is common sense that a surveillance audio/video system be portable. See In re Lindberg, 194 F.2d 732, 735 (CCPA 1952) (Portability of a claimed device is insufficient to patentably distinguish the device over an otherwise old (known) device unless there are new or unexpected results.).

B. Making Integral

LARSON

In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (A claim to a fluid transporting vehicle was rejected as obvious over a prior art reference which differed from the prior art in claiming a brake drum integral with a clamping means, whereas the brake disc and clamp of the prior art comprise several parts rigidly secured together as a single unit. The court affirmed the rejection holding, among other reasons, "that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.")

It is a matter of ordinary skill to remove a feature that is not being used. As stated in In re Larson, 340 F. 2d 965 (CCPA 1965) "If this additional feature is not desired, it would seem a matter of obvious choice to eliminate it and the function it serves."

We do not agree with the Examiner’s position (id.) that In re Larson, 340 F.2d 965 (CCPA 1965), supports the rejection here. In that case, in addition to aspects of the claimed invention, the prior art reference at issue taught “additional framework”—i.e., additional structure not required by the claimed invention—that provided an “additional feature.” Larson, 340 F.2d at 969. The court held that “[i]f this additional feature is not desired, it would seem a matter of obvious choice to eliminate it and the function it serves.” Id. (citation omitted). In Larson, after eliminating the additional structure, the disclosed device still provided certain benefits, just not the specific additional benefit associated with the additional structure. In contrast, here, the evidence of record shows that removal of the material at issue from the embodiment shown in Figure 9 of Andronica would actually undermine the sole stated purpose of that embodiment: “better locking securement.”

SCHENCK

'[T]he use if a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice," In re Larson, 340 F.2d 965, 968 (CCPA 1965) (citing In re Fridolph, 309 F.2d 509 (CCPA 1962)), absent evidence that the use of one piece construction shows "insight [that] was contrary to the understanding and expections of the art," (Carl Schenck, A.G. v. Nortron Corp., 713 F.2d 782, 785 (Fed. Cir. 1983) (citing United States v. Adams, 383 U.S. 39 (1966)).

C. Making Separable

DULBERG

Although the MPEP explains that separating two parts may have been obvious, the MPEP provides that there must be a desirable reason to do so. See MPEP § 2144.V.C (“The claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is ‘press fitted’ and therefore not manually removable. The court held that ‘if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.’” (quoting In re Dulberg, 289 F.2d 522, 523 (CCPA 1961)) (emphasis added)). ...

See Dulberg, 289 F.2d at 523 (holding that it would have been obvious to separate two parts “if it were considered desirable for any reason”);

The Examiner sets forth an alternative rationale: that the separation of elements is a design consideration within the skill of the art. Ans. 9 (citing In re Dulberg, 289 F.2d 522 (CCPA 1961)). However, as Appellants point out (Reply Br. 3-4), in Dulberg it was held obvious to make a press fit cap removable because there was a particular reason to make the cap removable: to gain access to the end of the tube upon which the cap was secured. See Dulberg, 289 F.2d at 523. In this case, however, the Examiner has not identified a valid reason to make the first sub-assembly separable from the second. Accordingly, the Examiner’s alternative reasoning is not based on a rational underpinning.

As Appellant argues (Appeal Br. 5), however, the Examiner’s reliance on Dulberg to establish the prima facie obviousness of such a modification is misplaced. At issue in Dulberg was whether a prior art disclosure of a cap pressfitted over the end of an assembly rendered obvious a manually removable cap in a similar assembly. In re Dulberg, 289 F.2d 522, 523 (CCPA1961). The court indicated that “[w]hether a cap is manually removable depends upon whether it is desired to gain ready access to the space covered by the cap. If it were considered desirable for any reason to obtain access to the end . . . it would be obvious to make the cap removable for that purpose.” Id. Unlike Dulberg, the Examiner’s proposed modification in the present case involves dividing Overton’s single water-swellable element/tape 14 into two distinct parts or pieces, rather than making two separate elements manually separable instead of press-fitted. Dulberg is thus factually distinct from the present case. In addition, the Examiner does not provide any reason in the Final Action for why one of ordinary skill in the art would have considered it desirable to divide Overton’s water-swellable element/tape 14 into two separate water-swellable element/tapes 14.

