Docket No. 2015-1533
NEWMAN, DYK, WALLACH
June 15, 2016
Brief Summary: PTAB decision that the claims would have been obvious was affirmed, the FC panel finding a motivation to combine and no teaching away (only criticism regarding an “optimal design feature”).
Summary: Allied appealed PTAB decision after IPR that claims 1-21 of its US 7,121,489 directed to heavy machinery tools that can be attached to a universal body would have been obvious. The dispute related mainly to a set of jaws (“a pair of movable blased pivoted together about a main pivot pin” and a “bridge housing” that “allows for various jaw sets to be quickly and easily attached and detached” and “encases the main pin”) and whether the PTAB was correct that the claimed structure would have been obvious from the prior art. Genesis requested IPR for anticipation and obviousness and “[d]uring reexamination, Allied amended claims 1, 7 and 17-19, and added new claims 20 and 21”; “[a]…PTO…examiner allowed the amended claims, withdrew his initial rejections…and confirmed the patentability of claims 1-21”. Genesis appealed and the PTAB reversed, noting “that is decision constituted a new ground of rejections and allowed Allied to reopen prosecution or request rehearing”. Allied again amended the claims but the examiner found the claims did not overcome the PTAB decision; on appeal, the PTAB affirmed the examiner’s rejections and then denied Allied’s Request for Rehearing, resulting in this appeal. The opinion explained the PTAB’s decision is reviewed for substantial evidence (would “a reasonable mind accept the evidence to support the finding”? K/S Himpp, FC 2014). Allied argued the PTAB relied on hindsight and that its “reasoning would fundamentally redesign and reconstruct Caterpillar [one piece of prior art] to change its principle of operation and [thus] result in an inoperable device.” The FC panel found the PTAB’s reasoning to be proper, however, explaining that “it is not necessary that [the prior art] be physically combinable to render” the claims obvious (In re Snned, FC 1983; In re Etter, FC 1985 (en banc)). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference” (In re Keller, CCPA 1981) “but whether ‘a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention” (Pfizer, FC 2007). Thus, even though modifying Caterpillar’s movable blades “may impede the quick change functionality” thereof, “[a] given course of action often has simultaneous advantages and disadvantages, this does not necessarily obviate motivation to combine” (Medichem, FC 2006). The FC panel also concluded Caterpillar does not expressly teach away from the other piece of prior art (Ogawa) by criticizing it (“express[ing] doubt as to whether an optimal design feature” would result) (citing In re Gurley, FC 1994 (“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.”)) Thus, the PTAB decision was affirmed.