Choose Inter Partes Reexamination

Scott Daniels | May 23, 2012

The CAFC categorized its decision yesterday in PlaSmart v. Kappos as “non-precedential,” but the case teaches important lessons regarding the current state of reexamination.  First, one cannot assume that each reviewing panel strives to affirm the decision from below – the PTO Board scrutinizes the examiner’s decision, and the CAFC is equally careful in reviewing the Board’s decision.  Second, the obviousness analysis established in KSR remains a potent weapon for those challenging the validity of a patent.  And finally, inter partes reexamination – with its option for the reexamination requester to participate even through the CAFC appeal – is much superior to ex parte reexamination. 

The patent claimed a scooter (tricycle) with a safety improvement, reducing the likelihood of the scooter flipping over.  The significant limitation recited “a supporting arm frontwardly extended from said driven portion of said twister member,” with a safety wheel mounted to the free end of the “supporting arm.” During reexamination, the examiner found that the primary reference satisfied this “supporting arm” limitation; the examiner then rejected claim 1 as anticipated by the primary reference and as obvious over a second reference in view of the primary reference.  On the other hand, the examiner found a series of dependent claims, added in the reexamination, to be patentable because the references failed to show attachment of the safety wheel in the same position as required by those added claims. 

The PTO Board reversed the anticipation rejection of claim 1, finding that the primary reference failed to disclose the claimed attachment of the “supporting arm” to the tricycle; specifically, the Board found that the arm disclosed in the prior art drawing was attached to a base plate, not the twister member as required by all the claims.  The Board also faulted the combination of art relied upon by the examiner, for resulting in a ridiculous scooter having two safety wheels, both raised off the ground.  Thus, the PTO refused to reject claim 1 as anticipated and refused to reject the new claims as obvious.

The requester appealed this refusal to reject to the CAFC who affirmed the PTO’s refusal to reject claim 1 as anticipated, the CAFC agreeing with the PTO that the prior art arm drawing was attached to a base plate, not the twister member. 

The CAFC, however, was not so charitable regarding the PTO’s refusal to reject the claims as obvious over the prior art references.  It concluded that the primary references disclosed each aspect of the claimed invention, except for the claimed safety driving structure discussed above.  It acknowledged that the primary reference failed to “place those universal wheels in the exact locations” required by the patent claims.  It found, however, the primary reference disclosed an additional wheel placed in front of the twister member to improve stability.  The CAFC then determined that “modifying the scooter [of the secondary reference] to prevent tipping by placing [ ] a safety wheel in front of the twister member would thus be  obvious for one skilled in the art of trying to increase stability in the direction of movement.”

Tracking KSR, the CAFC concluded that “such modification is nothing more than a predictable use of prior art elements (universal wheels in contact with the ground in the front of the twister member) to address a known problem (stability), and would thus have been obvious.” 

Regarding the PTO Board’s refusal to reject the newly added dependent claims, the CAFC found that the limitations recited therein were “only minor, predictable variations” of claim 1, without even mentioning any of limitations.  The CAFC therefore reversed the PTO’s refusal to reject the patent claims. 

We thus see a real hop-scotch of rulings through the reexamination process, as well as a heavy reliance on KSR at the CAFC.  Finally, and most importantly, the superiority of inter partes reexamination, over ex parte, is once again on display.  Without the full participation of the requester at the CAFC, the validity of the claims would have been confirmed.

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