D. Making Adjustable

E. Making Continuous

DILNOT

The “secured together until” limitation is an attempt to import a method step into a product claim. However, the “addition of a method step in a product claim, which product is not patentably distinguishable from the prior art, cannot impart patentability to the old product.” In re Dilnot, 300 F.2d 945, 950 (CCPA 1962).

VI. REVERSAL, DUPLICATION, OR REARRANGEMENT OF PARTS

A. Reversal of Parts

GAZDA

The Examiner’s stated rationale for concluding that the subject matter of claims 10-17 would have been obvious resembles the holding of In re Gazda, 219 F.2d 449, 452 (CCPA 1955) (cited in MANUAL OF PATENT EXAMINING PROCEDURE § 2144.04(VI)(A)). Despite this resemblance, the Examiner has not made sufficient findings to show that Gazda supports the conclusion that the subject matter would have been obvious.

B. Duplication of Parts

HARZA

Cf. In re Harza, 274 F.2d 669, 774 (CCPA 1960) ("It is well settled that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced".)

C. Rearrangement of Parts

JAPIKSE

(citing In re Japikse, 181 F.2d 1019 (CCPA 1954). In Japikse, the court held that moving a starter switch to a location different from the prior art was an obvious variation because the operation of the device would not be modified. In re Japikse, 181 F.2d at 1023. [however,] See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious design choice precluded when claimed structure and the function it performs are different from the prior art).

The principle of "rearrangement of the parts" finds its roots in In re Japikse, 181 F.2d 1019, 1023 (CCPA 1950). There, claims were held unpatentable because rearranging the position of a starting switch would not have modified the operation of the device. Id. But, Japikse does not stand for a per se rule of obviousness simply through rearrangement of individual parts nor does it displace the requirement of an articulated reason to support the proposed modification. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992).

KUHLE

See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (“The manner in which electrical contact is made for Smith’s battery would be an obvious matter of design choice within the skill of the art…. As the board pointed out, use of a spring-loaded contact in the manner claimed is well known with the common flashlight.”).

Neither this disclosure nor Appellant's attorney argument supports a finding that it would not be a matter of design choice to have Funk's voice portal server 104 provide speech recognition for numbers, as well as words, to determine a destination for routing purposes. See, e.g., In re Kuhle, 526 F.2d 553 (CCPA 1975) (concluding that the use of claimed feature solves no stated problem and presents no unexpected result and "would be an obvious matter of design choice within the skill of the art") (citation omitted)

In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (“deletion of the switch member (and other elements) found in Smith and Sherrard, thereby deleting their function, was an obvious expedient”).

VII. PURIFYING AN OLD PRODUCT

COFER

In the context of preparing alternative forms of prior art compounds, however, the court in In re Cofer, 354 F.2d 664 (CCPA 1966), reversed an obviousness rejection where the Examiner had concluded that the claims were merely directed to a crystalline form of an old compound. See id. at 666.

Merely citing a legal principle, without sufficient reasoning or application of such a principle to the facts, is not enough. Cf In re Cofer, 354 F.2d 664, 667 (CCPA 1966) ("[I]t is facts appearing in the record, rather than prior decision in and of themselves, which must support the legal conclusion of obviousness.").

PURDUE PHARMA2

Discovery of a problem that was previously unrecognized can show that a solution to that problem would not have been obvious. See Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923). “In Eibel Process, the invention was a machine that could make quality paper at high speeds.” Purdue Pharma L.P. v. Epic Pharma, LLC, 811 F.3d 1345, 1352 (Fed. Cir. 2016). “Eibel discovered that the unequal speeds of paper stock and a wire in the machine produced [] wrinkled paper. Thus, he made a minor modification in the existing paper-making machines.” Id. “The Supreme Court upheld the validity of Eibel’s patent, reasoning that the discovery of the problem—unequal speeds of paper stock and the wire—was nonobvious, and thus the solution was as well.” Id.

