After a non-provisional patent
application is filed with the United States Patent and Trademark Office(USPTO), an examiner at the USPTO conducts a search, and in over 80% of the
filed applications, sends an office action rejecting the application.
The most typical rejection is due
to “obviousness” under 35 U.S.C. 103.
Such an office action usually requires the applicant filing a response
and amendment to overcome this type of rejection.
Under 35
U.S.C. 103(a), if a claimed invention, as a whole, would have been obvious to a
person of ordinary skill in the field of the invention, the claims are
rejected. Whether an invention would have been obvious to one of ordinary skill
in the art is a legal determination based on underlying findings of fact. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 427 (2007); In re
Gartside, 203 F.3d 1305, 1316, 319 (Fed. Cir. 2000) (citing Graham v.
John Deere Co., 383 U.S. 1, 17-18 (1966)).
The scope and content of the prior
art, as well as whether the prior art teaches away from the claimed invention,
are determinations of fact. See Para-Ordnance Mfg., Inc. v. SGS Importers
Int’l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995). Furthermore, where “a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result.” KSR, 550 U.S.
at 416.
Furthermore, a patent application
may be rejected if it would have been obvious for one of ordinary skill in the
field of the invention to take one invention and combine the elements of other
patented inventions to yield predictable results.
An inventor
can rebut an obviousness rejection by showing that the prior art “teaches away”
from the claimed invention. DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 567 F.3d 1314, 1326-27 (Fed. Cir. 2009). Based on facts, prior art
“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.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994). However, the “mere disclosure of alternative designs does not teach
away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
The Court
of Appeals for the Federal Circuit recently decided In re Mouttet, 2011-1451,
2012 WL 2384056 (Fed. Cir. June 26, 2012). The decision affirmed a rejection by
the Board of Patent and Interferences (“Board”) for all 20 claims in inventor
Mouttet’s utility patent application No. 11/395,232, “Crossbar Arithmetic
Processor.” Id. at 2. The application
“discloses a computing device for processes such as addition, subtraction,
multiplication, and division using nanoscale materials in a crossbar array.” Id. The Board upheld the original PTO
Examiner’s rejection of the application under 35 U.S.C. 103(a) as unpatentable
over five prior art patents. Basically, one patent contained all but three
components of the claims provided in Mouttet’s
application. Further combining the elements of the other prior art patents
yielded the same results as Mouttet’s claimed invention—rendering it obvious. Id. at 5-6.
The Board found that an ordinarily skilled artisan—in
this case an electrical engineer—would have easily been able to substitute in
the elements from one prior art patent with another to predict the claims
included in Mouttet’s application. Id.
at 10. “[T]he Board noted that there is no requirement that the examiner show
how to physically incorporate [such substitutions] because obviousness focuses
on what the combined teachings would have suggested. Id. at 11. Mouttet’s arguments on appeal were that (1) combing the
elements of the prior art patents would have destroyed the principal of
operation of the prior art; and (2) the prior art teaches away from the
presently claimed invention. Id. at
13.
The main prior art patent that rendered Mouttet’s claimed
invention obvious utilized optical paths rather than the electrical paths
included in Mouttet’s claims. Mouttet argued that substituting optical paths
for electrical paths would have destroyed the principal operation of the prior
art invention. Id. at 14. The Board
disagreed, finding “that the principle of operation of [the] computing device
is its high level ability to receive inputs into a programmable crossbar array
and processing the output to obtain an arithmetic result.” Id. The principal of
operation can be accomplished via optical or electrical paths, and an
ordinarily skilled electrical engineer would understand this.
As for Mouttet’s argument that the prior art “teaches
away” from the claimed invention, the board was not persuaded with this
argument. Whether prior art teaches away
from a claimed invention is a question of fact. In
re Napier, 55 F.3d 610, 613
(Fed.Cir.1995). Here, the prior art specifically
discussed the differences in optical and electrical paths, noting that an
optical path is the preferential embodiment. Discussing an inferior or
non-preferential method does not “teach away” because “the mere disclosure of
an alternative design does not teach away.” Id.
at 17. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
If an application does get rejected under 35 U.S.C. 103, the
applicant may present arguments based on facts, and references should be
included when making an argument that prior art teaches away from the claimed
invention, or that the principal element of the invention would have been
destroyed.
