2145

2145 Consideration of Applicant's Rebuttal Arguments [R-6]

ASHLAND

See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) ("It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate . . . In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within that discretion"); citing Ashland Oil, Inc. v. Delta Resins & Refractories,Inc., 776 F.2d 281, 294 (Fed.Cir.1985) ("Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination."). In addition, statements do not become facts merely because they are set forth in declarations. Rather, the statements must be weighed based on their probative value and other objective evidence submitted in support thereof, if any. See Velander, 348 F.3d at 1371; Ashland Oil, 776 F.2d at 294.

BEATTIE

Simply that there are differences between references is insufficient to establish that such references teach away from any combination thereof. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992)

In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“[T]he law does not require that the references be combined for the reasons contemplated by the inventor.”).

CHU

In re Chu, at 298-99 (a finding of “design choice” is appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function or give unexpected results (citing In re Rice, 341 F.2d 309, 314 (CCPA 1965)).

See In re Chu, 66 F.3d 292, 299 (Fed. Cir. 1995) (finding of "obvious design choice" precluded where the claimed structure and function it performs are different from the prior art) (citation omitted).

CHUPP

The submission of objective evidence of patentability does not mandate a conclusion of patentability in and of itself. In re Chupp, 816 F.2d 643 (Fed. Cir. 1987).

"Evidence that a compound is unexpectedly superior in one of a spectrum of common properties ... can be enough to rebut a prima facie case of obviousness." In re Chupp, 816 F.2d 643, 646 (Fed. Cir. 1987)

CLEMENS

Although we find Appellant’s evidence of unexpected results persuasive, our analysis does not end here because “‘objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.” In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980).

DE BLAUWE

See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (Arguments and conclusions unsupported by factual evidence carry no evidentiary weight.)

GREENFIELD

“Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’” In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971))...

GPAC

"In determining whether obviousness is established by combining the teachings of the prior art, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." In re GPAC Inc. , 57 F.3d 1573, 1581 (Fed. Cir. 1995)

See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“The person of ordinary skill in the art is a hypothetical person who is presumed to know the relevant prior art.”) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986) (emphasis added)).

GRASSELLI

“It is fundamental that rejections under 35 U.S.C. § 103 must be based on evidence comprehended by the language of that section.” In re Grasselli, 713 F.2d 731, 739 (Fed. Cir. 1983).

HEDGES

In re Hedges, 783 F.2d 1038, 1039 (Fed. Cir. 1986) ("If a prima facie case is made in the first instance, and if the applicant comes forward with reasonable rebuttal, whether buttressed by experiment, prior art references, or argument, the entire merits of the matter are to be reweighed")

See In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.” (citations omitted)).

HOEKSEMA

To be sure, a reference used in a § 103 context must be enabling. In re Hoeksema, 399 F.2d 269, 274 (CCPA 1968).

HUANG

Our reviewing court has noted in the past that evidence related solely to the number of units sold provides a very weak showing of commercial success, if any. See In re Huang, 100 F.3d 135, 137 (Fed. Cir. 1996)

In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (Appellant must offer proof that the asserted commercial success occurred in the relevant market and “that the sales were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.”)

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).

LINDNER, DILL

“The evidence presented to rebut a prima facie case of obviousness must be commensurate in scope with the claims to which it pertains.” In re Dill, 604 F.2d 1356, 1361 (CCPA 1979). “It is well established that the objective evidence of nonobviousness must be commensurate in scope with the claims.” In re Lindner, 457 F.2d 506, 508 (CCPA 1972).

“Commensurate in scope” means that the evidence provides a reasonable basis for concluding that the untested embodiments encompassed by the claims would behave in the same manner as the tested

embodiment(s). See Lindner, 457 F.2d at 508 (“Here, only one mixture of ingredients was tested . . . . The claims, however, are much broader in scope, . . . and we have to agree with the Patent Office that there is no ‘adequate basis for reasonably concluding that the great number and variety of compositions included by the claims would behave in the same manner as the [single] tested composition.’” (bracketed material in original)).

In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (“[M]ere conclusory statements in the specification and affidavits are entitled to little weight when the Patent Office questions the efficacy of those statements.”).

MAYNE

See In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997) (Appellants may show that the claimed invention has an unexpected property over the prior art “with evidence that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would find surprising or unexpected.”).

“An examination for unexpected results is a factual, evidentiary inquiry . . . .” In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997).

PFIZER

"[B]y definition, any superior property must be unexpected to be considered as evidence of non-obviousness." Pfizer, Inc. v. Apotex, Inc., 480 F. 3d 1348, 1371 (Fed. Cir. 2007)

"[T]o have a reasonable expectation of success, one must be motivated to do more than merely to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result." Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1365 (Fed. Cir. 2007) (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)).

Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny superior property must be

unexpected to be considered as evidence of non-obviousness”). Under these circumstances, we view this data as merely representing the optimization of the softness described in Shigeru (optionally with Oka) which would have been within the skill of and, thus, obvious to the artisan. See id. at 1371 (“At most, then, Pfizer engaged in routine, verification testing to optimize selection of one of several known and clearly suggested pharmaceutically-acceptable salts to ease its commercial manufacturing and marketing of the tablet form of the therapeutic amlodipine.”).

PIASECKI

"Rebuttal is merely a 'showing of facts supporting the opposite conclusion,' and may relate to any of the Graham factors including so-called secondary considerations. If rebuttal evidence of adequate weight is produced, the holding of prima facie obviousness, being but a legal inference from previously uncontradicted evidence, is dissipated." In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citations omitted).

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)).

SONI

“Consistent with the rule that all evidence of nonobviousness must be considered when assessing patentability, the PTO must consider comparative data in the specification in determining whether the claimed invention provides unexpected results. In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). “[W]hen an applicant demonstrates substantially improved results … and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary.” Id. at 751.

“Mere improvement in properties does not always suffice to show unexpected results. . . . [H]owever, when an applicant demonstrates substantially improved results . . . and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary.” In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995) (emphasis in original).

I. ARGUMENT DOES NOT REPLACE EVIDENCE WHERE EVIDENCE IS NECESSARY

GEISLER

"An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). In addition, "it is well settled that unexpected results must be established by factual evidence. ‘Mere argument or conclusory statements in the specification does not suffice.’" Id. (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)).

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 De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).

Argument by counsel cannot take the place of evidence. In re Cole, 326 F.2d 769, 773 (CCPA 1964); In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997).

PEARSON

"Attorney’s argument in a brief cannot take the place of evidence." In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).

II. ARGUING ADDITIONAL ADVANTAGES OR LATENT PROPERTIES

Prima Facie Obviousness Is Not Rebutted by Merely Recognizing Additional Advantages or Latent Properties Present in the Prior Art

BAXTER TRAVENOL

"[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art." In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).

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.).

LANTECH

see also Lantech, Inc. v. Keip Machine Co., 32 F.3d 542 (Fed. Cir. 1994)(in infringement context, a single conveyor held to not meet claim element requiring at least two conveyors).

LINTNER

Claims that are so broad that they read on nonstatutory as well as statutory subject matter are unpatentable. Cf. In re Lintner, 458 F.2d 1013, 1015 (CCPA 1972) (citation omitted) (“Claims which are broad enough to read on obvious subject matter are unpatentable even though they also read on nonobvious subject matter.”).

WISEMAN

In the Wiseman case, the discovery of a new function did not render Wiseman’s disc brakes nonobvious, and the inherent difference in shape here is similarly insufficient. “[Appellants] are, in effect, arguing that a structure suggested by the prior art, and, hence, potentially in the possession of the public, is patentable to them because it also possesses an Inherent, but hitherto unknown, function which they claim to have discovered. This is not the law. A patent on such a structure would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art.” In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979).

III. ARGUING THAT PRIOR ART DEVICES ARE NOT PHYSICALLY COMBINABLE

KELLER

“[O]ne cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Id. at 425.

[T]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).

NIEVELT

“Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973).

SNEED

“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (citations omitted).

IV. ARGUING AGAINST REFERENCES INDIVIDUALLY

We are not persuaded by Appellants’ arguments because one cannot show nonobviousness by attacking references individually where the rejections are based on a combination of references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).

KELLER

As our reviewing Court states:

The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is 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) (citations omitted). This reasoning is applicable here.

V. ARGUING ABOUT THE NUMBER OF REFERENCES COMBINED

Patent specifications are written for those skilled in the art and, therefore, need not teach or point out in detail that which is wellknown in the art. In re Myers, 410 F.2d 420, 424 (CCPA 1969). In fact, the omission of that which is well-known is preferred. MPEP § 2164.08. Our inquiry under 35 U.S.C. § 103(a) takes into account the fact that that which is old, well-known, or obvious is often left unstated. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (an artisan must be presumed to know something about the art apart from what the references disclose). For these reasons, it has been held that reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991).

VI. ARGUING LIMITATIONS WHICH ARE NOT CLAIMED

VII. ARGUING ECONOMIC INFEASIBILITY

FARRENKOPF

While Springer criticizes the use of a wireless radio connection for remote monitoring as complex and costly (id.), the cost of a particular modification in and of itself is not typically presumed sufficient to discourage one of ordinary skill in the art from adopting the modification. See In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983).