2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions [R-07.2015]

I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS

II. ROUTINE OPTIMIZATION

A.Optimization Within Prior Art Conditions or Through Routine Experimentation

SMITH, WILLIAMS

The Examiner’s position is also not saved by the mere citation or reliance upon per se rules and generalizations without application to the specific facts at hand. See, e.g., Ans. 4 (citing Smith v. Nichols, 88 U.S. 112, 118–19 (1874) and In re Williams, 36 F.2d 436, 438 (CCPA 1929)). Mere conclusory statements that the recited ranges are “equivalents doing the same thing” do not amount to the evidence or technical reasoning necessary to support an obviousness rejection. See MPEP § 2144 (stating, in discussing Smith v. Nichols and In re Williams, “such rationales should not be treated as per se rules, but rather must be explained and shown to apply to the facts at hand. . . . Simply stating the principle (e.g., ‘art recognized equivalent,’ ‘structural similarity’) without providing an explanation of its applicability to the facts of the case at hand is generally not sufficient to establish a prima facie case of obviousness”).

B.There is a Motivation to Optimize Result-Effective Variables

Therefore, the Examiner’s inherency position based on combining bits and pieces from disparate references constitutes reversible error. PAR Pharm. Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (“[T]he concept of inherency must be limited when applied to obviousness, and is present only when the limitation at issue is the ‘natural result’ of the combination of prior art elements.”); accord In re Stepan Co., 868 F.3d 1342, 1348 (Fed. Cir. 2017).

STEPAN2. HONEYWELL2

In re Stepan Co., 868 F.3d 1342, 1348 (Fed. Cir. 2017) (“it was the PTO’s—not Stepan’s—burden to show that achieving [claim limitation] would have been obvious to a person of ordinary skill in the art”); Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A. DE C.V., 865 F.3d 1348, 1355 (Fed. Cir. 2017) (“the burden is on the Examiner to show that one of ordinary skill would have had a motivation to combine the references with a reasonable expectation of success”).

III. REBUTTAL OF PRIMA FACIE CASE OF OBVIOUSNESSA.Showing That the Range Is Critical

LILIENFELD

n re Lilienfeld, 67 F.2d 920, 924 (CCPA 1933) (“It is well established that, while a change in the proportions of a combination shown to be old, such as is here involved, may be inventive, such changes must be critical as compared with the proportions used in the prior processes, producing a difference in kind rather than degree.”)

WELLS

First, we note that prior art that must be modified to meet the disputed claim limitation does not anticipate the claim. See, e.g., In re Chudik, 851 F.3d 1365, 1374 (Fed. Cir. 2017) (“Prior art that ‘must be distorted from its obvious design’ does not anticipate a new invention.” (quoting In re Wells, 53 F.2d 537, 539 (CCPA 1931))).

B.Showing That the Prior Art Teaches Away

Aller

"[I]t is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955).

Optimization of a known result-effective variable, such as concentration here, is generally obvious. Aller, 220 F.2d at 456.

According to In re Aller, 220 F.2d 454, 456 (CCPA 1955): [W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.

ANTONIE

Optimization of a parameter not recognized as being result-effective is not prima facie obvious. Application of Antonie, 559 F.2d 618, 620 (CCPA 1977).

Cf. Application of Antonie, 559 F.2d 618, 620 (CCPA 1977) ("This case, in which the parameter optimized was not recognized to be a result-effective variable, is another exception [to the rule that the discovery of an optimum value of a variable in a known process is normally obvious.]")

Baird

“What a reference teaches is a question of fact.” In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994); In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992).

BOESCH

In re Boesch, 617 F.2d 272, 275 (CCPA 1980) (overlapping ranges establish a prima facie case of obviousness);

In this regard, while it is generally a matter of obviousness for the skilled artisan to determine the optimum value within a disclosed range,In re Boesch, 617 F.2d 272, 276 (CCPA 1980), it may not have been obvious for one of ordinary skill in the art to find an optimum value that is significantly outside the range taught by the prior art. See In re Sebek, 465 F.2d 904, 907 (CCPA 1972).Geisler

GEISLER

In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (“[A] claimed invention is rendered prima facie obvious by the teachings of a prior art reference that discloses a range that touches the range recited in the claim.”) (citing In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974))

Mere lawyer's arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re GEISLER, 116 F.3d 1465, 1470 (Fed. Cir. 1997);

see also In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997) (“When an applicant seeks to overcome a prima facie case of obviousness by showing improved performance in a range that is within or overlaps with a range disclosed in the prior art, the applicant must ‘show that the [claimed] range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.’”) (quoting In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990)).

