The Software IP Report

CAFC Explains Obviousness Needs Prior Art Support

A recent Federal Circuit case explains that the Patent Office cannot simply assume, interpolate, or make up reasons why patent claims are obvious, e.g., why prior art references would have been combined.  In In re Schweickert, No. 2016-1266 (Fed. Cir. Jan 26, 2017) (opinion by Judge Chen, joined by Judges Newman and Stoll), the court reversed the Patent Trial and Appeal Board’s conclusion, in an ex parte reexamination, that all claims of U.S. Patent No. 7,574,272 were unpatentable over a combination of two prior art references. In explaining how the PTAB failed to support its findings that it would have been obvious to combine the references, the court provided ammunition for any patent practitioner who has ever been frustrated by an examiner’s cursory and/or unsupported statement of a reason to have combined references.

The court described “[t]he ’272 Patent [as] directed at a portable media player that minimizes power consumption during the transfer of data from a spinning storage medium (such as a CD-ROM) to other memory in the player.” The PTAB had affirmed the patent examiner’s finding that the ’272 patent claims were obvious over to references, Birrell and Cunniff, because the PTAB saw

no reason why Birrell would not have benefitted from the advantages of including Cunniff’s semaphore mechanism. Cunniff’s semaphore mechanism is readily applicable to Birrell because Birrell plays data stored in [the] RAM and also copies data from the disk drive to the RAM. As such, modifying Birrell to include Cunniff’s semaphore mechanism would have been a predictable use of prior art elements according to their established functions—an obvious improvement.

Further, the PTO argued that Birrell’s “lockless implementation” was not a barrier to adding locks to the proposed combination, even if locks added complexity, because “an implementation using locks is within the knowledge of a skilled artisan.”  The Federal Circuit responded to these conclusions by stating what many readers are surely thinking: “the Board never sufficiently justifies why Cunniff’s semaphore would provide an ‘obvious improvement’ to Birrell.”

Moreover, in shooting down the PTO’s arguments, the court provided ammunition to practitioners on a number of other fronts. First of all, the court demonstrated that perhaps an argument that there is an inability to combine references can have traction. One of the PTO’s arguments was “that it would have been obvious to substitute Birrell’s play control logic with Cunniff’s semaphore.” Not so fast, said the court: “the substitution is illogical as it would leave Birrell void of the mechanism it relies on to monitor when the compressed data in the RAM has fallen below a level such that additional data . . . needs to be copied over into the RAM.” The PTO’s proposed combination “defeats the purpose of Birrell’s system.”

Next, the court addressed a mode of argument that examiners often make, i.e., that references could be combined simply because they appear to be similar. Specifically, the court rejected the PTO’s argument “that Birrell’s RAM is similarly situated to Cunniff’s limited shared resource, and thus Birrell would have benefited from the addition of the access control provided by Cunniff’s semaphore.” There was no evidence for this contention. Birrell’s RAM had no “competition for access” similar to that of Cunniff. Therefore, the “record describes no problem in #one that would be resolved by the semaphore in Cunniff.”

Yet further, the court criticized the PTO for failing to point to evidence in the record as to how the references could have been combined. Again, this is useful ammunition for practitioners wanting to make the Patent Office meet its burden of stating a prima facie case of obviousness.  Under KSR  Int’l  Co.  v.  Teleflex  Inc., 550 U.S. 398, 427 (2007), the examiner must give some reason for making a rejection. Here, the best that the PTAB could do was to engage in “hindsight bias” by positing “that a skilled artisan could combine Birrell and Cunniff, notwithstanding any difficulties, and would do so because these references were within the knowledge of a skilled artisan.”

Lessons for Practice

All too often, patent applicants are afraid to appeal or push an argument against an examiner when that argument boils down to contending that references could not or would not have been combined. And sometimes this is the right decision, because despite ample case law of which this case is representative, examiners and their supervisors are often reluctant to withdraw a rejection when they think that they can find every claim element in at least one reference, even where the combination seems dubious. And yet, it is often the case that proposed combinations are dubious, and should not be sustained. The present case arose from a re-examination in which a patent owner was probably highly motivated to protect its patent. However, there are lessons here for applicants as well.