In re Mouttet

Docket No. 2011-1451

June 26, 2012

Brief Summary: Obviousness does not require “actual, physical substitution of elements” and “the mere disclosure of alternative designs does not teach away” (reference should “criticize, discredit, or otherwise discourage” claimed invention).

Summary: Inventor Mouttet appealed BPAI conclusion that the claimed computing device was obvious; the Federal Circuit panel affirmed. The Examiner rejected all twenty claims as unpatentable over a publication (“Das”) and four U.S. patents. Mouttet’s claimed invention includes wired hardware as opposed to the optical equipment used in one of the references (“Falk”). The Examiner found, and the BPAI agreed, that “an ordinarily skilled artisan, i.e., an electrical engineer with several years of related industry experience, would have recognized that substituting Das’s wired crossbar array for Falk’s optical path crossbar would have predictably yielded Mouttet’s claimed computing device” (citing KSR). The BPAI concluded that “while Falk notes certain advantages to optical devices, the reference in no way suggests that using electronic hardware instead of optical hardware would destroy Falk’s operability as a programmable arithmetic unit, nor that it teaches away from electrical circuitry.” And it “found adequate reasons to combine the references because (1) as taught in Das, electrical circuitry ‘enable[s] more complex and specialized functions to be performed,’ (2) ‘combining these references would predictably yield the claimed computing device,’ and (3) ‘the relative advantages and disadvantages in selecting electrical circuitry in lieu of optical circuitry amounts to an engineering tradeoff—a decision well within the level of ordinarily skilled artisans.’” The BPAI also “noted that there is no requirement that the examiner show how to physically incorporate Das’s features into Falk, because obviousness focuses on what the combined teachings would have suggested”, citing In re Keller (CCPA 1981)). On appeal, Mouttet argued “first, that substituting electronic hardware for optical hardware would destroy the Falk device’s principle of operation and physical structure; and second, that Falk teaches away from the claimed invention.” Regarding the first point, the panel concluded that the difference in circuitry did not destroy the principle of operation (citing In re Umbarger (CCPA 1996)). It also explained that “a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements” (In re Etter (FC 1985, en banc), In re Sneed (FC 1983), In re Keller (CCPA 1981)) and that, in this case at least, characterization of one or the other reference as “primary” or “secondary” had “no legal significance” (citing In re Bush (CCPA 1961), In re Krammes (CCPA 1963)). The panel also disagreed with the teaching away arguments, noting that “the mere disclosure of alternative designs does not teach away” (citing In re Gurley (FC 1994), In re Fulton (FC 2004) (art does not “‘criticize[s], discredit[s], or otherwise discourage[s]’ a device like Mouttet’s”), Baxter Int’l (FC 1998) (no teaching away where nothing in the prior art device suggested that the claimed invention was unlikely to work)). Accordingly, the FC affirmed the BPAI finding of obviousness.

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