"Only if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).

An applicant may overcome a prima facie case of obviousness by establishing "that the [ claimed] range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997).

Technical assertions unsupported by factual evidence are not persuasive. In re Geisler, 116 F. 3d 1465, 1470 (Fed. Circ. 1997).

HARRIS

Overlapping ranges establish the necessary prima facie case in the application on appeal. See In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (a prima facie case of obviousness arises when the ranges of a claimed composition overlap the ranges disclosed in the prior art);

The evidence must show that the unexpected results extend throughout the claimed subject matter but do not extend into the prior art teachings that fall outside of the claimed subject matter, i.e., that the claimed ranges are critical for obtaining the unexpected result. See, e.g., In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) ("Even assuming that the results were unexpected, Harris needed to show results covering the scope of the claimed range. Alternatively Harris needed to narrow the claims.")

Whether a reference teaches away from a claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005).

In re Harris, 409 F.3d 1339, 1343 (Fed. Cir. 2005) (use of "about" in a claim shows that the applicant does not intend to limit the claimed ranges to their exact end-points).

IRON GRIP

see also Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004) (Applicant can rebut a presumption of obviousness based on a claimed invention that falls within a prior art range by showing “(1) [t]hat the prior art taught away from the claimed invention . . . or (2) that there are new and unexpected results relative to the prior art.”)

The Patent Owner’s licensing of the claimed subject matter to its competitors is not meaningful evidence of non-obviousness. Our reviewing court instructs us that its “cases specifically require affirmative evidence of nexus where the evidence of commercial success presented is a license, because it is often ‘cheaper to take licenses than to defend infringement lawsuits.’” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004).

See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1320 (Fed. Cir. 2004) (holding that using an inventor’s disclosure to defeat the patentability of the inventor’s claims is “the essence of hindsight”)

JONES

The Federal Circuit flatly rejected such an analysis in the context of obviousness in In re Jones, 958 F.2d 347, 350 (Fed. Cir. 1992) (“We decline to extract from Merck the rule that the Solicitor appears to suggest—that regardless of how broad, a disclosure of a chemical genus renders obvious any species that happens to fall within it.”). A reference that does not adequately support obviousness will not suffice to support a demonstration of anticipation. It is not unusual for improved properties to be discovered within a previously disclosed range of a com

KULLING

Evidence must be reasonably commensurate in scope with the claimed invention. See, e.g., In re Kulling, 897 F.2d 1147, 1149 (Fed. Cir. 1990);

PETERSON

In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art).

As stated in In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003), referring to Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir.1985): We have also held that a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties.

The rationale for determining the optimal parameters for prior art result-effective variables “flows from the ‘normal desire of scientists or artisans to improve upon what is already generally known.’” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007) (quoting In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003)).

See In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (an applicant may overcome a prima facie case of obviousness by showing that the claimed range achieves unexpected results relative to the prior art range throughout the entire claimed range); In re Hill, 284 F.2d 955, 958-59 (CCPA 1960) (The showing must also present enough data points within the prior art range, but outside the claimed range, to establish that the unexpected property does not occur outside the claimed range); and In re Baxter Travenol Labs, 952 F.2d 388, 392 (Fed. Cir. 1991) (The "difference in results" must be established as being between the claimed subject matter and the closest prior art.).

“[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) Such a finding shifts the burden to the Applicant to show that the claimed invention is non-obvious in view of the cited art, for example, by showing that the claimed range is critical and achieves unexpected results relative to the prior art range. Id.

In re Peterson, 315 F.3d 1325, 1329-330 (Fed. Cir. 2003) ("In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.").

WILLIAMSON

Appellants' system claims are directed to a "converter configured to convert" (claim 7) and a "system configured to convert" (claim 14). App. Br. 13—16. In the event of further prosecution, we invite the Examiner to consider whether any of the limitations of Appellants' system claims should be interpreted as means-plus-function limitations under 35 U.S.C. SS 1 12, sixth paragraph. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, (Fed. Cir. 2015) ("The standard [for identifying means-plus-function limitations] is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.").

