In re Jie Xiao (Ser. No. 11/161,741)


Docket No. 2011-1195

LOURIE, BRYSON, DYK
October 12, 2011

Non-precedential

Subject matter: obviousness

Brief summary: Printed matter (here, on a device, but also separate instructions) lacking an actual functional relationship to the claimed device cannot render claimed subject matter non-obvious.

Summary: Xiao appealed BPAI decision affirming rejections of claims directed to combination locks that open using a pre-selected password as obvious, which the FC affirmed. Xiang’s lock included a “wild-card” tumbler ring that could be any letter in the alphabet to make it easier to use a variety of passwords with smaller rings (e.g., there are only ten spaces on each tumbler but 26 letters in the alphabet). The claims were rejected as obvious in view of three U.S. patents. The BPAI concluded that modifying the references to reach Xiang’s invention “would have constituted no more than the substitution of inter-changeable elements with predictable results and thus would have been obvious to one of ordinary skill in the art” (KSR). It also found that “the claimed wild-card position labels are printed matter that cannot distinguish over the cited prior art…without any alternative over how the lock functions since what symbol constitutes a ‘wild-card’ is a distinction that is discernable only to the human mind.” The FC agreed that “wild-card” feature did not distinguish the claims (In re Gulack (FC 1983) (“…patent applicants cannot rely on printed matter to distinguish a claim unless ‘there exists [a] new and unobvious, functional relationship between the printed matter and the substrate.”); In re Miller (CCPA 1969) (“what is significant here is not structural but functional relationship” between the printed matter and the substrate)). The panel also found that the BPAI “did not create a new ‘mental distinctions’ rule in denying patentable weight to the wild-card position labels” (In re Lowry, CCPA 1969). Thus, the BPAI decision was affirmed.

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