Docket No. 2013-1400, -1401
PROST, LOURIE, LINN
August 29, 2014
Brief Summary: Board agreement with examiner’s final rejection affirmed because prior art disclosure would not require “substantial reengineering”, there was no teaching away, and the secondary considerations were unpersuasive because 96% of the products included “an unclaimed feature”. The decision that one claim was patentable was vacated based on an incorrect priority date.
Summary: Arlington appealed Board decision in an inter partes reexamination affirming the final rejection of claims 1, 5 and 6 of US 6,521,831 relating to duplex electrical connectors (with which two cables can be connected to a junction box via a single access hole) as obvious. Bridgeport appealed the Board decision affirming the patentability of ‘831 claims 3 and 4. The Board affirmed the examiner’s final rejection that two prior art documents disclosed the claimed connectors. Arlington argued that this was improper because the combination “would require ‘substantial reengineering’” (In re Ratti, CCPA 1959) and “that the time-span between the prior art and the filing date of the ‘831 patent application undermines any ‘obvious to try’ inference” (Leo Pharma., FC 2013). The FC concluded, however, that “the Board’s decision was not predicated on an ‘obvious to try’” rationale, the facts in Leo were different, “the art is not unpredictable” and Arlington did “not argue that the prior art taught away from the combination.” Arlington also argued that the prior art did not show the claimed “tangs” (used to guide cables in the connector) but the FC panel disagreed and noted Bridgeport had not presented that argument to the Board. Arlington’s claim 1 also requires a “tubular spring steel adaptor” which the Board concluded would have been obvious but Arlington argued the Board did not show “an ‘adaptor’ made of spring steel” and “teaches away from using spring steel.” But the FC panel agreed with the Board’s conclusion (“the references before the Board provide substantial evidence to support the substitution of spring steel”), and noted Arlington did not make that argument to the Board (finding Arlington erroneously relied on In re Baxter, FC 2012 and Wm. Wrigley Jr., FC 2012). Arlington also argued that the prior art taught away from the claimed connector because the “adapter was too weak to function with metal clad cables” but the FC panel concluded the Board did not make that conclusion and Arlington presented “no evidence that the combination would in fact be nonfunctional” (In re Gordon, FC 1984 (“If references taken in combination would produce a ‘seemingly inoperative device’…such references teach away….”)) The Board found Arlington’s secondary consideration evidence (commercial success) was not persuasive because 96% of those products included “an unclaimed feature” and other evidence was not persuasive. The FC panel also affirmed the Board’s finding that claim 4 was patentable based on its priority date (“a person of ordinary skill in the art would have understood the invention to possess” the claimed feature from the figures) but concluded claim 3 was only entitled to a later priority date (that decision was therefore vacated and remanded).