{"id":1236,"date":"2016-09-22T19:13:02","date_gmt":"2016-09-22T23:13:02","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1236"},"modified":"2016-09-29T09:04:59","modified_gmt":"2016-09-29T13:04:59","slug":"it-was-error-not-to-consider-secondary-considerations-but-they-wouldnt-have-made-a-difference","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1236","title":{"rendered":"It was Error Not to Consider Secondary Considerations, But They Wouldn’t Have Made a Difference"},"content":{"rendered":"

In\u00a0ClassCo, Inc. v. Apple, Inc.<\/em>, [2015-1853] (September 22, 2016), the Federal Circuit affirmed a\u00a0PTAB decision affirming an Examiner’s rejection of claims to a call-screening
\nsystem that verbally announces a caller\u2019s identity before\u00a0the call is connected.as obvious under 35 USC 103.<\/p>\n

The Federal Circuit rejected the reexam applicant’s that the combination of references was inconsistent with KSR, noting:<\/p>\n

Contrary to ClassCo\u2019s argument, KSR does not require\u00a0that a combination only unite old elements without\u00a0changing their respective functions. KSR, 550 U.S. at\u00a0416. Instead, KSR teaches that \u201c[a] person of ordinary\u00a0skill is also a person of ordinary creativity, not an automaton.\u201d\u00a0Id. at 421. And it explains that the ordinary\u00a0artisan recognizes \u201cthat familiar items may have obvious\u00a0uses beyond their primary purposes, and in many cases a\u00a0person of ordinary skill will be able to fit the teachings of\u00a0multiple patents together like pieces of a puzzle.\u201d Id. at\u00a0420. The rationale of KSR does not support ClassCo\u2019s\u00a0theory that a person of ordinary skill can only perform\u00a0combinations of a puzzle element A with a perfectly\u00a0fitting puzzle element B.<\/p><\/blockquote>\n

The Federal Circuit concluded that the Board properly applied a flexible approach mandated by KSR<\/em>.<\/p>\n

The Federal Circuit did find that the Board erred in dismissing some of the objective evidence of non-obviousness, noting that it has previously explained that\u00a0\u201cwhen secondary considerations\u00a0are present, though they are not always dispositive,
\nit is error not to consider them.\u201d \u00a0The Federal Circuit said that\u00a0a\u00a0determination of whether a patent claim is invalid as\u00a0obvious under \u00a7 103 requires consideration of all four\u00a0Graham factors, and it is error to reach a conclusion of\u00a0obviousness until all those factors are considered.<\/p>\n

However, the Federal Circuit found that the Board correctly determined that much of the evidence\u00a0deserved no weight because it\u00a0did not have a nexus to the merits of the claimed invention. \u00a0However as to some of the evidence there was a nexus. \u00a0The Federal Circuit explained that nexus depends on whether\u00a0the claims are commensurate\u00a0in scope with the\u00a0secondary considerations. \u00a0The Federal Circuit noted that dependent claims contained the touted features, and that it was reasonable to assume that the underlying independent claim includes these features. \u00a0Even though the indepdent claims encompassed other embodiments as well, the Federal Circuit further noted that it has not\u00a0required a patentee to\u00a0produce objective evidence of nonobviousness for every\u00a0potential embodiment of the claim. A\u00a0patent\u00a0applicant \u2018need not sell every conceivable embodiment of\u00a0the claims in order to rely upon objective
\nindicia of nonobviousness.<\/p>\n

However, despite finding error in the Board’s according no weight to the evidence of secondary considerations, the Federal Circuit found no error in the Board’s ultimate conclusion of obviousness. \u00a0The Federal Circuit said that the value that the evidence of secondary consideratons possesses in establishing nonobviousness\u00a0is “not strong” in comparison to the findings and\u00a0evidence regarding the prior art under the first three
\nGraham factors.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In\u00a0ClassCo, Inc. v. Apple, Inc., [2015-1853] (September 22, 2016), the Federal Circuit affirmed a\u00a0PTAB decision affirming an Examiner’s rejection of claims to a call-screening system that verbally announces a caller\u2019s identity before\u00a0the call is connected.as obvious under 35 USC 103. … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[12,36],"tags":[],"class_list":["post-1236","post","type-post","status-publish","format-standard","hentry","category-obviousness","category-secondary-considerations"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1236","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1236"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1236\/revisions"}],"predecessor-version":[{"id":1238,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1236\/revisions\/1238"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1236"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1236"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1236"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}