NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: JOSEPH MICHAEL CONRAD, III, KURT
GANS BRISCOE,
Appellants
______________________
2018-1659
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 13/554,193.
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Decided: March 22, 2019
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MATTHEW JAMES DOWD, Dowd Scheffel PLLC, Wash-
ington, DC, argued for appellants. Also represented by
ROBERT JAMES SCHEFFEL; KURT GANS BRISCOE, Norris,
McLaughlin & Marcus, PA, New York, NY.
JOSEPH GERARD PICCOLO, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for appellee Andrei Iancu. Also represented by
THOMAS W. KRAUSE, BENJAMIN T. HICKMAN, JOSEPH
MATAL, PETER JOHN SAWERT.
______________________
Before MOORE, O’MALLEY, and CHEN, Circuit Judges.
Opinion for the court filed by MOORE, Circuit Judge.
2 IN RE: CONRAD
O’MALLEY, Circuit Judge, concurs in the result.
MOORE, Circuit Judge.
Appellants Joseph Michael Conrad III and Kurt G.
Brisco (collectively, “Conrad”) appeal from a decision of the
Patent Trial and Appeal Board affirming the examiner’s
rejection of claims 1–13 of U.S. Patent Application No.
13/554,193 (the “’193 application”). For the reasons dis-
cussed below, we affirm.
BACKGROUND
Conrad is the named inventor of the ’193 application.
The ’193 application is directed to a urine-deflecting device
with a plurality of attachment tabs that attach the device
to the underside of a toilet seat, and a bendable urine-de-
flector that blocks the opening between the toilet seat and
the toilet bowl. Figure 7 shows a cross-sectional side-view
of the urine-deflector attached to the underside of a toilet
seat.
The ’193 application includes thirteen pending claims.
The only independent claim, claim 1 is representative:
1. A potty training device comprising:
IN RE: CONRAD 3
a bendable urine-deflector;
a plurality of attachment tabs, wherein
said plurality of attachment tabs are in
contact with the top of said bendable urine-
deflector and are permanently positioned
substantially at right angles to the benda-
ble urine-deflector; and
a means for attaching said potty training
device to the underside of a toilet seat;
wherein the device lacks a folding seam be-
tween said bendable urine-deflector and
said plurality of attachment tabs; and
wherein said bendable urine-deflector can
be positioned in a curved configuration and
attached in said configuration via said
means for attaching to the underside of
said toilet seat to block an opening formed
between the toilet seat and a toilet bowl to
which said toilet seat is attached, and a
surface of said bendable urine-deflector
serves as a urine-deflecting surface to de-
flect a urine stream directed towards said
opening into the toilet bowl.
The examiner rejected the pending claims for obvious-
ness over U.S. Pub. No. 2007/0151009 (the “’009 publica-
tion”) and U.S. Pub. No. 2007/0056086 (“Raviendran”).
Conrad was also the named inventor of the ’009 publica-
tion, filed before the instant ’193 application. The ’009 pub-
lication, filed by Conrad in 2007, discloses a nearly
identical urine-deflecting device to the one in the ’193 ap-
plication. The examiner found that the ’009 publication
discloses a bendable urine-deflector satisfying all limita-
tions of the pending claims except that the urine-deflector
in the ’009 publication did not have attachment tabs that
are permanently positioned substantially at right angles
and did not have a folding seam. The examiner found that
4 IN RE: CONRAD
Raviendran discloses a urine-deflector that is integrally
formed at a right angle with no folding seam. The exam-
iner rejected all the claims of the ’193 application as obvi-
ous over the ’009 publication in view of Raviendran because
a person of ordinary skill in the art would have combined
the urine-deflector of the ’009 publication with the seam-
less structure in Raviendran to “improve the structur[al]
integrity and strength of the connection between the urine
deflector and attachment tabs.” J.A. 92.
Conrad appealed to the Board, arguing that the ’193
application solved an unknown problem. He argued the
urine-deflector of the ’009 publication included a folding
seam, which created a shelf when installed where urine col-
lected, creating a bad smell. He argued that the urine-col-
lection problem was unknown until he identified and
solved it by designing a urine-deflector that has no folding
seam. Without addressing the examiner’s structural moti-
vation to combine, Conrad argued that the Board should
reverse the examiner’s rejections because the examiner did
not consider the unknown urine-collection problem.
The Board affirmed the examiner’s rejection. Conrad
appealed. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
We review the Board’s factual determinations for sub-
stantial evidence and its legal determinations de novo. In
re Van Os,
844 F.3d 1359, 1360 (Fed. Cir. 2017) (citing
Belden Inc. v. Berk–Tek LLC,
805 F.3d 1064, 1073 (Fed.
Cir. 2015)). Obviousness is a question of law based on sub-
sidiary fact findings.
Id.
