November 6, 2020by Beau Burton1

On September 30, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Drozdenko (Appeal No. 2020-001293) reversing an Examiner’s obviousness rejection for its erroneous applications of In re Rose, 220 F.2d 459 (CCPA 1955) and “design choice.”

Claim 1 at issue in Drozdenko is representative and stated:

A blade comprising:

an airfoil … including a body formed of an aluminum containing material;

a sheath … with a sandwich … including an outer adhesive layer adjacent the sheath, an intermediate [fabric] layer and an inner adhesive layer adjacent the body;

wherein said fabric layer is a woven fabric layer; and

wherein said woven fabric layer has holes that are less than .001 inch on average.

Decision on Appeal, Appeal No. 2020-001293, at 2 (P.T.A.B. Sept. 30, 2020) (non-precedential) (emphasis added).

Although the Examiner admitted that the prior art failed to disclose a fabric layer with holes less than 0.001 inch on average, the Examiner argued that “it would have been an obvious matter of design choice … to have [the] hole size claimed … such a modification would have involved a mere change in size of a component. A change in size is generally recognized as within the level of ordinary skill in the art.” Final Rej., at 4 (citing In re Rose) (emphasis added).

The Examiner’s rejection suffered two critical deficiencies. First, a finding of obvious design choice is precluded when the claimed structure and the function it performs are different from the prior art. See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992). And in this case, the Appellant’s specification differentiated its woven fabric from the prior art scrim having larger holes.

Second, In re Rose applies to a change in the overall size of an article rather than the size of an individual component as explained by the Board below:

In Rose, the appellant argued that the claimed “lumber package” was large and required a lift truck for handling; whereas, the prior art packages (a package of relatively small pieces of lumber and a package of window screen frames) could be lifted by hand. The court held that “this limitation [(i.e., size and weight of the package)] is [not] patentably significant since it at most relates to the size of the article under consideration which is not ordinarily a matter of invention.

Here, in contrast, the Examiner does not propose a change in the overall size of the article under consideration (i.e., a blade (claim 1); an engine (claim 11)). Instead, the Examiner proposes changing the structure of Parker’s woven fabric (a scrim) to that of a tightly woven fabric having holes less than .001 inch on average, even though the Specification describes the tightly woven fabric as performing differently from a scrim.

Decision, at 3. Having failed to provide any other reason to substitute a woven fabric having holes that are less than 0.001 inch on average for the scrim described in the prior art, the Board declined to sustain the Examiner’s obviousness rejection.

Takeaways: The court in Rose did not address a modification in which the size of a particular component of an article is modified without a respective size change in the remaining components. Nevertheless, Rose is routinely misapplied to argue the obviousness of changing the size of a particular component analogous to Drozdenko. Thus, when Rose is applied in a rejection, the first step is to determine whether the resizing in question is for the entire article or only a component thereof. If it is the latter, then the Examiner’s reliance on Rose is misplaced.

Finally, to the extent that “design choice” may apply, the specification should be consulted to determine whether the change in size results in a difference in performance or function. A more detailed example of the “design choice” doctrine can be found here.

Judges: P. Kauffman, A. Reimers, T. Hutchings


October 15, 2020by Beau Burton

On September 29, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Brinhaus (Appeal No. 2019-006794) and reversed an Examiner’s obviousness rejection for failing to consider the prior art as a whole.

At issue in Ex parte Brinhaus were the requirements in independent claims 1 and 11 for “a bismuth nitrate crosslinking catalyst consisting of a water-insoluble basic bismuth nitrate” and “wherein the water-insoluble basic bismuth nitrate is the only metal nitrate.”

The prior art relied on by the Examiner mandated the presence of “at least one water-soluble metal nitrate” and differentiated prior compositions that included water-insoluble organic nitrates and/or nitrates. See U.S. Patent No. 7,211,182 (“the ‘182 patent”), col. 2, ll. 14–40. Thus, the prior art was clearly focused on the use of water-soluble nitrates and their benefits relative to water-insoluble nitrates.

Paradoxically, when describing the preferred water-soluble metal nitrates, the prior art apparently included a water-insoluble metal nitrate– Bi5O(OH)9(NO3)4:

The metal nitrates are selected from among the water-soluble nitrates of metals from the group consisting of metals of atomic numbers 20 to 83, wherein chromium, arsenic, rubidium, ruthenium, rhodium, palladium, cadmium, antimony, caesium, osmium, iridium, platinum, mercury, thallium and lead are excepted.… Preferred nitrates are those of titanium, vanadium, iron, zinc, yttrium, zirconium, tin, cerium, neodymium or bismuth, in particular of yttrium, neodymium or bismuth, especially of bismuth. Examples of bismuth nitrates are Bi(NO3)and Bi5O(OH)9(NO3)4.

