Addressing a decision of patentability by the U.S. Patent and Trademark Office (PTO) Patent Trial and Appeal Board (Board), the U.S. Court of Appeals for the Federal Circuit vacated the and remanded the case, finding that the Board failed to account for critical background information. Randall MFG. v. REA, Case No. 12-1611 (Fed. Cir., Oct. 30, 2013) (Taranto, J.).
This case arises out of an inter partes reexamination of a patent assigned to FG Products, Inc. The validity of the patent was challenged by Randall Manufacturing based on prior art including patents to Aquino and Gibbs and advertisements by ROM. During reexamination, the examiner determined certain new and amended claims are unpatentable for obviousness over a combination of prior art references including Aquino, Gibbs, and ROM.
The reexamined patent was directed to movable bulkheads for partitioning cargo space in a shipping container. The patent discloses the movable bulkheads that include two half-width panels independently mounted on the ceiling of the shipping container using rail-and-trolley assemblies, so that the panels can be strapped together to form a full-width partition that can be raised and stowed against the ceiling. In rejecting the claims, the examiner relied on ROM for disclosing half-width panels with straps for positioning and joining the panels together to form a full-width partition, Aquino for disclosing movable half-width panels mounted on the ceiling of a container using rail-and-trolley assemblies and Gibbs for disclosing a panel that can be lifted by means of a lift mechanism and stowed near the ceiling of a container. The examiner concluded that all of the elements of the rejected claims were well known at the time of the invention and it would have been obvious to one skilled in the art to combine the teachings of Aquino, Gibbs and ROM to arrive at the claimed invention. FG appealed to the Board.
At the Board, FG argued that the lift mechanism of Gibbs would be incompatible with Aquino, that the panels of Aquino could not be lifted to the ceiling of the container without colliding with the rails on which they were mounted and that Aquino taught away from ceiling stowage. Therefore, FG argued, the claims at issue are non-obvious. Randall argued that the state of the art and the level of skill at the time of the invention included well-known options for lifting movable, track-mounted bulkheads and stowing them against the ceiling, citing multiple references that had been considered by the examiner during the reexamination as evidence of the knowledge of one skilled in the art (background references). In its reversal of the examiner’s determination, the Board “narrowly focused” on Aquino, Gibbs and ROM references in particular, emphasizing the difficulty to modify Aquino to allow ceiling stowage. Randall appealed.
On appeal, the Federal Circuit reversed the Board’s determination of non-obviousness, noting that “[b]y narrowly focusing on the four prior-art references cited by the Examiner and ignoring the additional evidence Randall cited to demonstrate the knowledge and perspective of one of ordinary skill in the art, the Board failed to account for critical background information that could easily explain why an ordinarily skilled artisan would have been motivated to combine or modify the cited references to arrive at the claimed inventions.” The Court found the Board’s failure to consider the additional background evidence was prejudicial, because they “constitute important evidence of the state of the art and the context” in which the combination should be evaluated. In view of the additional background evidence, the Court found “the bulkhead design was nothing more than the ‘combination of familiar elements according to known methods,’ each performing the same function it had been known to perform,’ ‘yield[ing] predictable results.’” Thus, the Court vacated the Board’s decision and remanded the case.