Written by: Mark Terry

The photo below is the ceiling of my gym – my local Crossfit box in Miami.

At least a couple of times a week, I collapse on the floor of that gym after completing a WOD, heart pounding, and try to catch my breath. I lay there waiting for my pulse to calm down, as I contemplate life, reality and why we are all here. To say I’ve spent days, cumulatively, looking at that ceiling, would be an understatement. I could close my eyes and tell you exactly where each pipe, crack, expansion joint and beam is located on that ceiling. It’s the simple product of looking at a static object over and over again, day after day, week after week. I feel much the same way about reading Patent Trial and Appeal Board (PTAB) decisions. Today’s Ex Parte Ochs decision is a perfect example of this. 

The Ex Parte Ochs (Appeal No. 2013-007478) decision, which was handed down today, involved a software claim that read information from a sensor and produced some data output. The Patent Examiner performed a search and found different pieces of the claim distributed among two prior art references – Chin and Barreto. Thus, the Examiner issued a 35 U.S.C 103 obviousness rejection. As a patent attorney with a majority of his practice focusing on prosecuting software-related patent applications, this is the type of rejection that I see over and over again, all year long. The Appellant tried to argue that there was no reason or motivation to combine Chin and Barreto. But the PTAB didn’t buy that argument. The PTAB decided:

“we find that the combination of Chin and Barreto involves nothing more than a simple substitution of well known, interrelated regression LS and LMS techniques to yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We agree with the Examiner that these teachings, all in the context of Appellant’s invention, are properly combinable).”

The Board went on to cite Federal Circuit law on the issue of “no motivation to combine” and “teaching away”:

“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, 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 by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (citing United States v. Adams, 383 U.S. 39, 52 (1966)).”

 I could have predicted the outcome in this case. The “no motivation to combine” and “teaching away” arguments are not statistically very successful. Further, the patent practitioner in this case did not provide any hard evidence in responding to the 35 U.S.C 103 obviousness rejection. That did not bode well for the Applicant’s attorney, since he carried the burden of proving the obviousness rejection was not accurate. 

Lessons Learned: Don’t use the “no motivation to combine” argument unless there is clear and explicit language in the cited prior art stating that you shouldn’t combine the teachings and a clear explanation of why. Further, rebutting a 35 U.S.C 103 obviousness rejection carries a high burden. Thus, you should come up with some hard evidence that supports your argument – not just attorney argument.

Mark Terry is a Board-Certified Specialist in the area of Intellectual Property Law. Along with Derek Fahey, they operate as patent attorneys and trademark lawyers in Naples, Fort Lauderdale, The Palm Beaches, and Miami. Contact Mark Terry if you have any questions regarding enforcement of patents, trademarks and copyrights.