In In re Schweickert, No. 2016-1266 (Fed. Cir. 2017), the Federal Circuit in a non-precedential opinion vacated the PTAB’s decision canceling patent claims in an ex parte reexamination as being obvious over prior art. The Federal Circuit determined that the PTAB’s conclusion of obviousness was based on no more than a broadly-stated assertion that the proposed modification was within the knowledge of a person having ordinary skill in the art. The PTAB’s decision, according to the court, lacked a sufficient factual basis for why the skilled artisan would have modified the prior art to arrive at the claimed invention—a fact needed to support a conclusion of obviousness.
This appeal arose from PTAB decision in an ex parte reexamination. The PTAB affirmed an examiner’s rejection that all claims of U.S. Patent No. 7,574,272 were obvious over the combination of two prior art references: U.S. Patent No. 6,332,175 (Birrell) and U.S. Patent No. 5,842,015 (Cunniff). The ‘272 patent is directed to a portable media player that minimizes power consumption during the transfer of data from a spinning storage medium such as a CD-ROM to other memory in the player. Claim 1 is representative of the claimed inventions:
- A portable media player comprising:
a processor that executes commands;
a random-access-memory component that stores compressed data in more than two different random-access-memory buffer areas, each random-access-memory buffer lockable and unlockable by the processor;
a codec component, controlled by the processor, that reads compressed data from a locked random-access-memory buffer, the locked random-access-memory buffer selected from among the more than two different random-access-memory buffer areas and locked by the processor to prevent writing of the locked random-access-memory buffer by another component, and that generates a decompressed signal from the read compressed data that is rendered by a data-rendering component;
a non-volatile, mass-storage component that stores compressed data and that writes compressed data, under control of the processor, to unlocked random-access-memory buffers; and a battery power supply to provide electrical power to the processor, random-access memory component, codec component, data-rendering component, and non-volatile, mass-storage component.
The PTAB upheld the examiner’s conclusion of obviousness, relying on the combination of Birrell and Cunniff. The PTAB concluded that modifying Birrell to include Cunniff’s semaphore (lock) mechanism would have been a predictable use of prior art elements according to their established functions ─ an obvious improvement. The PTAB was not persuaded that the modification would not have been obvious because “although the use of locks adds additional complexity and computations, . . . an implementation using locks is within the knowledge of a skilled artisan.” Schweickert at 7 (quoting the PTAB decision at 6).
The Federal Circuit noted that the lockable feature of the buffer was the “touchstone of the claimed invention because it limits how much compressed digital data can be reloaded into buffer 124 at any given time, thereby reducing the frequency in which storage device 126 has to be activated and the motor therein enabled.” Schweickert at 3. The Federal Circuit concluded that the PTAB failed to sufficiently justify why Cunniff’s semaphore would provide an obvious improvement to Birrell. The record did not demonstrate any problem in Birrell that would be resolved by the semaphore of Cunniff. The Federal Circuit further determined that the proposed substitution of the Cunniff semaphore required removal of the play control logic, which was contrary to the purpose of Birrell’s system.
The Federal Circuit also stated the PTAB decision was deficient in failing to address the claim limitation of there being multiple lockable buffers. The Patent Office attempted to address this deficiency at oral argument, referencing various figures of Birrell and Cunniff, but the Federal Circuit was unpersuaded. The Federal Circuit concluded that, despite not being addressed in the PTAB decision, even if the PTAB’s new argument was considered, it still failed to demonstrate a disclosure in Birrell or Cunniff of buffers that are individually lockable.
Finally, the Federal Circuit stated that the PTAB failed to explain why a skilled artisan would have a reason to combine Birrell and Cunniff to achieve the claimed invention, particularly in view of the PTAB’s finding that the modification to Birrell would add additional complexity and computation. Schweickert at 11. The court stated the conclusion of obviousness was not sufficiently supported by the PTAB’s bald assertion that “Birrell would have benefitted from the advantages of the Cunniff semaphore mechanism.” Id.
On remand from the Federal Circuit, the PTAB reversed the examiner’s rejection of the claims. Ex parte Hunts Point Ventures, Inc., Appeal No. 2015-004410 (PTAB April 28, 2017). The PTAB concluded that the record did “not sufficiently establish that Birrell had a problem with overwriting in RAM that would give a skilled artisan a reason to modify Birrell to prevent overwriting” (i.e., by including the semaphore locking mechanism of Cunniff). Id. at 6. Therefore, according to the PTAB, the examiner’s legal conclusion of obviousness lacked the required rational underpinning. Id. The PTAB further addressed the remaining rejections, which were not substantively addressed in the initial opinion, and similarly reversed each of these rejections as lacking the required rational underpinning because based on the record, the examiner’s articulated reason to combine the references (to prevent overwriting) was not a sufficient reason.
Despite being non-precedential, the Federal Circuit’s decision and the PTAB’s decision on remand provide a reminder that an explanation of why or how a skilled person would modify the prior art to arrive at the claimed invention, with support in the record, is needed to substantiate a conclusion of obviousness. Obviousness cannot be predicated on broadly stated conclusions that asserted combinations and modifications are within the knowledge of the skilled artisan or would generally be beneficial; particularly where the proposed combination or modification results in added cost or complexity.