Ex parte Brunson

June 24, 2011 – Blog Post

In Ex parte Brunson (Appeal 2009-012413 in U.S. application serial no. 11/387,179) the Board of Patent Appeals and Interferences addressed whether a per se rule, the mere “reversal of parts” over prior art is an obvious variation, truncates an analysis for obviousness. 

The independent claim at issue recited “[a] saw comprising:  . . . a channel being disposed within the housing, . . . and a dust collector attached to the saw assembly, the dust collector having a tube that extends into the channel and through the housing.”  The prior art relied on by the Examiner did not disclose a saw with a tube extending into a channel but instead taught the channel extending into the tube.  Nevertheless, the Examiner rejected the claim as obvious over the prior art, citing legal precedent that the mere reversal of essential working parts of a previously patented device does not constitute invention.  In re Einstein, 8 U.S.P.Q. 166, 167 (C.C.P.A. 1931).

Reversing the Examiner’s rejection of the claims relying on the general proposition of a “reversal of parts,” the Board determined that a per se rule of obviousness cannot substitute for a fact-specific analysis.  It was evident to the Board that the Examiner provided no comparison between the facts of Einstein and the facts of the underlying application to explain how the holding of Einstein applied to the claims on appeal.  The Board emphasized that

[w]hen determining whether a claim is obvious, an Examiner must make “a searching comparison of the claimed invention - including all its limitations - with the teachings of the prior art.”  In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).  Reliance on per se rules of obviousness that eliminate the need for fact-specific analysis of claims and prior art is legally incorrect.  Id.  “Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”  In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).                 

MPEP § 2144.04 acknowledges legal precedent of common practices which courts have held to normally require only ordinary skill in the art.  Specifically, a “reversal of parts” is one of these practices.  However, as MPEP § 2144 III. states, “[t]he examiner must apply the law consistently to each application after considering all the relevant facts,” interestingly echoing the decision of the Board in Ex parte Brunson.