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Motivation for the Federal Circuit Test - page 25 / 35





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may be obvious once the source of the problem is identified. This is part of the "subject matter as a whole" which should always be considered in determining the obviousness of an invention under 35 USC 103. The court must be ever alert not to read obviousness into an invention on the basis of the applicant's own statements; that is, we must view the prior art without reading into that art appellant's teachings. The issue, then, is whether the teachings of the prior art would, in and of themselves and without the benefits of appellant' disclosure, make the invention as a whole, obvious. 61

One element not found in the summation above is the importance of the patent evaluation procedures and their relationship to subsequent review by a court. Since this discussion is still in the CCPA era, it should be remembered that the overwhelming majority of cases considered here involve appeals from the patent office from a finding of obviousness. Such appeals are necessarily framed by the procedures the PTO examiner follows. Because the TSM test is the analytical framework for evaluating obviousness, the PTO procedures interact and influence how the TSM test works. Discussion of the importance PTO procedures have on subsequent review by a court will become commonplace in Federal Circuit decisions. The CCPA more often assumed knowledge of this context on the part of those reading decisions.

However the interaction between the TSM test and PTO procedures is still evident in CCPA decisions. The key issue in appeals from a finding of obviousness by an examiner is the prima facie case. Under § 103 the inventor is entitled to a patent “unless” the PTO can demonstrate beyond a preponderance of the evidence that the patent is obvious. Thus, the inventor will petition the PTO for a patent, and it is then the responsibility of the PTO to establish a prima facie case of obviousness if the PTO wishes to deny the patent under § 103. The petitioner then must produce evidence sufficient to rebut the prima facie case, if the prima facie case is adequately established.

Though not often explicitly discussed, this was clearly the backdrop for CCPA decisions. Its operation can be seen in In re Lintner. 62

The sole issue before us is whether or not the claimed subject matter on appeal is obvious from the prior art relied upon within the meaning of 35 U.S.C. § 103….

We agree with the solicitor that the composition herein claimed is prima facie obvious. In determining the propriety of the Patent Office case for obviousness in the first instance, it is necessary to ascertain whether or not the reference teachings would appear to be sufficient for one of ordinary skill in the relevant art having the references before him to make the proposed substitution, combination or other modification. In the present case, we are satisfied that Rheiner and Speel do suggest the use of a sugar with conventional laundry compositions such as that disclosed in Germann. The fact that appellant uses sugar for a different purpose does not alter the conclusion

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405 F.2d at 585. (citations omitted) 458 F.2d 1013, (C.C.P.A.1972).


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