Rejection of Patent Claims on Obviousness Grounds: The USPTO Always Has the Burden of Establishing a Prima Facia Case of Obviousness

The recent January 13, 2014 opinion by the U.S. Court of Appeals for the Federal Circuit in In Re Raymond Giannelli drives home the point that the burden of establishing a prima facia case of obviousness rests with he USPTO.  Conclusory statements about obviousness will generally be insufficient to establish obviousness.  Furthermore, a detailed, well-written description may well play a key role in allowing the applicant to overcome an obviousness rejection. 

                All page references in the following discussion are for the slip opinion.

                The patent application at issue (no. 10/378,261) (“the ’261 application”) in the Giannelli matter was for a rowing machine.  Initially the examiner rejected all 25 claims, finding them to be anticipated by previously issued patent number 5,997,447 (“the ’447 patent”) entitled “Chest Press Apparatus for Exercising Regions of the Upper Body.” 

               Giannelli amended the claims to add the following limitation” “by a pulling force exerted by a user on the first handle portion in a rowing motion” to try and overcome the rejection.  This time the examiner rejected the application under both anticipation and obviousness grounds and the rejection was made final.   

               Giannelli appealed to the Patent & Trial Appeal Board (“TTAB”) which sided with the examiner.  The Board’s grounds for rejection were based on an obviousness rejection; it did not decide the anticipation issue.  Giannelli at 6.  The TTAB’s opinion is instructive in understanding why the Court of Appeals subsequently reversed the Board’s decision.  In reaching its decision, the Board had characterized the dispositive issue as being whether the chest press machine of the ’447 patent was “ ‘capable of being used by exerting a pulling force on the handles in a rowing motion.’ ”  Our emphasis.  As such, Giannelli’s application simply recited the new intended use (i.e., rowing) for the ’447 patent chest press apparatus, thereby rendering Giannelli’s invention ineligible for patent protection.   Moreover, the TTAB further opined that “even though using the ’447 patent’s invention as a rowing machine “ ‘may not fully achieve the purpose of the ’447 apparatus,’ ” Giannelli had not shown that the chest press apparatus could not be used in such a manner.  

                Upon Giannelli’s appeal to the Federal Circuit, the USPTO contended that “Giannelli did not provide any persuasive argument or evidence to show that the chest press machine described in the ’447 patent could not be used to perform the rowing exercise.”  Giannelli at 6.   Our emphasis.    Giannelli argued that the TTAB incorrectly asserted that the chest press machine disclosed in the ’447 patent could be used as a rowing machine rather than considering how it actually could be used.   Giannelli at 6.

                In siding with Giannelli, the Court emphasized that the USPTO bears the initial burden of showing a prima facia case of obviousness.  Only when the USPTO establishes a prima facia case of obviousness does the burden shift to the applicant to provide evidence and/or argument supporting patentability.  Giannelli at 7.

                The Court’s analysis is a reminder just how important a written description can be in understanding the meaning of words used within a claim to either defeat that claim or to find that the claim is acceptable.  For example, the claims of the ’261 application required a “first handle portion adapted to be moved position to a second position by a pulling force . . .in a rowing motion.”  Giannelli at 7.  The examiner had interpreted the phrase ‘adapted to’ to mean “capable of.”  The Court noted, however, that in its jurisprudence it had found that the phrase “adapted to’ is frequently used to mean ‘made to,’ ‘designed to,” or ‘configured to.’  Giannelli at 7 citing Apex Eyewear, Inc. v. Marchon Eyewear, Inc. 672 F.3d 1335, 1349 (Fed. Cir. 2012).   Id.

                In reviewing the written description, the Giannelli Court found that the claimed invention is “designed or constructed to be used as a rowing machine whereby a pulling force is exerted on the handles.”  That is, the written description clearly provided support for the narrower meaning of the phrase  ‘adapted to.’   Therefore, what the Board should have determined was whether the apparatus  described in the ’447 patent was ‘made to,’ ‘designed to,’ or ‘configured to,’ to allow the user to perform a rowing exercise by pulling on the handles as claimed in the application.  In particular, the “location of the handles relative to the other components is one of their structural attributes that enables performance of a rowing motion against the machine’s selected resistance.”  Giannelli at 8.

              Relying on the ’447 patent’s own written description, the Court further emphasized that the ’447 patent “does not have handles that are adapted to be pulled in a rowing motion.”   The TTAB’s opinion had stated that the applicant was using the ’447 as a rowing machine with a new intended use.  In reaching its decision, the TTAB had “deemed it reasonable that a user could face the handles of the prior art chest press machine and exert a pulling force on its handles in a rowing motion.”  Giannelli at 5.  

              Yet, the written description for the ’447 patent described the chest press’s structure as allowing a very specific movement to both provide outward pushing motion while maintaining proper biomechanical alignment of the user’s joints.  It is the position of the machine and handles that allowed the user to maintain proper alignment of the joints, including the wrists according to the ’447 patent’s written description.   Giannelli at 8.

               The Court found the Board’s position untenable because “[i]n the context of the claimed rowing machine, the mere capability of pulling on handles is not the inquiry the Board should have made.”  The proper analysis was whether it would have been obvious to modify the prior art apparatus described in the ’447 patent to contain handles “adapted” to perform the rowing motion by pulling on them.  Giannelli at 8.   As such, the examiner had failed to met his initial burden of establishing a case of prima facia obviousness.

              The Court’s decision further included some “common sense” comments about the difference between a rowing machine type of exercise equipment as described in the the ’261 application versus a chest press piece of equipment as described in the ’447.  As the court said, “a chest press machine is not a rowing machine, nor has evidence been shown that it is.”  As the Court succinctly stated, “[p]hysical capability alone does not render obvious that which is contradicted . . .[A]nyone who has used exercise equipment machines knows that a sure-fire way to cause injury is to use a machine in a manner not intended by the manufacturer.”   Giannelli at 9. 

                In closing, it is important to emphasize that the examiner’s rejection contained no explanation why or how a person having ordinary skill in the art would modify a bench press to arrive at the apparatus described in the application.   The Court’s opinion is instructive because it emphasizes that conclusory statements about obviousness without more do not meet the USPTO’s initial burden of establishing a case of prima facia obviousness.  Saying something is so does not make it so.  

                Perhaps even more importantly, the opinion emphasizes the important role that the written description can play in overcoming a rejection of the claims.   Here the applicant prevailed because the patent application’s written description allowed the Court to establish the “true” meaning of the phrase ‘adapted to’ in the context of the rowing machine’s handle structure for use in performing a rowing motion against a selected resistance.  

                We note that the Court decision was based on pre-AIA § 103(a) since the application had been filed before March 16, 2013.   Although the AIA (America Invents Act) has changed the timing of the obviousness determination from “the subject matter as a whole that would have been obvious at the time the invention was made to a person having a ordinary skill” to the “obvious at the time the application was filed,” the USPTO still has the burden of proving a prima facia case for obviousness under the AIA for all applications filed since March 16, 2013.

THE FOREGOING IS NOT LEGAL ADVICE NOR SHOULD YOU CONSIDER IT IS SUCH.  IT IS FOR INFORMATIONAL PURPOSES ONLY.   IF YOU ARE CONTEMPLATING AN ACTION THAT HAS POTENTIAL LEGAL  CONSEQUENCES, YOU SHOULD CONSIDER CONSULTING WITH AN ATTORNEY OF YOUR CHOOSING.