WOODRUFF

“It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).

We note that the Appellants do not direct us to any evidence demonstrating that the ranges recited in claims 1 and 24 are “critical.” See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (where the difference between the claimed invention and the prior art is some range within the claims, “the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range”).

2144.06 Art Recognized Equivalence for the Same Purpose [R-6]

>I. < COMBINING EQUIVALENTS KNOWN FOR THE SAME PURPOSE

Crocket

Kerkhoven

After reviewing Sako and Sinko, we conclude that the Examiner’s reliance on Kerkhoven is misplaced. In that case, claims directed to a mixture of spray-dried anionic and spray-dried nonionic surfactants were held to be prima facie obvious in view of prior art describing the each of the surfactants in a spray-dried form. Kerkhoven, 626 F.2d at 850 (“In the case at bar, [the] appealed claims . . . require no more than the mixing together of two conventional spray-dried detergents. Thus, these claims set forth prima facie obvious subject matter.”).

In this case, however, the Examiner’s rejection is not based a simple mixture of Sako’s corrosion-inhibiting surface treatment and Sinko’s corrosion-inhibiting organic-inorganic hybrid composite.

It is a matter of obviousness for one of ordinary skill in the art to combine two or more materials, such as the known antioxidants disclosed by Kosbab, when each is taught by the prior art to be useful for the same purpose. Kerkhoven, 626 F.2d at 850; In re Crocket, 279 F.2d 274, 276-77 (CCPA 1960).

“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose.” In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).

In Kerkhoven, the CCPA found: “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose.” In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). Thus, Kerkhoven requires that the prior art recognize that each of two different compositions are useful for the same purpose.

>II. < SUBSTITUTING EQUIVALENTS KNOWN FOR THE SAME PURPOSE

FOUT

"The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." [KSR] at 416. Moreover, an "[e]xpress suggestion to substitute one equivalent for another need not be present to render such substitution obvious." In re Fout, 675 F.2d 297, 301 (CCPA 1982).

Where two known alternatives are interchangeable for a desired function, an express suggestion to substitute one for the other is not needed to render a substitution obvious. In re Fout, 675 F.2d 297, 301 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568 (CCPA 1967).

RUFF

Appellants also argue that a conclusion of obviousness cannot be based on equivalence known only to an applicant (Reply Br. 3 (citing In re Ruff, 256 F.2d 590, 598 (CCPA 1958)).

An examiner’s reliance on equivalents as a rationale supporting an obviousness rejection is inappropriate without evidence that the equivalency was recognized in the prior art. See In re Ruff, 256 F.2d 590, 599 (CCPA 1958) ("The equivalence must be disclosed in the prior art").

2144.07 Art Recognized Suitability for an Intended Purpose

LESHIN

In Leshin, the container-dispenser at issue was of a type made of plastics prior to the invention. Thus, the selection of a known plastic to replace the plastic of a prior art container-dispenser was considered to be obvious since it is well within the skill of an ordinary skilled artisan to replace one plastic with another plastic depending upon the application. See id. at 199. However, the present case is distinguishable from Leshin because here the Examiner has not established that it is known to make rotors of plastics so that the Examiner would be merely replacing the plastics of a known plastic rotor with another known plastic suitable for a particular application.

Here, the Examiner has not made sufficient findings to present a prima facie case of obviousness as to claims 21—24. The facts here are distinguishable from those in In re Leshin. In that case, the court addressed dependent claims requiring that the "container-dispenser for cosmetics" recited in the parent claim be made from molded plastic materials. Leshin, 277 F.2d at 198—99. Before the court was a secondary reference (Anderson) teaching the use of molded plastic in a "similar container." Id. at 199. On those facts, the court held that "[m]ere selection of known plastics to make a container-dispenser of a type made of plastics prior to the invention, the selection of the plastics being on the basis of suitability for the intended use, would be entirely obvious." Id.

