In Re: Conrad ( 2019 )


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  •        NOTE: This disposition is nonprecedential.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.
    ______________________
    Decided: March 22, 2019
    ______________________
    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.
    

Document Info

Docket Number: 18-1659

Filed Date: 3/22/2019

Precedential Status: Non-Precedential

Modified Date: 3/22/2019