In a nonprecedential opinion, PlaSmart, Inc. v. David J. Kappos et al., No. 2011-1570 (Fed. Cir. decided May 22, 2012), Judge Lourie writes for the CAFC in reversing the BPAI on two grounds : (1) an error in the BPAI’s reversal of the Examiner’s obviousness rejection of representative claim 1, and (2) an error in affirming the Examiner’s allowance of claims 20-33 as patentable. Of interest in this particular case—an appeal during inter partes reexamination—the CAFC reminds us “that drawings can be used as prior art, without referring to the surrounding description, only if the prior art features are clearly disclosed by the drawing.” Slip Op. at 8.
The CAFC refers to three of its predecessor court’s holdings in support of this reminder. See id. First, in In re Wagner, 63 F.2d 987, 986-87 (CCPA 1933): “While it is true that drawings may not always be relied upon for anticipation of a later application, it is also true that, if a drawing clearly suggests to one skilled in the art the way in which the result sought is accomplished by a later applicant, it is immaterial whether the prior patentee’s showing was accidental or intentional.” Second, in In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972): “[W]e did not mean that things patent drawings show clearly are to be disregarded.” And third, in In re Seid, 161 F.2d 299, 231 (CCPA 1947): “[A]n accidental disclosure, if clearly made in a drawing, is available as a reference.”
PlaSmart had argued “that each drawing in a prior art reference must always be viewed in isolation from the rest of a reference.” Slip Op. at 8. The CAFC disagreed, noting that in PlaSmart, the BPAI properly followed CCPA precedent. At issue on this specific point was a prior art reference figure, which the BPAI found could not be anticipatory because it did not clearly illustrate a particular feature of claim 1. According to the CAFC, the BPAI properly turned to the rest of the disclosure of the prior art reference to support its understanding that the figure did illustrate the particular feature. After reviewing the disclosure and figure of the prior art reference, the BPAI concluded that the prior art reference did not anticipate claim 1.
Nevertheless, the CAFC finds that claim 1 would have been obvious, applying a KSR analysis in view of the prior art reference and another reference to recognize a “common sense alternative design choice” and that modification of one of the references “is nothing more than a predictable use of prior art elements … to address a known problem….” Slip. Op. at 10.