Case No. 2012-1611 (Rader, Dyk, Taranto)
Like all good things, the successful run of arguments about divergent problems and incompatibility between prior art and claims against § 103 must end. Randall Mfg. v. Rea brings us back, at least from the previous three posts, to some KSR realities: problems solved by claims are unimpressive against § 103 when similar problems have common sense solutions anywhere in the prior art; and physical incompatibilities between prior art embodiments won’t stand in the way of a common sense solution, at least for mechanical inventions.
FG Products owned US Patent 7,214,017, disclosing and claiming moveable partitions to divide up shipping containers. The partitions claimed in the ‘017 patent could be formed by combining multiple independently-moveable panels that which were further independently stowable by lifting them flat against the ceiling. Third-party requestor and competitor Randall successfully ensnared the ‘017 patent in an inter partes reexamination request, citing several pieces of prior art. While the Examiner rejected the claims as obvious over the prior art, the Board reversed, finding the following new claim allowable:
An apparatus for separating cargo areas in a trailer, comprising:
a trailer that includes a cargo space;
first and second panels [useable in a side-by-side configuration];
fastening straps that releasably secure the first and second panels together in the side-by-side configuration to form a full-width bulkhead that extends between opposing sidewalls of the cargo space of the trailer;
a mounting system that [allows the first and second panels to independently move longitudinally and independently raise], the mounting system comprising a first set of two longitudinal rails to guide movement of the first panel and a second set of two longitudinal rails to guide movement of the second panel, the first and second sets of two longitudinal rails being attached to at least one of a wall or a ceiling of the cargo space; and
a first lift mechanism mounted proximate to a longitudinal end of at least one of the first set of two longitudinal rails, the first lift mechanism engaging a first strap or rope that is coupled proximate to a lower edge of the first panel so as to raise the lower edge of the first panel toward the ceiling when the first strap or rope is manually pulled; and
a second lift mechanism [identical to the first but for the second set of two longitudinal rails].
In reversing the rejections, the Board looked at four pieces of prior art applied by the examiner. Two were advertisements disclosing half-width panels that could be strapped together to form a bulkhead, meeting the “panels” and “straps” claim limitations. A third was US Patent 3,217,664 to Aquino, disclosing half-width panels that were independently moveable longitudinally, meeting a portion of the “mounting system.” And the fourth was US Patent 1,193,254 to Gibbs, disclosing the recited “lift mechanism” for ceiling storage. In reversing, the Board, looking at just the applied four references, found no motivation to add the ceiling storage of Gibbs into Aquino, because Aquino already used side storage and there was no rationale to change Aquino’s rails to allow ceiling stowing of the panels. Randall appealed the Board’s reversal.
The Federal Circuit vacated and remanded. The panel on appeal seemed especially concerned that the Board had not taken proper advantage of the “expansive and flexible” framework of KSR in finding reasons to combine and modify prior art to meet the claims, including “design demands” and “background knowledge.” Particularly, here, ceiling stowing of bulkheads looked very much like a well-known, common sense solution for the problem of bulkhead space consumption, and the Board had improperly ignored evidence of record to this effect:
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. As KSR established, the knowledge of such an artisan is part of the store of public knowledge that must be consulted when considering whether a claimed invention would have been obvious.
In 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. See, e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328 (Fed. Cir. 2009). 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. For instance, 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 long-standing and common sense nature of ceiling stowing of bulkheads itself provided sufficient rationale to modify the Aquino reference to include the feature. The rationale was not undone by Aquino’s alternate use of side storage that would have rendered ceiling storage superfluous. The use of side versus ceiling storage appeared to be something like a common sense optimization or modification of a result-dependent variable to the panel, who stated in a footnote that “familiarity [with ceiling stowing] may be reason enough [to combine]” but additional reasoning to ignore Aquino’s side storage could exist because, “for instance, it may be more important to reserve space for cargo at the sides of a container than near the ceiling, as packing cargo against the walls helps distribute weight more evenly and may be easier than piling cargo toward the ceiling.”
Physical incompatibility could also be brushed aside by the common sense ceiling-stowing solution provided by the background art. Aquino’s rails would have interfered with the panels at the ceiling, because the panels joined the rails at too high of a joint. Not an impediment to § 103, said the panel:
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. Moreover, although FG claims that, as depicted, the panels of Aquino may have been impeded by the rails from being raised all the way to the ceiling, there is no dispute that it would have been well within the capabilities of an ordinary bulkhead designer to adjust the geometry (e.g., drop the hinge axis down a few inches) so that the panels could be freely raised to the ceiling. There are no apparent functional concerns that would have discouraged a bulkhead designer of ordinary skill from attempting the combination.
The opinion further bolstered its position by reasoning that the claimed ceiling bulkhead storage was nothing more than a combination of familiar elements performing known functions from the prior art and yielding predicable results.
Reversal of obviousness rejections vacated and remanded.
Lessons: The opinion in Randall Mfg. v. Rea is rather short, but the reasoning gives good counter-point to recent entries on § 103. Although the last three posts have all shown that recognition and solution of a problem distinct from the prior art is a good defense against § 103 invalidity, that line of argument can be easily undercut by a showing that the problem was known and had a common sense solution in the prior art. For example, in Randall, the solution for bulkhead storage in the ceiling was recognized by several old pieces of prior art, and this provided an independent motivation to modify a reference that used a divergent solution of side-storage to nonetheless meet the claim. The common sense motivation can even come from background art that is not applied for any particular claim element, as was the case in Randall. So the lesson here should be one of caution in arguing unique problem-solution as a firewall against obviousness. An Examiner can probably cite otherwise background art to show the problem and solution were common sense, thus providing both an independent rationale to combine/modify art to solve the problem and a counter to arguments of patentability under recognition of a different problem and solution.
The case here also pushes back against the value of physical incompatibilities in the prior art in nonobviousness. From the preceding posts it looked like incongruities between in prior art embodiments could be almost a teaching away from combining them to meet the claims or solve a problem newly recognized by the claims. But in Randall, we see a panel wanting strong evidence of unworkability in the face of a common-sense approach that could be implemented through simply moving around prior art elements. Indeed, the court here had little problem curing a reference’s interfering railing placement by moving it to a position that allowed the ceiling stowing functionality to be realized. Be wary of arguing inoperability, change in operating principle, or just plain incompatibility when faced with a supported common sense obviousness rationale and no expert evidence of the difficulty in implementing the common sense rationale, especially with mechanical claims.
Comment: The court seems to have gotten this correct to me. But I’m not completely sure what standard of review was employed in concluding that the Board had improperly failed to account for teachings in unapplied references (of record). Motivation to combine is a question of fact entitled to substantial evidence deference, but what kind of question is failure to use references to provide the motivation to combine in a rejection? Whatever the standard, the court found reversible error here in the Board’s non-use of the old patents of record to provide a motivation to combine under § 103.
Also, the court effectively entered a new ground of rejection, right? Even though the art supplying the common sense solution here was of record, the use of the same to provide a motivation to combine under § 103 was a new thrust to which the applicant could not have responded before the USPTO. I assume that on remand the Board will adopt the panel’s rationale here in a new decision affirming the rejections but designating them as new ground of rejection that explicitly uses the old references.