In contrast, here, the Examiner has not shown that a person of ordinary skill in the art would have known that "ceramic material(s)" could be used for the same or similar applications at issue in claims 21—24— comprising certain materials in a reciprocating machine. Even assuming that the Examiner is correct that, at the time of the invention, ceramics were "known lightweight composite materials" (Ans. 4), this does not show that ceramic material was known to be suitable for the intended uses here. See Leshin, 277 F.2d at 199.

SINCLAIR

The Examiner thus, relies upon Hydex 301® as a prior art rigid polyurethane possessing the claimed properties, and asserts that it would have been obvious to select that material for the dental appliance of Tadros “since the selection of a known material based on its suitability for its intended use support[s] a prima facie obviousness determination” (id., citing Sinclair & Carroll co. v. International Corp., 325 U.S. 327 (1945)).

Based on the cited teachings of the prior art (FF1–7), we determine that a prima facie case of obviousness has been made.

“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put into the last opening in a jig-saw puzzle. It is not invention.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 335 (1945)

2144.08 Obviousness of Species When Prior Art Teaches Genus [R-6]

I. ** EXAMINATION OF CLAIMS DIRECTED TO SPECIES OF CHEMICAL COMPOSITIONS BASED UPON A SINGLE PRIOR ART REFERENCE

II. DETERMINE WHETHER THE CLAIMED SPECIES OR SUBGENUS WOULD HAVE BEEN OBVIOUS TO ONE OF ORDINARY SKILL IN THE PERTINENT ART AT THE TIME THE INVENTION WAS MADE

BAIRD

We agree with Appellants that In re Baird, 16 F.3d 380 (Fed. Cir. 1994), is instructive here. In Baird, the claim was directed to a composition comprising a bisphenol A polyester containing an aliphatic dicarboxylic acid selected from succinic acid, glutaric acid, or adipic acid. Id. at 381. The cited reference disclosed esters of a dicarboxylic acid and any one of a genus of diphenols corresponding to a particular formula. Id.

The prior art formula encompassed bisphenol A. Id. at 382. However, "[t]he fact that a claimed compound may be encompassed by a disclosed generic formula does not by itself render that compound obvious." Id. The court concluded that, " [ w ]hile the [prior art] formula unquestionably encompasses bisphenol A when specific variables are chosen, there is nothing in the disclosure of [ the prior art] suggesting that one should select such variables." Id.

JONES

The fact that the pending claims recite compounds encompassed within the genus disclosed in the prior art is not, by itself, sufficient to establish a prima facie case of obviousness. In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994) (“The fact that a claimed compound may be encompassed by a disclosed generic formula does not by itself render that compound obvious.”); In re Jones, 958 F.2d 347, 350 (Fed. Cir. 1992) (The Federal Circuit has “decline[d] to extract from Merck [& Co. v. Biocraft Laboratories Inc., 874 F.2d 804 (Fed. Cir. 1989)] the rule that . . . regardless of how broad, a disclosure of a chemical genus renders obvious any species that happens to fall within it.”)); see also MPEP § 2144.08 II.

MERCK

See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (rejecting “obvious to try” argument where the prior art disclosed a “multitude of effective combinations” that did not “render any particular formulation less obvious” and where the claimed composition was “used for the identical purpose taught by the prior art” and affirming obviousness of composition selected from among more than 1200 possible compositions disclosed in patent). ...

SUSI

The fact that Wochner also discloses many other possible combinations of acids does not support nonobviousness. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (that reference “discloses a multitude of effective combinations does not render any particular formulation less obvious,” especially where “the claimed composition is used for the identical purpose taught by the prior art”); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was “huge, but it undeniably include[d] at least some of the compounds recited in appellant’s generic claims and [was] of a class of chemicals to be used for the same purpose as appellant’s additives”).

OCHIAI

As has often been pointed out, there are no per se rules in the law of obviousness. In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (“reliance on per se rules of obviousness is legally incorrect and must cease.”)

>A. Establishing a Prima Facie Case of Obviousness<

1. Determine the Scope and Content of the Prior Art

2. Ascertain the Differences Between the Closest Disclosed Prior Art Species or Subgenus of Record and the Claimed Species or Subgenus

3. Determine the Level of Skill in the Art

UNIROYAL

See, e.g., Uniroyal, Inc., v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052 (Fed. Cir. 1988) (Even when the applied prior art references were combined as proposed, no obviousness can be established if the claimed subject matter would not result from the proposed combination.)

