INSITUFORM TECHNOLOGIES, INC., v. CAT CONTRACTING, INC.(CAFC No. 04-1267
HARAKENZO WORLD PATENT & TRADEMARK
February 6, 2006
(Written by: Arai)
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In the OA of a U.S. patent application, if there is no statement in the cited documents that suggests a motivation to combine multiple cited documents, the examiner cannot establish a Prima Facie Case. In such cases, ``the cited document does not provide any motivation for the combination'', ``the cited document teaches away from the technical content of the claimed invention'', or ``the cited document does not teach the structure of the invention''. A valid counterargument is that the importance of This case law shows what you should keep in mind in this case.
Brief progress explanation
The independent claims of this patent consist of (a) the periphery of an open sole; (b) a hexagonal projection formed on the sole; and (c) the hexagon with one side facing the toe. It was stated as a constituent requirement that there is.
At the examination stage, the claimed invention of the present patent (USP 4,366,012) was based on cited documents that teach a structure in which square protrusions are arranged on an open sole with one side facing the toe, and hexagonal protrusions. The examiner found that the combination with a design patent showing a configuration in which one side of the patent is arranged with one side facing the toe does not meet the patent requirements for non-obviousness. In response, the patentee was dissatisfied with the above finding and requested a trial. The Board of Appeal invalidated the examiner's reason for refusal and presented a new reason for refusal related to non-obviousness. Dissatisfied with this, the patentee filed an appeal with the CAFC.
Confirmation items by CAFC
The issue at CAFC was whether or not the gist of the claimed invention of the patent was obvious to a person skilled in the art based on the combination of the cited documents cited by the examiner and the teachings of the design patent. In response, the CAFC confirmed that it will uphold the Board of Appeal's decision absent substantive evidence. In this case, the factual findings that serve as the criteria for determining non-obviousness include the presence or absence of the technology taught by the cited document or, conversely, the content of the teaching that moves away from the patented invention in question, and whether the cited document suggests a motive for combining multiple prior art techniques. The presence or absence is important, and in addition, it is important that there is content and scope of the prior art taught in the cited document, the level of the prior art, the difference between the invention and the prior art, and objective evidence to establish a Prima Facie Case. Confirmed.
It is necessary that the cited document contains a suggestion that it is desirable to combine multiple cited documents, and this motivation is based on the nature of the problem being solved, the teaching content of the related prior art, and the relevant It was also confirmed that decisions will be made taking into consideration the usual knowledge of the contractor.
Conclusion
In this case, the Board of Appeal's decision was upheld by the CAFC on the basis that the cited documents contained statements that suggested a combination as a motive.
In this case, the patentee submitted that the Board of Appeals did not show any substantive evidence of motivation for the combination, citing the hexagonal protrusion of the design patent as taught in the cited document and other reasons. There is no motivation to combine the configuration taught in the cited document with the quadrangular protrusions and the configuration with the hexagonal protrusions shown in the design patent. I made a statement to that effect.
On the other hand, CAFCProving the motivation for the combinationTherefore, there is no need to state that the combination is suitable,What is important is whether the cited documents as a whole indicate the suitability of the above combination. It is not necessary that the combination in question be shown to be the most preferred combination.The CAFC held that.
CAFC cited In re Gurley,Even if a cited document states that a combination is not more preferable than others, this does not negate the motivation for the combination.The judgment was held to that effect.
Although the patent specification teaches that the CAFC has a configuration in which quadrangular protrusions are arranged, it is stated that the shape may be a square, a triangle, or a polygon other than a rectangle. It can be said that the motivation for the combination with the shape of is described. Therefore, by combining this teaching with the hexagonal protrusion configuration shown in the design patent, CAFC determined that the patented invention does not meet the patentability requirements of non-obviousness.
The patentee also stated that the cited document describes a departure from the particular combination of the claimed invention. Specifically, since the cited document teaches a configuration in which the above three constituent elements are replaced with different ones, this means that a combination of configurations other than the patented invention is selected, and therefore, the patented invention does not apply to the patented invention. I stated that it teaches us to stay away from invention.
On the other hand, CAFCMerely because other combinations are described in cited documents does not necessarily mean that they deviate from the patented invention.The judgment was held to that effect. In order to prove that it departs from the patented invention, it is necessary to include the following in the cited document:There must be a statement that criticizes or doubts the composition of the patented invention, or that casts doubt on reaching the composition of the patented invention.The court held that. In this case, the CAFC found that there was no statement that substantiated such distance.
Furthermore, the patentee has stated that there is no statement in the cited documents that indicates the importance of the structure of the patented invention. A particularly important configuration of the patented invention is that the hexagonal protrusions are arranged so that one side of the hexagon faces the toe in order to prevent slipping on the ground surface. It has been stated that this is not taught in the cited cited document, and therefore does not provide any motivation for the above combination to a person skilled in the art.
In contrast, CAFCWhat is required is that the motivation for the combination is stated in the cited document, and the reason for the combination does not need to be the same as the patented invention.The judgment was held to that effect. In addition, the Board of Appeal rejected the patent holder's argument, stating that the cited documents cited actually describe the anti-slip effect claimed by the patent holder.
In response to the reason for refusal related to non-obviousness, an argument may be made that the cited document does not state that the composition of the patented invention is suitable, and therefore cannot be said to motivate the combination of the patented invention. However, this objection is inadequate. The CAFC has held that there is no need to teach or imply that a combination is suitable or optimal for motivating. In other words, CAFC isUnless the combination of the patented invention is clearly criticized, regardless of the effect of the combination, if the combination is suggested in the cited document, it can be a motivation for the combination.It has been determined that.
The patentee claims that the cited document only discloses a configuration in which the above three constituent elements of the patented invention are replaced with different ones, and furthermore, among many combinations, there is no configuration other than the combination of the patented invention. It was stated that because the applicant chose the following, the applicant was teaching away from the specific combination of the claimed invention.
On the other hand, CAFCThe court held that unless the patent clearly criticizes a specific combination, it does not constitute teaching away from the patented invention. In short, the CAFC makes clear that what matters is whether the motivation for the combination is disclosed, not the reason for the combination..
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