However, merely because a businessman would not have made the combination for economic reasons, does not mean that a person of ordinary skill in the art would not have made the combination for another reason. In re Farrenkopf 713 F.2d 714, 718 (Fed. Cir. 1983)

Although one of ordinary skill in the art might not be deterred from making a design modification due to an increase in cost or complexity (see In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983)), the ordinary artisan certainly would weigh such drawbacks against the benefits of making the modification. We agree with Appellant that the Examiner has not explained how the proposed modification of Kuwabara’s Figure 4 embodiment provides a benefit or solution to a problem that is not addressed adequately by the Figure 4 embodiment.

See In re Farrenkopf 713 F.2d 714, 718 (Fed. Cir. 1983) (“additional expense associated with the addition of inhibitors would not discourage one of ordinary skill in the art”); Orthopedic Equipment Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983).

VIII. ARGUING ABOUT THE AGE OF REFERENCES

WRIGHT

It is well established, however, that the mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem. In re Wright, 569 F.2d 1124, 1127 (CCPA 1977).

IX. ARGUING THAT PRIOR ART IS NONANALOGOUS

X. ARGUING IMPROPER RATIONALES FOR COMBINING REFERENCES

A. Impermissible Hindsight

FINE

However, “[o]ne cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention.” In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988).

KSR

“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.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007).

McLAUGHLIN

"Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).

B. Obvious To Try Rationale

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).

[O]bviousness requires a suggestion of all the elements in a claim (CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)) and “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR Int’l Co. v. Teleflex Inc. , 550 U.S. 398, 418 (2007)

"Although predictability is a touchstone of obviousness, the ‘predictable result’ discussed in KSR refers not only to the expectation that prior art elements are capable of being physically combined, but also that the combination would have worked for its intended purpose. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739-40 (2007)." Depuy Spine, Inc v. Medtronic Sofamor Danek, Inc. (Fed. Cir. 2008-1240, -1253, -1401, Decided June 1, 2009).

O'FARRELL

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).

A finding of obviousness would not obtain where “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.” O’Farrell, 853 F.2d at 903. This expresses the same idea as the KSR requirement that the identified solutions be “predictable.” 550 U.S. at 421, 127 S. Ct. 1727; see also Procter & Gamble, 566 F.3d at 996-97; Kubin, 561 F.3d at 1359-60.

PROCTER

However, “patents are not barred just because it was obvious ‘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.’” Procter & Gamble Co. v. Teva Pharmaceuticals USA, Inc., 566 F.3d 989, 997 (Fed. Cir. 2009) (quoting In re O’Farrell, 853 F.2d, at 903).566 F.3d 989, 997 (Fed. Cir. 2009) (quoting In re O’Farrell, 853 F.2d, at 903).In re O’Farrell, 853 F.2d, at 903).

KSR

C. Lack of Suggestion To Combine References

D. References Teach Away from the Invention or Render Prior Art Unsatisfactory for Intended Purpose

1. The Nature of the Teaching Is Highly Relevant

GURLEY

“When a piece of prior art ‘suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant’ the piece of prior art is said to ‘teach away’ from the claimed invention.” Medichem, S.A. v. Rolabo, S.L.¸437 F.3d 1157, 1165 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). In Medichem, however, the Federal Circuit further explained: [O]bviousness must be determined in light of all the facts, and there is no rule that a single reference that teaches away will mandate a finding of nonobviousness.

Our reviewing court in In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) provided guidance on “teaching away” as follows:

Gurley’s position appears to be that a reference that “teaches away” can not serve to create a prima facie case of obviousness. We agree that this is a useful general rule. However, such a rule can not be adopted in the abstract, for it may not be applicable in all factual circumstances. Although a reference that teaches away is a significant factor to be considered in determining unobviousness, the nature of the teaching is highly relevant, and must be weighed in substance. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.

According to the Federal Circuit:

A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. . . . [I]n general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.

In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

2. References Cannot Be Combined Where Reference Teaches Away from Their Combination

FULTON

A statement that a particular combination is not a preferred embodiment does not teach away absent clear discouragement of that combination. In re Fulton, 391 F.3d at 1199-1200.

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 .…”)

GURLEY

"A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).

“Under the proper legal standard, a reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant's invention.” Syntex (U.S.A) v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005), citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

KAHN

3. Proceeding Contrary to Accepted Wisdom Is Evidence of Nonobviousness

XI. FORM PARAGRAPHS