10/31/2013

Randall v. Rea: Providing Evidence of Obviousness in Inter Partes Reexamination


 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleRandall MFG., v. Rea, No. 2012-1611 (Fed. Cir. Oct. 30, 2013).
IssueIn its decision reversing the [Examiner's findings of non obviousness during inter partes reexamination], the Board did not consider the background references Randall had cited as evidence of the knowledge of one of skill in the art. Instead, the Board looked to “the content of the prior art relied upon in rejecting FG Products’ claim 1.
Randall at *8-9 (text added).
HoldingBy narrowly focusing on the four prior-art references cited by the Examiner and ignoring the additional record evidence Randall cited to demonstrate the knowledge and perspective of one of ordinary skill in the art, the Board failed to account for critical background information that could easily explain why an ordinarily skilled artisan would have been motivated to combine or modify the cited references to arrive at the claimed inventions.
Id. at *12.
 
 
Procedural HistoryFG Products owns U.S. Patent No. 7,214,017, which is directed to moveable bulkheads for partitioning cargo space in a shipping container. FG’s competitor, Randall Manufacturing, requested inter partes reexamination of the ’017 patent, and the Patent and Trademark Office examiner rejected a number of FG’s claims as obvious over a combination of four prior-art references. On ap- peal, the Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board) reversed, unable to discern any reason that one of ordinary skill in the art would have been motivated to combine the cited references. Randall appeals the Board’s determination to this court.
Randall at *2.
 
 
 
Legal Reasoning (Rader, CJ, Dyk, Taranto)
Background: Board Proceeding
Submission of Additional References to Define the State of the ArtIn its briefing before the Board, Randall argued that the state of the art and the level of skill at the time of FG’s application included well-known options for lifting moveable, track-mounted bulkheads and stowing them against the ceiling. As evidence of what one of ordinary skill in the art would have known, Randall cited a host of references that had been considered by the Examiner during the course of the reexamination—some of which had provided the basis for rejecting FG’s original claims— including multiple references disclosing track- and trailer- mounted bulkheads that could be raised to the ceiling, and a variety of references teaching straps and lift mechanisms to assist in stowage. Randall also provided a declaration from its employee, Gregory Boyer, who con- firmed that a bulkhead designer at the time of FG’s application would have recognized that the panels of Aquino could be raised and stowed near the ceiling, noting references showing that it was well known how to adjust the geometry of a track-mounted assembly so that the rails would not interfere with lifting the panel.
Randall at *7-8.
Nonobviousness Finding Without Consideration of Submitted Additional ReferencesIn its decision reversing the Examiner on the rejections at issue here, the Board did not consider the background references Randall had cited as evidence of the knowledge of one of skill in the art. […] Analyzing just Aquino, Gibbs, and the two ROM references, and focusing specifically on modifying Aquino to allow ceiling stowage, the Board found that it “simply does not follow” that ceiling stowage “would have been contemplated for Aquino’s assembly for which there is no need or intent for such a position.” Id. at *5.
Id. at *9.
Legal Standard: Defining the State of the Art in an Obviousness Analysis
Obviousness Standard, generallyRejecting a blinkered focus on individual documents, the Court [in KSR] required an analysis that reads the prior art in context, taking account of “demands known to the design community,” “the background knowledge possessed by a person having ordinary skill in the art,” and “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. This “expansive and flexible approach,” id. at 415, is consistent with our own pre-KSR decisions acknowledging that the inquiry “not only permits, but requires, consideration of common knowledge and common sense.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006).
Randall at *11-12.
Additional References are Helpful in Defining the State of the ArtIn recognizing the role of common knowledge and common sense, we have emphasized the importance of a factual foundation to support a party’s claim about what one of ordinary skill in the relevant art would have known. […] One form of evidence to provide such a foundation, perhaps the most reliable because not litigation-generated, is documentary evidence consisting of prior art in the area. Randall relied on just such evidence in citing to extensive references of record showing a familiar, even favored, approach to bulkhead stowage.
Id. at *12 (internal citations omitted).
Analyzing the 103 Rejection References, in view of the State of the Art as Defined by the Additional References, Points to a Finding of Obviousness
Additional References are Probative[...] Randall cited four U.S. patents (Nos. 1,148,382; 2,752,864; 2,866,419; and 4,019,442) that disclose bulkheads designed to be lifted and stowed near the ceiling, three of which (the ’382, ’864, and ’419 patents) describe such stowage for movable, track-mounted panels. The significance of those and other references did not depend on any attempt to change the combination that formed the basis of the Examiner’s rejections; rather, the references constitute important evidence of the state of the art and the context in which the Examiner-cited combination should be evaluated.
Randall at *12-13.
Failure to Consider Additional References PrejudicialThe Board’s failure to consider that evidence—its failure to consider the knowledge of one of skill in the art appropriately—was plainly prejudicial. Once it is established that a prevalent, perhaps even predominant, method of stowing a bulkhead panel was to raise it to the ceiling, it is hard to see why one of skill in the art would not have thought to modify Aquino to include this feature—doing so would allow the designer to achieve the other advantages of the Aquino assembly while using a stowage strategy that was very familiar in the industry.
Id. at *13.
Consideration of Additional References Point to Obviousness Finding

Particularly when viewed in the context of the background references Randall provided, the evidence strongly supports the notion that the bulkhead design FG claimed was nothing more than the “combination of familiar elements according to known methods,” “‘each performing the same function it had been known to perform,’” “yield[ing] predictable results.” KSR, 550 U.S. at 416-17 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). In addition, neither FG nor the Board points to any objective indicia of non-obviousness. On this record, the Board’s finding of lack of motivation to combine is infected by prejudicial error. We accordingly vacate the Board’s reversal of the Examiner’s rejection of claims 11- 12, 38-40, 48-56, 75-79, and 83-91 for obviousness.
Id. at *14.
Conclusion
The Board's determination of non-obviousness as to claims 10-12, 38-40, 48-56, 75-79, and 83-91 is vacated, and the matter is remanded to the Board.
Randall at *15.
 
 
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