Plas-Pak Industries, Inc. v. Sulzer Mixpac AG

Docket No. 2014-1447

January 27, 2015


Brief Summary: FC affirmed Board decision that combination of references would have “render the prior art ‘inoperable for its intended purpose’” and, therefore, making it “unlikely to motivate a person of ordinary skill in the art to pursue a combination” of the same.

Summary: Plas-Pak appealed from inter-partes reexamination Board decision affirming the examiner’s decision not to reject claims 1-15 of US 7,815,384 directed to devices and methods for mixing and dispensing paint as obvious. During reexamination, the examiner issued a NFOA adopting one of Plas-Pak’s proposed rejections but later withdrew the same. Plas-Pak appealed that decision to the Board. The Board affirmed the examiner’s decision “[b]ecause the combination of Fukuta and Morris would require ‘substantial reconstruction’ and ‘affect[] the principle of operation’ disclosed in Fukuta” (“the modification suggested by [Plas-Pak]…would impact [the] functionality [of Fukuta’s pumps and valves] in a fundamental way so as to change the manner in which the apparatus of Fukuta functions”). Similarly, the Board concluded Plas-Pak’s proposed modification of another reference (Jacobsen, alleged to render the claims obvious when combined with “Hunter”) would have rendered it unsuitable for its intended purpose. The FC opinion explained that “combinations that change the ‘basic principles under which the [prior art] was designed to operate…or that render the prior art ‘inoperable for its intended purpose’…may fail to support a conclusion of obviousness” (citing In re Ratti, CCPA 1959 and In re Gordeon, FC 1984). It agreed with the Board that the modification of Fukuta’s “unique” backflow prevention system with that of Morris “which fail to achieve comparable backflow prevention” would “fundamentally alter[] Fukuta’s ‘principle of operation’”, making it “unlikely to motivate a person of ordinary skill in the art to pursue a combination” of those references. The panel also agreed with “the Board’s definition of Jacobsen’s ‘intended purpose’ are supported by substantial evidence” (“Jacobsen repeatedly recites [its] limited purpose.”) and the combination with Hunter would have rendered “Jacobsen ‘inoperable for its intended purpose”. As such, it also agreed that “a person of ordinary skill would thus not have been motivated to pursue the combination” (citing In re Gordon, FC 1984 and In re ICON Health & Fitness, FC 2007).

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