In a non-precedential decision, the U.S. Court of Appeals for the Federal Circuit reversed a decision by the U.S. Patent and Trademark Office’s Board of Patent Appeals and Interferences (Board) in an inter partes reexamination in which the Board had reversed the examiner and concluded that the claims in reexamination were patentable over the cited prior art. PlaSmart v. Kappos and Wang, Case No. 11-1570 (Fed. Cir., May 22, 2012) (Lourie, J.).
Patentee Wang alleged PlaSmart infringed its patent directed to safety equipment for a scooter, including an arm that extends from a twister member and a safety wheel mounted to the arm to prevent the scooter from flipping over. PlaSmart requested an inter partes reexamination of the patent based on two prior art references: a Chinese patent application to Song and Chinese patent publication to Handong.
Song disclosed an exercise tricycle for children, which included two universal stabilizing wheels mounted off the ground on the front of the tricycle. Song taught that such universal wheels provided additional stability in the direction of movement when in contact with the ground. Handong disclosed a scooter with a pair of front and rear driving wheels and included all the limitations of the representative claim except the recited safety driving equipment.
During inter partes reexamination, the examiner rejected the representative claim as being anticipated by Song and as being obvious over Handong in view of Song. PlaSmart appealed to the Board.
The Board reversed the examiner, finding that Song did not anticipate the claim. The Board also reversed the examiner on obviousness, concluding that although Song disclosed a reason for adding universal wheels to the scooter disclosed in Handong, because Song did not position the universal wheels in the same location as that claimed, the combination of Handong and Song did not render the claim obvious. PlaSmart appealed to the Federal Circuit.
In reviewing the Board’s factual findings for substantial evidence and the legal conclusion of obviousness de novo, the Court concluded that the Board’s reversal of the examiner’s rejection was based “only on minor distinctions” (i.e., placement of the safety wheels) between the prior art and the claimed invention. Based on the Board’s factual findings, and applying the law of obviousness under KSR, the Federal Circuit determined it would have been obvious to modify Handong’s scooter to include a safety wheel of Song positioned in the claimed location because such a modification is “nothing more than a predictable use of prior art element (universal wheels in contact with the ground in front of the twister member) to address a known problem (stability).”