Conrad’s primary argument on appeal is a legal argu-
ment related to the test for obviousness. He argues that
despite having found a motivation to combine the ’009 pub-
lication and Raviendran, the Board erred as a matter of law
in not considering all possible motivations to combine. The
IN RE: CONRAD 5
’193 application describes a discovery of an unknown prob-
lem associated with the folding seam in the urine-deflector
disclosed in the ’009 publication. The folding seam created
a shelf that collected urine, which over time became malo-
dorous. Accordingly, the ’193 application aimed to solve
that problem by removing the folding seam. Conrad argues
Eibel Process Co. v. Minnesota & Ontario Paper Co.,
261
U.S. 45 (1923), and In re Sponnoble,
405 F.2d 578 (CCPA
1969), require the Board to consider an inventor’s alleged
recognition (and solution) of an unknown problem in its de-
termination of obviousness even if there is an alternate mo-
tivation to combine prior art references that is not in any
way factually undermined by the inventor’s being the first
to recognize or solve an additional problem with the prior
art. 1
At oral argument, the government at times appeared
to agree with Conrad’s legal contention. Oral Arg. at
19:24–30 (“. . . we agree with his legal propositions that
such evidence should be considered . . .”); see also Oral Arg.
at 23:07–31 (Judge: “. . . [does the law] require the Board
to consider both, the articulation of a problem and consider
1 At oral argument, Conrad argued that evidence of
the unknown urine-collection problem was countervailing
evidence to the structural motivation to combine the ’009
publication and Raviendran set forth by the examiner.
Oral Arg. at 12:42–45. It was not. Conrad’s motivation to
create a seamless urine-deflector to solve the urine-collec-
tion problem does not contradict the examiner’s proposed
structural motivation to combine references to achieve the
same urine-deflector design; it is therefore not countervail-
ing evidence. Conrad also argued that the examiner’s
structural motivation to combine was insufficient, but he
did not raise that argument in front of the Board. Oral Arg.
at 2:10–25, 9:38–10:20. His failure to do so waived his abil-
ity to raise it on appeal.
6 IN RE: CONRAD
that as negative evidence of a motivation to combine along-
side the articulation of the solution to a separate problem,
which would be positive evidence, and they have to some-
how weigh those two against each other? A: Yes, your
honor. . .”); Oral Arg. 19:57–20:06 (“what the Board and ex-
aminer did was spot on because it considered both the prior
art and his little evidence of a problem”); Oral Arg. at
27:57–28:19 (“[a]ssuming it wasn’t considered by the
Board, then it was harmless error because of the strong
prima facie case”). Elsewhere at oral argument, the gov-
ernment seemed to recognize that the Board had no legal
obligation to consider the additional, independent problem
recognition, stating that “you don’t need the same reason
to combine a reference,”
id., and that, by considering the
urine-collection problem “the Board did extra.” Oral Arg.
21:48–50, see also 22:02–06 (“. . .the Board took the extra
step to shore up the case totally. . .”).
If we agreed that the law of obviousness required that
the inventor’s particular motivation be considered irrespec-
tive of other independent, sufficient motivations a skilled
artisan would have to make the claimed combination, then
a remand would be warranted in this case. The Supreme
Court and this court, however, have repeatedly held that
the motivation that a person of ordinary skill in the art
would have had to combine prior art references need not be
the same motivation that inspired the patent owner. KSR
Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 420 (2007) (“[A]ny
need or problem known in the field of endeavor at the time
of invention and addressed by the patent can provide a rea-
son for combining the elements in the manner claimed.”);
In re Kahn,
441 F.3d 977, 989 (Fed. Cir. 2006) (“[T]he
skilled artisan need not be motivated to combine [a prior
art reference] for the same reason contemplated by the [in-
ventor]”); In re Beattie,
974 F.2d 1309, 1312 (Fed. Cir. 1992)
(“As long as some motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the
law does not required that the references be combined for
IN RE: CONRAD 7
the reasons contemplated by the inventor.”); In re Kronig,
539 F.2d 1300, 1304 (CCPA 1976). “[T]he problem motivat-
ing the patentee may be only one of many addressed by the
patent’s subject matter.”
KSR, 550 U.S. at 420.
Here, the examiner determined that a person of ordi-
nary skill in the art would have combined the ’009 publica-
tion with the seamless configuration of Raviendran to
improve the structural integrity and strength of connection
between the urine-deflector and the attachment tabs. The
Board affirmed the examiner’s determination and found
that the urine-deflector resulting from the combination of
the ’009 publication and Raviendran would solve the urine-
collection problem even though the separate motivation to
combine the references was structural. Given that Conrad
never challenged the structural-based motivation to com-
bine the ’009 publication with Raviendran below, the Board
did not err. If there is one clear, unchallenged motivation
to combine as in this case, the Board need not separately
consider the inventor’s particular motivation. We find no
legal error in the Board’s decision to rely on a motivation
to combine other than the one which solved the problem
identified by Conrad.
Eibel Process and Sponnoble both stand for the propo-
sition that the discovery of an unknown problem can result
in a patentable invention, even if the solution would have
been obvious once the problem is identified. Eibel
Process,
261 U.S. at 67–68;
Sponnoble, 405 F.3d at 585. They did
not address whether the Board must consider the discovery
of an unknown problem when there exists an independent
motivation to combine prior art references. Instead, those
cases found that the inventor’s discovery of and solution to
an unknown problem weighed in favor of non-obviousness
because the proffered reason to modify the prior art did not
present a specific, alternate basis that was unrelated to the
rationale behind the inventor’s reasons for making the in-
vention. Here, the examiner and the Board determined
that a person of ordinary skill in the art would combine the
8 IN RE: CONRAD
’009 publication with Raviendran for a reason independent
from solving the problem identified by Conrad—to improve
structural integrity by removing the folding seam. And
this motivation to combine was not challenged by the pa-
tentee before the Board.
CONCLUSION
For the foregoing reasons, we affirm the Board’s deter-
mination that claims 1–13 of the ’193 application are un-
patentable.
AFFIRMED
COSTS
No Costs.
