Petition for Rehearing en banc filed in Plasmart v. Kappos

By Gene Quinn
July 10, 2012

I have been doing a lot of research and writing on obviousness and KSR v. Teleflex lately, but not for publication on the blog so far.  Last Friday, July 6, 2012, I filed a petition for rehearing en banc in Plasmart v. Kappos.  I represent the Appellee-Patentee.  The case arose out of what was originally an inter partes reexamination of U.S. Patent No. 6,722,674. The patent examiner found some of the claims allowable, the Board found all of the claims allowable, and then in a nonprecedential opinion the Federal Circuit overturned the Board.

This case intrigued me from the start because it seemed rather odd that there should be a nonprecedential opinion in an appeal to the Federal Circuit necessitated by a completely adjudicated inter partes reexamination at the United States Patent and Trademark Office. Moreover, the original panel concluded that the combination of known elements resulted in a predictable result.  The problem with that reasoning, however, is that not all of the elements were found within the prior art.  In fact, the Board found that there are no fewer than three (3) meaningful structural differences between the invention as claimed and the prior art.

As I dug deeper the case started to really capture me because it seems that this is is another case in the mold of Tokai Corp. v. Easton Enterprises, where Judge Linn (who was also the author of the original panel decision in Plasmart) found  a claimed invention obvious even where “some variation in the selection or arrangement of particular components” is necessary.  In that case Judge Newman, who dissented, pointed out that not all of the elements were present in the prior art, so the only way an obviousness rejection could stand would be to modify the prior art and then combine.  I just don’t see any support in KSR for that type of obviousness rejection. I have previously written about Tokai at KSR Fears Realized.

As a result of writing and filing this brief I have done quite a bit of obviousness research, so in the coming days and weeks be on the look-out for more.  But for now, let me summarize this case and my arguments.  If you didn’t pay attention to Plasmart v. Kappos because it was a nonprecedential opinion, I think you need take a look.  If this type of case becomes the trend then the law of obviousness will take a decided turn toward finding virtually any improvement patent claims to be obvious, which would be extremely unfortunate.

At the USPTO

The case arose out of an inter partes reexamination of U.S. Patent No. 6,722,674.  During reexamination the examiner rejected claim 1 as being anticipated by Figure 1 of Chinese Patent Application No. 89211060.0 to Song and obvious over Chinese Patent Publication No. CN 3114939D to Handong in view of Figure 1 of Song.  The Examiner allowed claims 20-33, which were added during reexamination.

On appeal the Board reversed the anticipation and obviousness rejections of claim 1 and affirmed the patentability of 20-33, explaining:

The Board reversed the rejection of claim 1, holding that Song did not clearly disclose the “supporting arm” of claim 1… The Board also found that Song Figure 1, read in light of the disclosure in the written description, could not anticipate alone because no portion of the tricycle body base plate is an “arm.” The Board held that the combination of Song and Handong would result in a scooter with two safety wheels, raised off the ground, and attached to the base plate, necessarily lacking the “supporting arm” limitation required for claims 1 and 20–33.

In the original appeal the issue was whether substantial evidence supported the Board’s findings of fact and determination that claims 1 and 20-33 were patentable.  More specifically, the issues were: (1) whether the Board erred in determining that claim 1 of the ‘674 patent was not anticipated under 35 U.S.C. § 102(b) by Song; and (2) whether the Board erred in determining that claims 1 and 20-33 were patentable over Handong in view of Song.

The original panel determined that claim 1 was not anticipated by Figure 1 of Song. The panel decision explains:

Song fails to teach each and every limitation. Claim 1 requires “a supporting arm frontwardly extended from said driven portion of said twister member.” As the Board noted, the arm in Figure 1 of Song is not attached to the twister member. Instead, the arm is attached to the base plate, and thus does not meet this limitation.

Subsequently, the panel noted:

Modifying the Handong scooter to prevent tipping by placing such a safety wheel in front of the twister member would thus have been obvious for one with skill in the art trying to increase stability in the direction of movement. The decision to attach the Song safety wheel directly to the twister member instead of the body would have been a common sense alternative design choice and reasonably obvious to one of ordinary skill in designing a safety feature to prevent tipping of the Handong scooter.

(emphasis added).

It is my belief that the original panel erred in its ruling for three separate reasons.

First, the obviousness rejection of claims 20-33 made by the original panel were made for the first time. The patent examiner in reexamination found claims 20-33 to be patentable, as did the Board.  Therefore, the original panel instituted a new ground of rejection, but did so without even the most basic explanation, which violates KSR.  Moreover, supplanting the factual findings of the agency should not be permitted with respect to an obviousness rejection made for the first time and where the patentee no longer has the ability to present evidence to demonstrate why the rejection is inappropriate.  This is particularly true where, as here, the USPTO has gone to the great extent of holding an inter partes reexamination proceeding and full Board adjudication.

Second, the original panel’s own findings and statements support a contrary conclusion to the one reached. Based on the findings of the Board, as well as the findings of the original panel, the Song reference lacked a critical limitation for purposes of patentability pursuant to 35 U.S.C. § 102.  Despite that, however, in its obviousness conclusion, the original panel indicates that one of skill in the art would merely “attach the Song safety wheel…” As a practical matter, it would be impossible to merely attach the Song safety wheel to Handong to achieve the claimed invention because Handong does not disclose a supporting arm.  Thus, the combination of Song and Handong, at the very least, fails to result in device with a supporting arm, which is specifically claimed.  Further, the panel themselves found that the Song safety wheel was structurally different compared to the safety wheel of the presently claimed invention.

Third, the original panel decision in Plasmart, Inc. v. Kappos et al is contrary to the United States Supreme Court ruling in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007).  More specifically, the legal rationale underpinning the original panel decision was that the presently claimed invention was merely a combination of prior art elements according to known methods to yield predictable results.  There are critical things missing.

Therefore, it would seem that the closest obviousness rationale that could support the original panel’s decision comes from this KSR quote:

When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.

KSR, at 417.

The Supreme Court indicated the above after reviewing their obviousness jurisprudence.  Reading the full paragraph makes clear that the Supreme Court was leading up to summarizing what a court “must ask,” which is whether the combination is more than a predictable use of the prior art elements according to their established functions. KSR, at 417.  This critical question cannot be left unanswered when determining whether a combination of references renders a claimed invention obvious.  In the present case, there are prior art elements missing and the resulting claimed invention will function differently.

Simply stated, there is nothing in the Supreme Court’s KSR decision that authorizes, or even suggests, that an obviousness rejection is appropriate when less than all of the elements are found in the prior art. Notwithstanding, KSR is starting to be used in ways in which it does not seem to be intended.

Stay tuned for more!

Up next is discussion of the deference and what constitutes substantial evidence.  See How Much Deference Should the CAFC give to the USPTO?

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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