Predictably Obvious Rejection – Ex parte Smith (BPAI).

Decide for yourself, but reviewing the history leading up to the BPAI decision in Ex parte Smith (6/25/2007) is reminiscent of either Frodo’s pilgrimage burdened with the Ring, or that of Sisyphus with the ball.  The Smith decision gets noticed because each post-KSR explication of §103(a) obviousness is newsy.
The application was filed in 1999, and after a number of rejections and amendments and rejections, a BPAI appeal sustains the final rejection in 2007.  Anyone with male insecurities typical of patent attorneys would be drawn to a story of perseverance in the face of multiple rejections.

Plainly in Smith, the “art to which the subject matter pertains” is familiar to any lawyer, with at least minimum-wage experience in replacing pocket parts in law books.  Here, Smith’s claimed improvement to bound volumes, on a functional level, dealt with CD’s or DVD’s which have replaced the tissue-sheeted pamphlets we once slipped into an integral pocket.  One wonders whether the hands that wrote KSR may too have erased “any new and useful improvement” from §101 patentable subject matter.  The examiner combined three references, which altogether arguably contained some form of each element claimed by Smith.  Sure, insert features in books are not new, but was Smith’s improved design obvious.

Perhaps the TSM test hobgoblined my simple mind; it was finite.  Since KSR, the word spew attempts to expound some workable test amuse me.  What could be less obviously provable than a “predictable variation” or what was not “uniquely challenging”?  For an improvement, is there still territory not yet surrendered (allusion to Festo) between §102 “inherency” and §103(a) obviousness?  The Board in Smith quotes from KSR, that §103(a) contemplates a “person of ordinary creativity” – forget PHOSITA, they need only be a POOC.  It should not be overlooked that KSR intends to seek out “an apparent reason to combine,” not one based on hindsight.

The Board’s recent ruling does acknowledge, as do all IP commentators, the primacy of the Graham v. Deere factors.  How deep is that vein?  Smith quotes two passages from KSR that, IMO, collide.  Obviousness rejections need “articulated reasoning with some rational underpinning,” but the Rejector “need not seek our precise teachings directed to specific subject matter of the challenged claim.”  Smith, pg. 14.  That sounds a bit like a ‘close enough for Gov’t work’ standard that need not be “precise” or get “specific”.  If “the analysis need not seek our precise teachings,” then IMO the first two Graham inquires are left incomplete.  The file wrapper of Smith’s application shows many disagreements about scope and content of the prior art, which reached the BPAI in reformulated form following amendments.  What approach has been suggested to reach a correct understanding about the content of the prior art, when there is disagreement.  If something is not shown or is unstated in the art, is it inherent?  If no artisan combined the known elements, is the combination “predictable,” creative, “obvious”?

The techtonic shift that erupted into KSR was urged by cries about “bad” patents and inadequate examiners.  The Smith file wrapper contains many, well-stated office actions, which put forth reasons for rejection and which counter contentions made with amendments by the applicant.   The examiner did an excellent job, and presumably, everyone involved did their job. 

Smith is not about a “bad” patent or “inadequate” examination.  It perhaps is about an innovator working to improve, and to create a better design, but in a crowded field of art.  If claims to an improved design for holding supplements in a book can be rejected based on the arguable obviousness of elements, suggested in, three separate patents – one issued in 1924 for “improvements to loose leaf sheets” using “stitching,” combined with two patents from fifty years later drawn to a file folder and a photo album, then why not a rejection on a combination of fifty patents, none of which specifically, precisely, or plainly identify all the elements, and each from a “field of endeavor” that is “different” from the claimed ‘predictable’ invention.