Obviousness When All Elements Not Present in Prior Art?

By Gene Quinn
July 16, 2012

Last week I wrote about the petition for en banc rehearing that I recently filed in Plasmart v. Kappos.  See Petition for Rehearing en banc filed in Plasmart v. Kappos and How Much Deference Should the CAFC Give the USPTO?  The case arose from what was originally an inter partes reexamination of U.S. Patent No. 6,722,674. In the reexamination proceeding the patent examiner found claims 20-33 to be patentable.  The Board agreed that claims 20-33 were patentable as not being obvious, but also found claim 1 patentable as well.  Then the Federal Circuit, in a nonprecedential decision, determined that none of the claims were patentable.  That was when I became involved in the case.

The Board recognized multiple characteristics that differentiate the claimed invention in the “674 patent from the prior art combination of Song and Handong.  Among these, the Board specifically determined that the claimed invention possessed a “supporting arm” and that the safety wheels of a resultant combination of Song and Handong would be raised off the ground, unlike what is depicted in the ‘674 patent and recited in the claims.  Still, the panel determined that the claims were invalid.  How is it possible to find an invention obvious when not all of the elements are within the prior art?  This is unfortunately a disturbing trend that has been brought about by a misreading of KSR.

In this case the Board specifically found that the Song safety wheels are “about one centimeter higher than the ground.” The Board further found that when the tricycle moves horizontally, the safety wheels remain off the ground. Only when the scooter engages a sharp turn do the safety wheels touch the ground. As shown in Figure 5 of the ‘674 patent, the wheel is shown as always in a plane such that it will be touching the ground during both horizontal and lateral movement.

The obviousness rationale of the panel decision was that the claimed invention of the ‘674 patent was merely a combination of prior art elements according to known methods to yield predictable results. However, based on the reasonable findings of fact made by the Board there are still components missing even after the combination of Song and Handong. The original panel never articulated why or how the Board’s factual findings were unreasonable.

Given that critical things were missing in the prior art that are specifically recited in the claim, or are necessarily present given the way the invention has been disclosed in the specification the closest rationale that could support the original panel’s decision is from KSR, where the Court noted:

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 aforementioned rationale seems to have been used only twice in Federal Circuit decisions – Tokai Corp. v. Easton Enterprises, 632 F.3d 1358 (Fed. Cir. 2011) and Ritchie v. Vast Resources, Inc., 563 F.3d 1334 (Fed. Cir. 2009).

In Tokai, Judge Lourie, also the author of the instant panel decision, writing for a non-unanimous majority stated that a combination of elements is appropriate to render a claimed invention obvious even where “some variation in the selection or arrangement of particular components” is necessary.

In dissent in Tokai, Judge Newman observed that the prior art elements if collected in total could not be assembled to result in the claimed invention absent first modifying one or more of the elements, as is the case here. She explained that this weighs against obviousness. Tokai at 1377; see also Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1023 (Fed. Cir. 1983).

In Ritchie, the Court per Judge Posner (sitting by designation) specifically relied upon the aforementioned KSR quote, but did not use the entirety of the paragraph within which the quote is found, thereby taking the quote out of context. The entire paragraph in the Supreme Court decision reads:

The principles underlying these cases are instructive when the question is whether a patent claiming the combination of elements of prior art is obvious. 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. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida and Andersonís-Black Rock are illustrative – a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.

KSR at 417 (emphasis added).

After reviewing their own jurisprudence relating to obviousness the Supreme Court summarized 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. This critical question cannot be left unanswered when attempting to apply the Supreme Court rule to variations.

The critical question, according to the Supreme Court, is whether the claimed invention is a predictable arrangement of the prior art that results in the same manifest functionality. That is simply not the case here. In other words, any arrangement, predictable or not, of the cited prior art in this particular case still fails to result in the same manifest functionality. To be specific, any arrangement of the cited prior art reference yields a scooter that has safety wheels raised off the ground, lacks a supporting arm and employs two safety wheels rather than a single “universal rolling” wheel as shown in Figure 4 of the ‘674 patent. Thus, any resulting combination of Song and Handong is structurally and functionally different when compared to the presently claimed invention. Moreover, 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.

