You Gotta 'Splain That

Submitted by patentadmin on Tue, 10/26/2010 - 12:06

Frequently, the biggest obstacle to patentability is the requirement of “nonobviousness.” All too often, a patent examiner will invoke the talismanic “KSR,” while rejecting claims as obvious in light of prior art references combined on the basis of “common sense.” Well, this abhorrent practice may be coming to an end. (In re Ravi Vaidyanathan)

Mr. Vaidyanathan filed a patent application directed to a guidance and control method for controlling munitions, such as missiles or unmanned aircraft, using “a form of neural network that is modeled on the rapid neural response that is described as characteristic of the escape actions seen in cockroaches.” (This fact has no bearing on the legal issue presented by the case and is included only for comic relief.) The patent examiner rejected the applicant’s claims as obvious in light of a combination of two prior art references, the combination being based on “common sense.”

Mr. Vaidyanathan appealed to the Patent Office Board Of Patent Appeals And Interferences (the “BOPAI” or “the Board”), which affirmed the rejection.

Bruised but unbeaten, Mr. Vaidyanathan took an appeal to the C.A.F.C., in which he argued – through his attorney – that the rejections “lacked sufficient findings by the Board … neither the examiner nor the Board made sufficient findings or adequately explained their reasoning.” He further pointed out – again, through his attorney – that “the Board viewed [one of the cited references] differently than did the examiner, and that the PTO Solicitor has attempted yet a third interpretation on this appeal.”

The C.A.F.C. was more sympathetic to Mr. Vaidyanathan than the Board had been, noting that “the [Patent Office’s] contradictory findings of technological facts based upon shifting perceptions of the prior art impeach the deference normally owed to administrative findings of fact … [and] the examiner’s statements apparently reflect personal experience in the field of the invention, but are unaccompanied by explanation or reasoning.”

The rejection was not proper. “[W]hile KSR relaxed some of the formalism of earlier decisions requiring a ‘teaching, suggestion, or motivation’ to combine prior art references, it did not remove the need to anchor the analysis in explanation of how a person of ordinary skill would select and apply the teachings of the references. KSR did not free the PTO’s examination process from explaining its reasoning. Where, as here, prior art references are cited to support an obviousness rejection, the references themselves need not in every case provide a ‘specific hint or suggestion’ of the alteration needed to arrive at the claimed invention; the examiner’s analysis may include recourse to logic, judgment and common sense available to a person or ordinary skill that do not necessarily require explanation in any reference or expert opinion. In these cases the examiner should at least explain the logic or common sense that leads the examiner to believe the claim would have been obvious. 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.”

The C.A.F.C. vacated the Board’s decision and remanded the case to the – obviously chastened – examiner for further examination of the claims.

While it is heartening that an agency of the federal government is being required to explain its actions, it is significant that this case has been designated as “nonprecedential,” meaning that future applicants may not cite it as precedent in support of their arguments as to the propriety of rejections of their claims.

THE LESSON TO BE LEARNED: KSR may not be the death-knell of patents as some people feared – at least the examiners must state some logical reason to combine references in an obviousness rejection.

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