The ’182 patent, col. 3, l. 55–col. 4, l. 3 (emphasis added). According to the Examiner, this was sufficient to present a case of obviousness despite the claims stating that “the water-insoluble basic bismuth nitrate is the only metal nitrate.”

On balance, the Board found the Examiner’s position untenable because the prior art “as a whole, so strongly emphasizes use of a water-soluble nitrate … that a person of ordinary skill in the art would not have understood the last sentence of this paragraph as teaching or suggesting use of water-insoluble Bi5O(OH)9(NO3)4 as a sole metal nitrate.” Consequently, the Board reversed the Examiner’s obviousness rejection.

Takeaway: It is important to confirm that the portions of the prior art cited by the Examiner are not taken out of context and are consistent with the prior art as a whole. Occasionally, an isolated passage of a prior art reference may be inconsistent with its broader teachings. This is why a basic tenet of patent law is that the prior art must be considered in its entirety, including any portions that diverge from the claimed invention. See, e.g., In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988) (“One cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention.”); In re Dow Chemical Co., 837 F.2d 469, 473 (Fed. Cir. 1988) (“The full field of the invention must be considered … including that which might lead away from the claimed invention.”); W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983) (“In its consideration of the prior art, however, the district court erred … in considering the references in less than their entireties, i.e., in disregarding disclosures in the references that diverge from and teach away from the invention at hand.”).

Judges: T. Ownes, J. Snay, B. Range


September 24, 2020by Beau Burton

The term “comprising,” when used in the preamble of a claim, permits the inclusion of other elements or materials in addition to those specified in the claim. However, “‘comprising’ is not a weasel word with which to abrogate claim limitations.” Dippin’ Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed.Cir.2007).

Ex parte Martino involved a claim that required “[a] hand held olfactory tester comprisinga single odorant chamber.” Decision on Appeal, Appeal No. 2020-001003, at 2 (P.T.A.B. Sept. 11, 2020) (non-precedential).

In rejecting the claim, the Examiner only presented prior art having a tester with a plurality of chambers. Yet, the Examiner argued that the claim was obvious because “the plurality of containers shown [in the prior art] also include a single container.” Id. at 6. According to the Examiner, the claims needed to recite that the tester consists of only a single chamber because the term “comprising” allowed for additional, unrecited elements.

The Applicant disagreed, because the claim explicitly required a single chamber. The Board sided with the Applicant.

The Board noted that “[t]he presumption raised by the term ‘comprising’ does not reach into each of the [elements] to render every word and phrase therein open-ended,” and must be read in view of the specification. Id. at 4. The Board then applied a two-step analysis. First, the Board found that the ordinary and customary meaning of the term “single” is “one and only one.” Next, the Board confirmed that the specification was consistent with this meaning. Here, the Board highlighted, among other things, that the specification differentiated prior art testers having a number of odorant chambers, described a housing  with “an odorant chamber,” and depicted a device with only one chamber. Consequently, the Board found that the term “comprising” in the preamble did not negate the meaning of “single” as understood by one in the art.

Without any prior art disclosing or otherwise suggesting a tester comprising a single chamber, the Board reversed the Examiner’s obviousness rejection.

Takeaway: The scenario in Martino is quite common because of the presumption to construe the term “comprising” to be nonexclusive and the tendency for some examiners to play wordsmith. Martino also shows that even when there is no ambiguity in the claim language, the Board may still consult the specification for consistency with the ordinary and customary meaning of a term like “single.” So, what other options are available if you want to claim a limited number (e.g., one) of an element but the specification permits a plurality? One option is to add a wherein clause that states, “wherein the [device, article, composition, etc.] comprises no more than one element.”

Judges: A. Fetting, U. Jenks, A. Shah


September 4, 2020by Beau Burton

On August 19, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Boutillier (Appeal No. 2020-000348) reversing an Examiner’s obviousness rejection for failing to establish that the prior art inherently taught a claimed property.

The independent claim in Boutillier required a composition that included an elastomeric phase formed of a block copolymer, where the block copolymer had “a water solubility of less than 0.5 g/l.”

The prior art cited by the Examiner disclosed water soluble block copolymers that could be formed from the same monomers and in the same proportions recited in the Applicant’s dependent claims (e.g., acrylic and/or methacrylic monomers). Although the prior art did not disclose the water solubility of the block copolymer, the Examiner reasoned that “[the] instantly claimed water solubility can be made from the disclosure of [the prior art]” because the copolymer of the prior art “can include the same monomers as instantly claimed, within the same weight ranges as instantly claimed.”

The Applicant disagreed with the Examiner’s reasoning because the block copolymers of the prior art were characterized as being water soluble, and thus, would not be expected to have a water solubility less than 0.5 g/l.