The Tokai and Ritchie rationale seems to have never been cited by any other panels of the Court. While this may be due to many reasons, the fact that this reasoning could so easily invalidate virtually any claim in any patent, combined with the fact that it has only scarcely been utilized by the Court, suggests that this is an extraordinarily important issue for the Court as a whole to consider.

As Judge Newman explained in dissent in Tokai, “incremental but unobvious improvements serve the public interest, and are included in the purpose of the patent incentive.” Tokai at 1378. If a reviewing Court or patent examiner can merely conclude that this element or that element would be obvious to modify and then obvious to combine once modified it would become virtually impossible to ever obtain patent protection on incremental improvements, which have been the lifeblood of innovation and patent practice. Cf. In re Hummer, 241 F.2d 742, 744 (C.C.P.A. 1957) (“Progress is as important, however, in crowded arts as well as in those which are in the pioneer stage”).

Expanded to its logical extent the Tokai and Ritchie rationale would turn patent law upside down, thus this issue and this case are most appropriate for en banc rehearing.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com 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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Discuss this

There are currently 3 Comments comments.

  1. step back July 16, 2012 4:01 pm


    I strongly suggest that you take a Valium (TM) -although I am not a physician and this should be construed as metaphorical rather than actual medical advice– and then you should very slowly read KSR v. Teleflex; making careful note of ALL the specific facts of that case, including the finding of fact that there were strong “market pressures” urging the switchover from a mechanical throttle control to an electronic one and the finding of fact that an expert had opined that the KSR invention was a “simple” one (albeit an elegant one).

    I suggest that the “predictable results” paragraph must be read in light of those special circumstances in the KSR case. In you kid’s scooter case, does the administrative record include “evidence” of strong market demand (and if so, for what? hint: a cheaper scooter?) and is there an expert opinion on record that disposition of the additional wheel on the steered part is “simple” and thus invariably predictable based on the market pressures of the time?

    If Valium doesn’t work, try BD’s Kool Aid potion 99. Call me in the morning. 🙂

  2. MaxDrei July 17, 2012 7:58 am

    When the UK courts look at obviousness, they check to see if the EPO “Problem and Solution Approach” would yield the same result. It always does (of course). So I thought I would run this case past the EPO-PSA test. It supports the position taken by the Board.

    The claimed subject matter is characterized over Song inter alia by mounting the safety wheel on the steering column rather than on the scooter chassis. The consequence (apart from needing only one safety wheel not two) is that the tighter the turn the greater the distance the safety wheel is from the long axis of the scooter chassis, and therefore the greater the power of the safety wheel, to prevent scooter capsize.

    Look at Song. Will you set the pair of safety wheels close together or as far apart as possible? The further apart you set them, the more they will negatively impact scooter construction costs, driving pleasure for the scooter rider, and visual pleasure for onlookers. But the closer together you set them, the less help they are, during tight scooter turns, to prevent capsize.

    The claimed slution is much more elegant, for you never even see the safety wheel until it performs its role, in a tight turn. During such a tightening turn, however, it works increasingly better than the fixed idler wheel pair of Song.

    Where in the state of the art is there any hint or suggestion to the skilled person who is bent on raising capsizing resistance to a level higher than Song achieves, to get there by switching from Song’s wheel pair to a system that uses but a single safety wheel? Is it not the esssence of brilliant design, to achieve higher performance by stripping away complexity? Ironic, that despite its full acceptance of hindsight knowledge of the invention, EPO-PSA delivers a result contrary to the one found at the CAFC, that the claimed subject matter is clearly not obvious.

  3. jon July 17, 2012 8:35 pm

    Judge Newman was right.