K/S HIMPP v. Hear-Wear Technologies, LLC


Docket No. 2013-1549

LOURIE, DYK, WALLACH
May 27, 2014

Brief Summary: Board decision of non-obviousness affirmed because evidence of claimed element not in the record. Judge Dyk’s dissent argued this decision “will have substantial adverse effects on the examination process” because it will “preclude[e] examiners from using their knowledge and common sense”.

Summary: HIMPP appealed USPTO Board decision affirming the reexamination Examiner’s decision that claims 3 and 9 of its US 7,016,512 relating to hearing aids would not have been obvious. During prosecution, claims 3 and 9 were initially rejected because “providing a plurality of prongs for the electrical connections or for the plugs is known in the art” but Hear-Wear overcame those rejections (without challenging the “known in the art” argument; all other claims rejected as obvious). The PTO granted HIMPP’s request for an inter partes reexamination during which the examiner refused to adopt the “proposed rejection because HIMPP failed to provide evidence” that the claims represented “no more than the predictable use of prior art elements according to their established functions.” This decision was affirmed by the Board and appealed to the FC. In the appeal, Hear-Wear argued “that HIMPP’s assertions of ‘known in the art’ cannot substitute for the factual evidence required to concluded that a structural element is a known prior art element.” The FC panel agreed with Hear-Wear, finding the “plurality of prongs” to “present[] more than a peripheral issue” and requiring “a core factual finding” (citing In re Zurko, FC 2001, “[Board] expertise may provide sufficient support for conclusions as to peripheral issues.” Note: the dissent argues this is contrary to the 2007 KSR decision, see also Perfect Web, FC 2009.) The opinion explained that this is “not inconsistent with KSR’s caution against the ‘overemphasis on the importance of published articles and the explicit content of issued patents’” because this case “is about whether the Board declined to accept a conclusory assertion from a third party about the general knowledge in the art without evidence on the record, particularly where it is an important structural limitation that is not evidently and indisputably within the common knowledge of those skilled in the art” (unlike KSR, “this case involves the lack of evidence of a specific claim limitation”). It also explained this is consistent with the “PTO examination procedure” in which “a patent examiner may rely on common knowledge to support a rejection” only “in narrow circumstances” (citing MPEP § 2144.03, “It would not be appropriate for the examiner to take official notice of facts without citing a prior art reference where the facts asserted to be well known are not capable of instant and unquestionable demonstration as being well-known.”) Judge Dyk’s dissent argued that this decision “will have substantial adverse effects on the examination process” because it will “preclud[e] examiners from using their knowledge and common sense”. It also explained that the “plurality of prongs” limitation “was well known as of the patent’s 2001 priority date” and the examiner and/or the Board should have been “obligated to utilize its expert knowledge to determine” whether this was so (citing In re Ahlert, CCPA 1970, Board “may take notice of facts beyond the record which…are capable of [] instant and unquestionable demonstration as to defy dispute.”)

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