The Board sided with the Applicant. The Board found that even though it was undisputed that the prior art taught block copolymers that could be prepared from the same monomers claimed by the Applicant, the prior art expressly taught its block copolymers were water soluble. The mere fact that it might be possible to prepare a block copolymer with a water solubility of less than 0.5 g/l with the monomers disclosed in the prior art was insufficient to establish the inherency of this feature.

The Board emphasized that the “very essence of inherency is that one of ordinary skill in the art would recognize that a reference unavoidably teaches the property in question.” Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009). And, in this case, the water solubility of less than 0.5 g/l was not “unavoidable or the natural result following [the prior art’s] teaching.”

Takeaway: Examiners often rely on the rationale that “if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” In re Spada 911 F.2d 705 (Fed. Cir. 1990). However, this rationale breaks down in two situations. The first is where there is a broader teaching in the prior art, as in this case, that suggests the property would not necessarily be present despite similarities in the chemical structures. The second is where there is a generic disclosure in the prior art that encompasses–but does not specifically teach–the identical structure claimed. In this situation, a presumption of inherency can be rebutted by showing that one or more species falling within the generic disclosure do not exhibit the claimed property.

Judges: E. Grimes, F. Prats, L. Ren


August 31, 2020by Beau Burton

On July 31, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Marco (Appeal No. 2020-000873) reversing an Examiner’s rejection for failure to comply with the written description requirement.

The written description controversy in Marco centered on a requirement in claim 2 for a hat having an opposing pair of under-chin straps that were “at least about one inch in width.” According to the Applicant, the width of “at least about one inch” was supported by the original specification, particularly the embodiments illustrated Figures 5 and 7 (shown below):


July 24, 2020by Beau Burton

On July 1, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Allen reversing an Examiner’s obviousness rejection for failing to provide sufficient reason based on rational underpinning to combine the teachings of the prior art. See Decision on Appeal, Appeal No. 2018-008208, at 6 (P.T.A.B. Jul. 1, 2020) (non-precedential).

Allen represents a common scenario encountered during prosecution; namely, where an Examiner relies on a secondary reference to teach elements missing from the primary reference based on an illusory or non-existent problem in the primary reference.

The independent claim in Allen recited a method for introducing a cable into a conduit by attaching a pliant material to the cable with an adhesive and then introducing the cable/pliant material into the conduit, where the pliant material exhibited less friction than the cable. See id. at 2 (claim 5).

The Examiner rejected the claims over a combination that included Conti (US 5,027,864), which disclosed a method of introducing a cable into a conduit but lacked the pliant material attached to the cable with adhesive, and Holland (US 2002/0170728), which disclosed attaching a pliant material to a cable with an adhesive “to mak[e] a cable abrasion-resistant … when being moved or pulled.” Id. at 4 (emphasis added). According to the Examiner, it would have been obvious to modify Conti to include the pliant material and adhesive of Holland for the purpose of making the cable abrasion resistant.

The Appellant disagreed because Conti already recognized the friction problem when inserting the cable into the conduit and solved it by applying a lubricant to the cable. Nevertheless, the Examiner speculated that “in practice[,] lubricated systems are not always perfectly lubricated due to inhibited lubricant flow and/or improper maintenance of the fluid within the passage/channel” and, in that scenario, the skilled artisan would “look to supplemental means for protecting the cable within the tube/duct.” Id. at 6.

Rejecting the Examiner’s rationale, the Board highlighted Conti’s teaching that “[t]he presence of lubricant on the cable greatly reduces friction and thus the pulling force required to install the cable.” Id. at 4. Given Conti’s teaching to continuously feed the lubricant to reduce friction and the pulling force required to install the cable, the Board failed to see why it would have been obvious to combine Conti’s lubricated cable to include a pliant material from Holland’s unlubricated system or how such a combination would resolve the speculative problems alleged by the Examiner (i.e., to make Conti’s cables more friction resistant and/or further protect Conti’s cable within the conduit).

Takeaway: Examiners often formulate a problem in the primary reference that can be solved by a secondary reference, thereby providing the motivation for combining the references to arrive at the claimed invention. However, when the problem is already solved by the primary reference, there may be no motivation to combine the references, even when the Examiner resorts to allegations that secondary reference can “further improve” upon the primary reference (e.g., to make Conti’s cable more friction resistant). Allen provides a good illustration of this scenario and the importance of assessing problem/solution motivations to determine whether the alleged problem is illusory or non-existent.

Judges: C. Greenhut, A. Reimers, S. Mitchell


May 29, 2020by Beau Burton

On April 3, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Wallero reversing an Examiner’s obviousness rejection because the Examiner failed to provide a sufficient factual basis to establish that a claimed feature was disclosed in the examples of a Japanese reference for which there was only an English abstract of record. No. 2019-004064 (P.T.A.B. Apr. 3, 2020) (non-precedential).