BPAI Committed Prejudicial Error by Failing to Consider Highly Material Prior Art: Federal Circuit | Practical Law

BPAI Committed Prejudicial Error by Failing to Consider Highly Material Prior Art: Federal Circuit | Practical Law

In Randall Mfg. v. Rea, the US Court of Appeals for the Federal Circuit vacated the Board of Patent Appeals' (BPAI) reversal of the US Patent and Trademark Office's (USPTO) rejection of a number of patent claims as obvious, finding that the BPAI had failed to adequately consider prior art that was material to evaluating the level of ordinary skill and the motivation to modify the cited prior art references.

BPAI Committed Prejudicial Error by Failing to Consider Highly Material Prior Art: Federal Circuit

by Practical Law Intellectual Property & Technology
Published on 04 Nov 2013 • USA (National/Federal)
In Randall Mfg. v. Rea, the US Court of Appeals for the Federal Circuit vacated the Board of Patent Appeals' (BPAI) reversal of the US Patent and Trademark Office's (USPTO) rejection of a number of patent claims as obvious, finding that the BPAI had failed to adequately consider prior art that was material to evaluating the level of ordinary skill and the motivation to modify the cited prior art references.
On October 30, 2013, the US Court of Appeals for the Federal Circuit issued an opinion in Randall Mfg. v. Rea, vacating the Board of Patent Appeals and Interferences' (BPAI) reversal of the US Patent and Trademark Office's (USPTO) rejection of certain patent claims as obvious.
On December 4, 2007, Randall Manufacturing requested an inter partes reexamination of competitor FG Product's US Patent No. 7,217,017 ('017 patent), which is directed to moveable bulkheads for partitioning cargo space in a shipping container. When the USPTO Examiner rejected all of the 15 original claims of the '017 patent, FG amended or canceled the original claims and added 78 new ones. After three years of prosecution, the Examiner ultimately allowed many of FG's new or amended claims but rejected 26 other claims as obvious over a combination of four prior art references, concluding:
  • All of the elements of the rejected claims were well known at the time of FG's application.
  • Combining the elements would have been obvious to one of ordinary skill in the art.
FG appealed the rejection before the BPAI and argued that one of ordinary skill in the art would not have been motivated to combine the cited references because:
  • There were physical impediments to their combination.
  • Each reference taught different features that were seemingly incompatible.
Randall argued that the state of the art and the level of skill at the time of FG's application included well-known options for lifting moveable, track-mounted bulkheads and stowing them against the ceiling of a shipping container. Randall also pointed to several other references that were considered by the Examiner during the course of the reexamination, including:
  • Multiple references that disclosed track- and trailer- mounted bulkheads that could be raised to the ceiling.
  • References that taught strap and lift mechanisms to assist in stowage.
  • A declaration by a Randall employee who confirmed that a bulkhead designer would have recognized that panels could be raised and stowed near the ceiling of a container.
Despite Randall's arguments, the BPAI reversed the Examiner's rejection and limited its analysis to just the four prior art references cited in the Examiner's rejection. In particular, the BPAI found:
  • There was no motivation for one skilled in the art to modify the prior art references to allow for ceiling stowage because there was no need or intent for this feature.
  • Whether taken individually or together, the references did not disclose a means for mounting the bulkhead panels on the ceiling of a container.
On appeal, the Federal Circuit held that the BPAI should have applied a flexible analysis consistent with KSR Int'l Co. v. Teleflex Inc. Because the BPAI narrowly focused on the four references in the Examiner's rejection and ignored the additional evidence cited by Randall, it failed to account for background information that showed one of ordinary skill may have been motivated to combine or modify the references to arrive at the claimed invention. The court noted that under KSR, the BPAI should have considered the extensive references Randall presented that disclosed bulkheads designed to be lifted and stowed near the ceiling of a container, including three references that described stowage for moveable, track-mounted panels. When viewed in the context of these references, the court suggested that the claimed invention would have been obvious because it was simply a combination of familiar elements arranged according to known methods which each yielded predictable results. Accordingly, the court held that the BPAI committed prejudicial error in its obviousness analysis and remanded the case for further proceedings consistent with the opinion.
Court documents: