Ex Parte Ramberg et al

Board of Patent Appeals and Interferences

Apr 7, 2010

10131881 (B.P.A.I. Apr. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RANDY J. RAMBERG and THEODORE BROBERG
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Appeal 2009-001121
Application 10/131,881
Technology Center 2800
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Decided: April 07, 2010
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Before JAMES T. MOORE and ALLEN R. MACDONALD, Vice Chief
Administrative Patent Judges, CATHERINE Q. TIMM, LINDA M.
GAUDETTE, and JEFFREY B. ROBERTSON, Administrative Patent
Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
The Examiner requests reconsideration of the Decision mailed June
25, 2009 (“Decision”), wherein a panel of the Board reversed the
Examiner’s decision rejecting appealed claims 1-5 and 9 under 35 U.S.C. §
103 as unpatentable over US 5,457,570, issued Oct. 10, 1995 (“Lu”).
Appeal 2009-001121
Application 10/131,881

(Request for Rehearing by Examiner Pursuant to MPEP § 1214.04
(“Request” or “Req.”), mailed Sep. 1, 2009, 1.) Appellants have submitted
arguments in response. (Reply to Request for Rehearing by the Examiner
(“Reply”), filed Nov. 2, 2009.) An expanded panel has reviewed the
Decision in light of the arguments presented by the Examiner and the
Appellants. However, we are not persuaded that the Decision should be
modified.
The Examiner contends that the Board erred in (1) “applying the
teaching-suggestion-motivation (TSM) test in an overly rigid and formalistic
way . . . inconsistent with the Supreme Court’s admonition in KSR [Int’l]
Co. v. Teleflex Inc., 550 U.S. 398 . . . (2007)” and (2) “misapprehending two
material facts.” (Req. 1-2.) The Examiner advances three separate
arguments which are said to be based on KSR, a case decided after
forwarding of the present application to the Board for decision. (See Req. 2,
n. 1 (citing Manual of Patent Examining Procedure (“MPEP”) § 1214.04 (p.
1200-58) (“[T]he examiner may present a new argument based upon a recent
relevant decision of either the Board or a Federal Court.”).) Prior to
addressing the merits of the Request, we provide a brief review of the TSM
test and its application by the Federal Circuit both pre- and post-KSR.
According to the Graham analysis set forth by the Supreme Court:
Whether an invention would have been obvious is a legal
question based on underlying findings of fact, including (1) the
scope and content of the prior art; (2) the level of ordinary skill
in the prior art; (3) the differences between the claimed
invention and the prior art; and (4) objective evidence of
nonobviousness.

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Application 10/131,881

In re Chapman, 2010 WL 638277, at *5 (Fed. Cir. 2010) (citing In re
Gartside, 203 F.3d 1305, 1319 (Fed. Cir. 2000) (citing, ultimately, Graham
v. John Deere Co., 383 U.S. 1, 17-18 (1966))).
Seeking to resolve the obviousness question with more
uniformity and consistency, the Court of Appeals for the
Federal Circuit has employed an approach referred to by the
parties as the ‘teaching, suggestion, or motivation’ (TSM) test,
under which a patent claim is only proved obvious if ‘some
motivation or suggestion to combine the prior art teachings’ can
be found in the prior art, the nature of the problem, or the
knowledge of a person having ordinary skill in the art.

KSR, 550 U.S. at 407. In KSR, the Court indicated that there is “no
necessary inconsistency between the idea underlying the TSM test and the
Graham analysis” provided that the test is not applied as a “rigid and
mandatory” formula. Id. at 419. The TSM test is applied in an overly rigid
and formalistic manner when the “obviousness analysis” is confined “by a
formalistic conception of the words teaching, suggestion, and motivation, or
by overemphasis on the importance of published articles and the explicit
content of issued patents.” Id.
“Common sense has long been recognized to inform the analysis of
obviousness if explained with sufficient reasoning and where there is a
factual foundation from which the analysis flows.” Perfect Web
Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328 (Fed. Cir. 2009).
In KSR, the Court reconfirmed this long-standing principle, further clarifying
that a properly flexible obviousness inquiry may take into account
market forces; design incentives; the “interrelated teachings of
multiple patents”; “any need or problem known in the field of
endeavor at the time of invention and addressed by the patent”;
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and the background knowledge, creativity, and common sense
of the person of ordinary skill.

Id. at 1329 (quoting KSR, 550 U.S. at 418-21). The Federal Circuit has
observed that KSR’s “admonition against a formalistic approach to
obviousness . . . actually resurrects [its] own wisdom in In re O'Farrell,”
wherein the court “cautioned that ‘obvious to try’ is an incantation whose
meaning is often misunderstood.” In re Kubin 561 F.3d at 1359 (quoting In
re O'Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988)). “Any invention that
would in fact have been obvious under § 103 would also have been, in a
sense, obvious to try. The question is: when is an invention that was
obvious to try nevertheless nonobvious?” Id.
Turning now to the merits of the Request, the Examiner’s position, as
we understand it, is that the Board would have affirmed the Examiner’s
decision to reject Appellants’ claims but for its failure to properly take into
account the background knowledge, creativity and common sense of a
person of ordinary skill in the art as required by KSR. Stated somewhat
differently, the Examiner contends that if the Board had considered not only
the express teachings of Lu relating to the inventive coating, but also prior
art evidence of the background knowledge, creativity and common sense of
the ordinary artisan, we would have recognized that the claimed invention
was obvious-to-try and, therefore, affirmed the Examiner’s decision
consistent with the Supreme Court’s decision in KSR and the Federal
Circuit’s decision in Kubin (see Ans. 3, note 2).
The Examiner first argues that “the Board did not fully appreciate” the
following three facts (hereinafter “identified facts”):
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Application 10/131,881

(1) a layer of ZrO2 was often typically used as the top
layer of an antireflective coating (the specification of the above-
identified application, page 1, lines 19-24);
(2) an antireflective coating consisting of one layer may
be used (Lu column 3, lines 62-65); and
(3) each layer of an antireflective coating protects the
underlying components and any lower layers.

(Req. 7.)
Contrary to the Examiner’s contention, the panel expressly considered
the portion of the Specification cited as supporting the Examiner’s first
identified fact. (See Decision 3, Finding of Fact 1 (citing Spec. 1:19-24).)1
The panel also considered the effects of the coating layers identified in the
Examiner’s third identified fact. (See Decision 2-3, Finding of Fact 1
(description of the prior art approaches to reducing degradation in the layers
of an optical device) and discussion of Lu, col. 3, infra note 3.)
With respect to the second identified fact, the Examiner did not
previously made a finding relating to this portion of Lu. (See generally,
Final Rejection (“Final”), mailed Oct. 11, 2005; Ans.) Merely asserting that
the Answer was mailed prior to the KSR and Kubin decisions does not meet
the required showing of good cause necessary for us to now consider this
new finding.2 However, the panel did previously consider column 3, lines

1 This is one of the facts (the other being the second identified fact,
discussed infra) which the Examiner contends the Board “misapprehended.”
(Req. 2.) However, for the reasons explained by Appellants, this panel
disagrees. (See Reply 4, 3rd full para.)
2 See Ex parte Nancy C. Frye, 2010 WL 889747, at *6 (BPAI 2010) (“[T]he
Board’s primary role is to review adverse decisions of examiners including
the findings and conclusions made by the examiner.” “Our decision is
limited to the finding[s] before us for review.”); MPEP 1214.04
(“Arguments not raised in the answers before the Board and evidence not
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62-65 of Lu, i.e., the citation relied upon by the Examiner to support the
second identified fact. (See Decision 3, Finding of Fact 2 (citing Lu, col. 3,
l. 48 and l. 67-col. 4, l. 6, which appear above and directly below the
disclosure now expressly relied-upon for the first time by the Examiner).)
Moreover, even upon review pursuant to this Request, the Decision would
remain unchanged, since Appellants do not dispute that “an antireflective
coating may be formed by one layer on a substrate.” (Reply 5.)
The cited disclosure in Lu appears in the “DESCRIPTION OF THE
PREFERRED EMBODIMENT” section and was equally relevant to the
obviousness inquiry under both pre- and post-KSR standards. See Perfect
Web, 587 F.3d at 1329 (explaining that the pre-KSR TSM test took into
account the prior art references themselves and knowledge of those of
ordinary skill in the art that disclosures in those references are of special
interest or importance in the field); compare Para Ordinance Mfg., Inc. v.
SGS Importers Int’l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995) (“What the
prior art teaches . . . is a determination of fact.” (citing In re Bell, 991 F.2d
781, 784 (Fed. Cir. 1993)) with In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir.
2009) (“The teachings of a prior art reference are underlying factual
questions in the obviousness inquiry”).3
According to the Examiner, had the panel properly considered
the identified facts,
previously relied upon in the answers are not permitted in the request for
rehearing except upon a showing of good cause.”).
3 The Examiner did not previously expressly rely on the two prior art patents
incorporated by reference in Lu (see Req. 5, n. 3). Consequently, the
Appellants have not had an adequate opportunity to respond to this evidence
and we do not consider it. See 37 C.F.R. § 1.104(a)(2) .
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Application 10/131,881

the Board panel would have recognized that a person of
ordinary skill in the pertinent art would have reasonably
expected to have been able to make an antireflective coating
consist [sic] of a single layer of ZrO2 doped with A12O3, and
such antireflective coating would be functional because the
doped ZrO2 layer with appropriate thickness would protect the
underlying components.

(Req. 7.) As the panel did consider the pertinent facts presented and
arguments made on appeal, the Examiner’s first argument is not persuasive
of error in the panel’s decision to reverse the Examiner’s rejection of the
appealed claims.
The Examiner’s second argument is that the Board failed to recognize
that the claimed invention would have been obvious because the ordinary
artisan would have found removal of the top layer of Lu’s antireflective
coating “obvious to try.”4 (Req. 7.) The Examiner again relies on the
undisputed fact that an antireflective coating may be formed by depositing
one layer of a dielectric (see supra note 3), and on the fact that Lu discloses
a limited number of choices of materials for forming such layer. (Req. 7-8.)
The Examiner ultimately concludes “[t]he result of an antireflective coating
of a single layer of ZrO2 doped with A12O3 would be predictable to one of
ordinary skill in the art.” (Req. 7-8.)
In rendering the Decision, the panel considered the disclosure in Lu
listing possible materials for use in the antireflective coating and the
Examiner’s proposed motivation for modifying Lu to achieve the claimed
invention. (Compare Ans. 3-4 and Lu, col. 4, ll. 47-62 with Req. 7-8.) The

4 If a combination would have been “obvious to try” at the time of the
invention, it could be rendered obvious in light of the prior art. KSR, 550
U.S. at 421.
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Application 10/131,881

panel also considered Appellants’ argument that the prior art teaches away
from the Examiner’s proposed modification to Lu’s coating and the evidence
relied on in support thereof. (See App. Br. 11-12; Rep. Br. 6-9.) Based on
the panel’s consideration of the arguments and evidence of record, the panel
agreed with Appellants’ position that Lu teaches away from the claimed
invention. (Decision 3-4.)
“[R]eferences that teach away cannot serve to create a prima facie
case of obviousness.” Pfizer Inc. v. IVAX Pharms, Inc., 2010 WL 339042, at
*13 (Fed. Cir. 2010) (quoting McGinley v. Franklin Sports, Inc. 262 F.3d
1339, 1354 (Fed. Cir. 2001) (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994) (noting that “a reference will teach away if it suggests that the line of
development flowing from the reference's disclosure is unlikely to be
productive of the result sought”))). “If references taken in combination
would produce a ‘seemingly inoperative device,’ . . . such references teach
away from the combination and thus cannot serve as predicates for a prima
facie case of obviousness.” McGinley, 262 F.3d at 1354 (citing In re
Sponnoble, 405 F.2d 578, 587 (CCPA 1969) (references teach away from a
combination if combination produces seemingly inoperative device) and In
re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (inoperable modification
teaches away), cited in Decision at 3); see also, United States v. Adams, 383
U.S. 39, 52 (1966) (upholding nonobviousness where references teaching
away from the claimed combination would “deter any investigation into
such a combination”); In re ICON Health & Fitness, Inc., 496 F.3d 1374,
1382 (Fed. Cir. 2007) (“[A] reference teaches away from a combination
when using it in that combination would produce an inoperative result.”).
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In other words, “the ‘predictable result’ discussed in KSR refers not
only to the expectation that prior art elements are capable of being
physically combined, but also that the combination would have worked for
its intended purpose.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314, 1326 (Fed. Cir. 2009). Even if there are a “finite number of
identified” solutions, an invention cannot be “obvious-to-try” unless the
identified solutions are also “predictable.” Bayer Schering Pharma AG v.
Barr Labs, Inc., 575 F.3d 1341, 1347 (Fed. Cir. 2009); In re Kubin 561 F.3d
at 1359-60.
The Examiner has not persuaded us that Lu does not teach away from
removing the top layer of the disclosed antireflective coating. See In re
Chapman, 2010 WL at *5 (Fed. Cir. 2010) (“Whether or not a reference
teaches away from a claimed invention is a question of fact.”) (citing In re
Napier, 55 F.3d 610, 613 (Fed. Cir. 1995)). As such, we are not convinced
of error in the Decision.
The final argument advanced by the Examiner is that the Board failed
to recognize that the ordinary artisan would have understood that the
intermediate structure formed by Lu would have functioned as a single-layer
antireflective coating. (Req. 8.) In their Reply Brief, Appellants explained
why the ordinary artisan would not have viewed Lu’s intermediate structure
(i.e., a structure including only the first layer of the antireflective coating) as
an intermediate, functioning device. (See, e.g., Rep. Br. 7, 3rd para.
(explaining that “a non-zero birefringence shift would inevitably result,
defeating an important feature of the Lu et al. invention”).)
Consequently, the panel did consider the understanding of the
ordinary artisan with respect to the intermediate structure in Lu. Appellants’
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Application 10/131,881

arguments in the Appeal and Reply Briefs further convinced us that the
ordinary artisan would not have had the knowledge or skills necessary to
modify the first layer of Lu’s antireflective coating to achieve a functional
structure. (Cf. Decision 4.) Accordingly, the Examiner’s third and final
argument is not persuasive. See Abbott Labs v. Sandoz, Inc., 544 F.3d 1341,
1352 (Fed. Cir. 2008) (“[K]nowledge of the goal does not render its
achievement obvious.”).
In conclusion, based on the foregoing, we have granted the
Examiner’s request to the extent that we have reconsidered the Decision, but
we deny the Examiner’s request to make any change therein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

DENIED

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