September 26, 2023

by Dennis Crouch

In re Universal Electronics, Inc., No. 2022-1716 (Fed. Cir. Aug. 15, 2023) (non-precedential)

This was a consolidated attraction from two Patent Trial and Enchantment Board (PTAB) selections affirming the rejection of claims from Common Electronics, Inc.’s (UEI) U.S. Patent Utility Nos. 12/645,037 and 16/279,095 as apparent beneath 35 U.S.C. § 103.  On attraction, the Federal Circuit has affirmed.

The standard method to obviousness willpower is for the examiner to mentally divide the claimed invention into plenty of particular person parts, after which seek for the person parts throughout the prior artwork.  If the examiner finds the entire limitations, then the one key query that continues to be is whether or not the mixture would have been apparent. Below KSR, that consequence doesn’t essentially require additional proof, however sometimes focuses on questions of whether or not PHOSITA would have been motivated to mix the references to create the invention, and have an affordable expectation of success of that endeavor.  Then again, primarily based upon my expertise, examiners are rather more uncomfortable discovering claims apparent the place specific parts will not be discovered within the prior artwork. This distinction is mirrored in KSR and different older instances the place the Supreme Courtroom has been most important of patents merely claiming a mixture of recognized parts.

As a prosecution technique, patentees have some management over the “dimension” of every component by way of their group of declare language.  Right here although, the patentee tried to do that through argument, however finally failed. Lets have a look at the rejection and the arguments right here:

The claims at difficulty relate to a system and methodology for offering improved consumer enter performance on a controlling gadget, reminiscent of a common distant management. Consultant declare 1 of the ‘037 software recites figuring out after which utilizing a specific “contact location” on a contact delicate floor to retrieve command information from a library saved within the controlling gadget’s reminiscence. The Examiner rejected the claims as apparent over two prior printed patent purposes, Fisher and Dresti. Fisher discloses figuring out a contact location and utilizing it to regulate an equipment. Dresti discloses retrieving command information from a library within the distant management’s reminiscence.

The patentee argued {that a} key part of the invention was not discovered within the prior artwork. Specifically, UEI argued that neither reference individually taught the limitation of a “controlling gadget that makes use of a decided contact location to retrieve command information from a library of command information saved in a reminiscence of the controlling gadget.”  Admittedly, every particular person little bit of this limitation was present in one of many prior artwork references, however the patentee argued that this function needs to be handled as a whole limitation.

On attraction, the Federal Circuit discovered the argument unpersuasive, concluding that the rejection correctly relied upon a mixture of prior artwork to show the entire declare limitations.  Because the patentee right here tried, attorneys can argue towards dividing the claims into smaller items. Nonetheless, it’s an uphill battle as soon as the examiner and PTAB have outlined the weather narrowly and located them in separate references.

The takeaway could also be that attorneys ought to advocate for the broader, unified view of the invention throughout early prosecution to keep away from being boxed right into a slim element-by-element method. Fastidiously crafted claims and thorough responses emphasizing the built-in advance will help form the evaluation within the desired path. However as this case exhibits, it may be tough to beat as soon as piecemeal parts are embedded within the report.

Sadly, the non-precedential opinion doesn’t present any element evaluation for when a tribunal be glad with micro vs macro parts. However, I can think about that we’ll look to the declare language, specification disclosure, and PHOSITA data.

This is similar difficulty that arises throughout infringement evaluation with software of the doctrine of equivalents.

Thus, the PTAB’s conclusions that the claims would have been apparent over the cited references.

Judges: Circuit Judges Reyna, Taranto, and Stoll