4. Determine Whether One of Ordinary Skill in the Art Would Have Been Motivated To Select the Claimed Species or Subgenus

(a) Consider the Size of the Genus

(b) Consider the Express Teachings

HOCH

Furthermore, we must note where a reference is relied on to support a rejection, whether or not in a “minor capacity,” there would appear to be no excuse for not positively including the reference in the statement of the rejection. In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970).

The presumption of obviousness based on a reference disclosing structurally similar compounds may be overcome where there is evidence showing there is no reasonable expectation of similar properties in structurally similar compounds. In re May, 574 F.2d 1082, (CCPA 1978) ( appellant produced sufficient evidence to establish a substantial degree of unpredictability in the pertinent art area, and thereby rebutted the presumption that structurally similar compounds have similar properties).

(d) Consider the Teachings of Similar Properties or Uses

(e) Consider the Predictability of the Technology

(f) Consider Any Other Teaching To Support the Selection of the Species or Subgenus

5. Make Express Fact-Findings and Determine Whether They Support a Prima Facie Case of Obviousness

Beattie

“What a reference teaches is a question of fact.” In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994); In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992).

Bell

"'A prima facie case of obviousness is established when the teachings from the prior art itself would appear to have suggested the claimed subject matter to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783 (Fed. Cir. 1993)

Graham

A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning. See Graham, 383 U.S., at 36, 86 S.Ct 684 (warning against a "temptation to read into the prior art the teachings of the invention in issue" and instructing courts to " ‘guard against slipping into the use of hindsight’ " (quoting Monroe Auto Equipment Co. v. Heckethorn Mfg. & Supply Co., 332 F.2d 406, 412 (C.A.6 1964))). Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.

Jones

Lintner

Ochiai

“The test of obviousness vel non is statutory. It requires that one compare the claim’s ‘subject matter as a whole’ with the prior art ‘to which said subject matter pertains.’” In re Ochiai, 71 F.3d 1565, 1569 (Fed. Cir. 1995) (quoting 35 U.S.C. § 103). Section 103 requires “a searching comparison of the claimed invention – including all its limitations – with the teaching of the prior art.” Id. at 1572.

When determining whether a claim is obvious, an Examiner must make “a searching comparison of the claimed invention – including all its limitations – with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (emphasis added).

O'Farrell

We conclude that the improvement was not simply the result of routine experimentation. While O'Farrell states that “[o]bviousness does not require absolute predictability of success”, 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.

In re O'Farrell, 853 F.2d 894, 903 (Fed.Cir.1988). The instant situation fits O'Farrell’s first kind of error, since the prior art of Wershofen does not identify the addition of terminator as a critical parameter and provides no direction which suggests multiple additions of the same terminator.

The evidence of record is insufficient to show obviousness if it merely suggests “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).

2144.09 Close Structural Similarity Between Chemical Compounds (Homologs, Analogues, Isomers) [R-6]

I. < REJECTION BASED ON CLOSE STRUCTURAL SIMILARITY IS FOUNDED ON THE EXPECTATION THAT COMPOUNDS SIMILAR IN STRUCTURE WILL HAVE SIMILAR PROPERTIES

DILLON

Cf. In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc) (explaining that, in certain circumstances, it is not necessary that both a structural similarity between a claimed and prior art composition be shown and that there be a suggestion or expectation from the prior art that the claimed composition will have the same or a similar property as one newly discovered by the applicant).

In order to make a prima facie case of obviousness based on the structural similarity between the claimed compound and the compound disclosed by the prior art, not only must the structural similarity exist, but the prior art must also provide reason or motivation to make the claimed compound. See In re Dillon, 919 F. 2d 688, 692 (Fed. Cir. 1990) (en banc), In re Mayne, 104 F. 3d 1339, 1341 (Fed. Cir. 1997); In re Payne, 606 F.2d 303, 313 (CCPA 1979)

[I]t is not necessary in order to establish a prima facie case of obviousness that both a structural similarity between a claimed and prior art compound . . . be shown and that there be a suggestion in or expectation from the prior art that the claimed compound . . . will have the same or a similar utility as one newly discovered by applicant.

