Federal Circuit Affirmed BPAI on Obviousness of Claims to Particle Detecting System, Remanded as to Written Description
Aude Gerspacher | Bloomberg Law
In a nonprecedential opinion, the U.S. Court of Appeals for the Federal Circuit affirmed a decision of the U.S. Patent and Trademark Office Board of Appeals and Interferences (“BPAI”) finding obvious certain claims regarding a system for detecting particles in a gas or a liquid. Because the BPAI conceded that certain written description rejections should be withdrawn, the Federal Circuit remanded regarding that issue.
System for Detecting Particles
Alexander Yufa is the owner of U.S. Patent No. 6,346,983 (the ’983 patent), which claims a system for detecting particles in an airborne gas or a liquid. Yufa’s patented system includes a computer that controls a remote detection system by wirelessly sending activation commands. An ex parte reexamination was filed for the ’983 patent and appealed to the BPAI which held that claims 1 and 3-5 were obvious over the cited reference “Mikami,” and claims 6-8 were invalid due to lack of written description. The BPAI held that Mikami explicitly disclosed all elements of the claims but one, and further found that the background disclosure of Mikami taught this missing limitation because the robot-operated sensors included a detection system and processing means for determining the amount of particles. The BPAI ruled that the ’983 patent rearranged known elements and therefore was obvious. The BPAI additionally held that claim 5 was obvious in further view of U.S. Patent No. 5,864,781 which disclosed sensors with unique ID codes as recited in the claim. Yufa appealed the BPAI’s decision to the Federal Circuit.
Federal Circuit Affirmed Obviousness Rejection
The Federal Circuit agreed with the BPAI that claims 1 and 3-5 were obvious based on the disclosure of Mikami because Mikami teaches every element of claims 1 and 3-5 except that the processing of the raw sensor data occurs in the computer in Mikami, but at the remote detecting system in the claims of the ’983 patent. Citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007), the Federal Circuit stated that this “simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement.” Yufa at 5.
Yufa argued that Mikami teaches away from his system based on a statement made by the examiner that “Mikami taught that processing measurement data at the remote sensing location was possible, but preferred not to include the extra equipment at the remote location.” Id. However, the Federal Circuit found that Mikami merely criticized larger systems, and that there was no substantial evidence that Mikami taught away from Yufa’s invention.
The Federal Circuit further found that Yufa’s arguments of secondary considerations did not rebut the strong established prima facie case of obviousness. Specifically, the court noted that Yufa did not support his claim of unexpected results or commercial success with any evidence, and as such cannot overcome the rejection of obviousness on statements alone. Thus, the Federal Circuit affirmed the BPAI’s rejection of obviousness.
Federal Circuit Vacated and Remanded Written Description Rejection
Regarding the BPAI’s rejection of claims 6-8 for lack of written description, the USPTO conceded that these rejections were made in error and requested that the issue be “remand[ed] to the Board for it to withdraw the written description rejection and take appropriate action.” Yufa at 7. Accordingly, the Federal Circuit vacated and remanded for the BPAI to withdraw this rejection.
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