How Not to Use the "No Motivation" and "Teaching Away" Arguments When Responding to a 35 U.S.C. 103 Rejection
The photo on the right is the ceiling of my gym – my local Crossfit box in Miami. At least a couple of times a week, I collapse on the floor of that gym after completing a WOD, heart pounding, and try to catch my breath. I lay there waiting for my pulse to calm down, as I contemplate life, reality and why we are all here. To say I’ve spent days, cumulatively, looking at that ceiling, would be an understatement. I could close my eyes and tell you exactly where each pipe, crack, expansion joint and beam is located on that ceiling. It’s the simple product of looking at a static object over and over again, day after day, week after week. I feel much the same way about reading Patent Trial and Appeal Board (PTAB). Today’s Ex Parte Ochs decision is a perfect example of this.
The Ex Parte Ochs (Appeal No. 2013-007478) decision, which was handed down today, involved a software claim that read information from a sensor and produced some data output. The Patent Examiner performed a search and found different pieces of the claim distributed among two prior art references – Chin and Barreto. Thus, the Examiner issued a 35 U.S.C 103 obviousness rejection. As a patent attorney with a majority of his practice focusing on prosecuting software-related patent applications, this is the type of rejection that I see over and over again, all year long.
The Appellant tried to argue that there was no reason or motivation to combine Chin and Barreto. But the PTAB didn’t buy that argument. The PTAB decided:
“we find that the combination of Chin and Barreto involves nothing more than a simple substitution of well known, interrelated regression LS and LMS techniques to yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We agree with the Examiner that these teachings, all in the context of Appellant’s invention, are properly combinable).”
The Board went on to cite Federal Circuit law on the issue of “no motivation to combine” and “teaching away”:
“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The