PTAB: It Is Not Obvious to Modify a Reference to Perform the Same Functionality

Ten years ago, the Supreme Court decided KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). As an overseer of Examiners, the PTAB has played a pivotal role in developing the doctrine of obviousness since then. A recent case Ex parte Böger, Appeal No. 2017-001586 (PTAB August 29, 2017) highlights a common way and a less common way that obviousness rejections can be overturned. Both ways involve attacking the articulated reason for obviousness.

An obviousness rejection must include an articulated reason for why the claimed invention would have been obvious. KSR made clear that the reason cannot be conclusory and instead must be articulated with a rational underpinning.

Often times, a successful rebuttal is made by attacking the articulated reason as inadequate. The savvy patent practitioner knows established ways to pick apart an Examiner’s rejection. The MPEP and case law includes these “rebuttal arguments.” See MPEP 2143 and 2145. The decision Boger illustrates two of these rebuttals.

In Boger, the Examiner found that the primary reference does not disclose “heating the complete or entire material of the core layer in a region of the beading fold”. The Examiner asserted that a secondary reference makes up for this by disclosing a complete core-melting technique. The Examiner reasoned that it would have been obvious to modify the heating boundary layers of the primary reference with the heating of the entire thermoplastic core of the secondary reference to “minimize spring-back of the laminate from the tool.” Except that it would not have been, according to the Board.

The Board had two reasons for why this rationale was bad. For one, the Board explained that the primary reference repeatedly states that an inner core should remain unsoftened. So applying the secondary reference’s core-melting technique to the primary reference “would destroy” the primary reference’ objective, “thereby changing its principle of operation.” Here the Board is using the classic one-two punch rebuttal argument from MPEP 2143.01(V) and (VI). These gems make clear that a proposed modification cannot render the prior art unsatisfactory for its intended purposes and cannot change the principle of operation of a reference, respectively. Standard argumentation so far.

The second reason related to the pre-existing functionality of the reference. The articulated reason for modifying, as presented by the Examiner (“to minimize spring-back of the laminate from the tool”), was already achieved by the primary reference, according to the Board. So one having skill in the art would not have sought to modify something so that the something could perform the same functionality.

Thus, if a reference is already performing a function, a proper obviousness reason cannot include modifying the reference to perform that same function. In light of KSR, that point makes common sense.

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