By Dennis Crouch
In re Hodges (Fed. Cir. 2018)
In a break up view, the Federal Circuit has turned down the PTAB’s anticipation and obviousness choices – locating that the Board erred in holding that the key prior art reference inherently disclosed the an “inlet seat” described by a “valve body” of the claimed drain assembly.
Anticipation arises from analysis of the “four corners” of a prior art reference. That one particular doc must “describe every aspect of the claimed creation, possibly expressly or inherently, these kinds of that a human being of common ability in the art could observe the creation without undue experimentation.” Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d 1331 (Fed. Cir. 2010). Even though “inherent description” presents some leeway, the doctrine only applies if the supposed inherent attribute automatically follows from the convey teachings of the reference. Proper-off-the-bat, we can note a problem listed here with the Examiner’s statement that “it is at least ‘arguable’ that [the prior art reference] does not disclose “a valve entire body which defines an inlet seat.”
Beyond that, in strolling by the prior art, the Federal Circuit found a important problem with the PTO analysis — fundamentally that the prior art’s “valve body” was disconnected from the inlet-valve (that inherently contained an inlet seat). Hence, according to the courtroom, the valve could not “define” the inlet seat as required by the assert.
Determine 7 avove from the prior art exhibits the challenge: The portion marked in yellow defines the claimed valve assembly and the major red valve is the locale of the required inlet seat. The assert although involves that the valve assembly “define” the valve seat. I’ll note listed here a important problem with the analysis – why not just determine the “valve assembly” of the prior art as together with the higher valve (as I have performed with my redrawing of Determine 7 beneath)?
I talked about higher than the break up view. Both of those the greater part (Judges O’Malley and Lourie) and the Dissent-in-component (Choose Wallach) agreed that the PTO experienced failed to display anticipation. The variance came with the outcome – the greater part reversed even though the dissent would have taken the lesser motion of vacating the PTAB ruling.
Here, the appellate panel’s problem with the PTAB is that it found an erroneous factual locating. Even so, for the reason that the lessen tribunal is ordinarily observed as the finder-of-simple fact, the outcome of this kind of disagreement is usually to vacate the PTAB’s conclusion and have the lessen tribunal critique the proof at the time yet again. Here, the Vast majority justified its reversal with a summary that the PTAB conclusions had been “plainly contrary to the only permissible factual locating that can be drawn from [the prior art] itself.”
Creating in dissent, Choose Wallach argues:
When an company fails to make requisite factual findings or to demonstrate its reasoning, “the right study course, besides in rare situation, is to remand to the company for added investigation or rationalization. The examining courtroom is not usually empowered to conduct a de novo inquiry into the make a difference becoming reviewed and to reach its own conclusions dependent on these kinds of an inquiry.” Fla. Ability & Light Co. v. Lorion, 470 U.S. 729, 744 (1985). By reversing the PTAB’s perseverance [of anticipation] the greater part engages in the extremely de novo inquiry versus which the Supreme Courtroom has cautioned.