In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990). “A prima facie case has been established” where “[t]he art provide[s] the motivation to make the claimed compositions in the expectation that they would have similar properties.” Id. “[T]he burden (and opportunity) then falls on applicant to rebut that prima facie case.” Id. at 692.

Such rebuttal or argument can consist of a comparison of test data showing that the claimed compositions possess unexpectedly improved properties or properties that the prior art does not have. . . . There is no question that all evidence of the properties of the claimed composition and the prior art must be considered in determining the ultimate question of patentability, but it is also clear that the discovery that a claimed compound or composition possesses a property not disclosed for the prior art subject matter, does not by itself defeat a prima facie case.

Id. at 692-693 (internal citations omitted).

PAYNE, HOEKSEMA

The Examiner's statement that the mere contemplation of the possibility of the development of a new material at some indeterminate point in the future is sufficient to form the basis of an obviousness rejection under 35 U.S.C. 103(a) is an incorrect statement of the law. References relied upon to support a rejection under 35 USC 103 must place the claimed invention in the possession of the public. See In re Payne, 606 F.2d 303, 314 (CCPA 1979). An invention is not "possessed" absent some known or obvious way to make it. In re Hoeksema, 399 F.2d 269, 274 (CCPA 1968).

“Facts, such as test data demonstrating inoperativeness . . , or facts set forth in an affidavit (37 CFR 1.132) of an expert in the field suggesting that inoperativeness, [are] highly probative.” In re Payne, 606 F.2d 303, 315 (CCPA 1979)

MAYNE

Therefore, a person of ordinary skill in the art would reasonably expect that such structurally similar zirconia-based coatings would likewise share other similar properties, such as abradability. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997) (“Structural relationships often provide the requisite motivation to modify known compounds to obtain new compounds.”).

II. < HOMOLOGY AND ISOMERISM ARE FACTS WHICH MUST BE CONSIDERED WITH ALL OTHER RELEVANT FACTS IN DETERMINING OBVIOUSNESS

MILLS

The fact that a reference may be modified to reflect features of the claimed invention does not make the modification, and hence the claimed invention, obvious unless the prior art, knowledge of a person having ordinary skill in the art, or the nature of the problem to be solved suggested the desirability of such modification. In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990).

There is no such evidence of unexpected results, or indeed of any results, present in the instant application comparing the claimed composition with Schriewer' s disclosed compound. This analysis is consistent with Wilder, where the court found that "one who claims a compound, per se, which is structurally similar to a prior art compound must rebut the presumed expectation that the structurally similar compounds have similar properties." In re Wilder, 563 F.2d 457, 460 (CCPA 1977).

III. < PRESENCE OF A TRUE HOMOLOGOUS OR ISOMERIC RELATIONSHIP IS NOT CONTROLLING

IV. < PRESENCE OR ABSENCE OF PRIOR ART SUGGESTION OF METHOD OF MAKING A CLAIMED COMPOUND MAY BE RELEVANT IN DETERMINING PRIMA FACIE OBVIOUSNESS

V. < PRESUMPTION OF OBVIOUSNESS BASED ON STRUCTURAL SIMILARITY IS OVERCOME WHERE THERE IS NO REASONABLE EXPECTATION OF SIMILAR PROPERTIES

VI. < IF PRIOR ART COMPOUNDS HAVE NO UTILITY, OR UTILITY ONLY AS INTERMEDIATES, CLAIMED STRUCTURALLY SIMILAR COMPOUNDS MAY NOT BE PRIMA FACIE OBVIOUS OVER THE PRIOR ART

VII. < PRIMA FACIE CASE REBUTTABLE BY EVIDENCE OF SUPERIOR OR UNEXPECTED RESULTS

Dillon

Wiechert

In re Wiechert, 370 F.2d 927, 936 (CCPA 1967) ("This court has uniformly followed the sound rule that an issue raised below which is not argued in this court, even if it has been properly brought here by a reason of appeal, is regarded as abandoned and will not be considered. It is our function as a court to decide disputed issues, not to create them.")