The Claims Interpreted Report

Examiner’s Redundancy Rationale was Insufficient to Support Obviousness Rejection

By Chris Francis

Categories: The Claims Interpreted Report

The ex parte Appellant successfully argued that, since the primary reference already taught fastening an element with screws, the Examiner failed to adequately show that one would have also fastened the element with a spring element because the spring element would be merely duplicative of the screws in Ex parte Pinon (Appeal 2017/005566, decided March 9, 2018).  While this is just one of the successful arguments in this Appeal, it provides some interesting discussion.

The Examiner had found that the primary reference taught all of the elements of the claim except “the clamp comprises a spring element,” as claimed in claim 1.  The primary reference, shown immediately below, discloses a battery module having a clamp 40a that is fastened to the plate 30 with screws.   

Ex parte Pinion

Since the screws of the primary reference are not a “spring element,” as claimed in the claim, the Examiner found a secondary reference disclosing a power supply unit that includes an elastic clamp, and asserted that it would have been obvious to include this elastic clamp in the primary reference in addition to the screw-fastened clamp 40a.  In the Examiner’s Answer, the Examiner noted that this redundancy is akin to wearing a belt and suspenders.

The Board agreed with the Appellant that this reasoning is insufficient.  The Board noted that the primary reference already taught that the clamp 40a is secured in place by screws, so there is no reason to add an additional clamp to the primary reference in an attempt to arrive at the claimed invention. “Obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of the prior art to arrive at the claimed invention.” See Belden v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015). 

This case is a reminder that the burden is on the Examiner to provide a rationale for obviousness. As noted by the Appellant in the Appeal Brief, the Supreme Court made this clear in KSR.