BPAI's factual findings affirmed when based on more than a mere scintilla of evidence

In re Kahn (Fed. Cir. 2006, 04–1616).

Kahn’s voice synthesizer patent application was rejected by patent office as obvious over a group of four references. Kahn appealed:

Motivation to Combine: Most inventions involve “a combination of old elements” where each element is found somewhere in the prior art.  However, the combination can be patentable as a whole if the combination creates something new and nonobvious. When rejecting a patent application as obvious based on multiple prior art references, the PTO must articulate the motivations for selecting references and combining them together.  This has come to be known as the “motivation-suggestion-teaching” test.

[T]he "motivation-suggestion-teaching" test asks not merely what the references disclose, but whether a person of ordinary skill in the art, possessed with the understandings and knowledge reflected in the prior art, and motivated by the general problem facing the inventor, would have been led to make the combination recited in the claims.

Here, the CAFC found that the board had ‘substantial evidence’ to conclude that the asserted references could be combined because they were all directed to some form of word localization for the blind.

Although a reasonable person might reach the opposite conclusion, there is far more than a "mere scintilla" of evidence present from which a reasonable mind could find a motivation to combine.

Long-Felt but Unresolved Need: Kahn requested that the CAFC take ‘official notice’ of a long-felt but unresolved need for his invention as a way to overcome the obviousness rejection.  The court, however, refused because “precedent requires that the applicant submit actual evidence of long-felt need, as opposed to argument.”

Rejection affirmed.  

Comments

[HJB]

Looking back, it is clear that the Fed. Cir. in Kahn was providing justification for its M-T-S test in view of the impending cert in KSR. They take several pages to explain why the MST test exists and where it fits in with the Graham factors.

Hope SCOTUS adopts at least some of the M-T-S test. The Graham factors are more readily applied in a truely adveserial proceeding, such as litigation. It is hard for Examiners and prosecutors to establish what it "obvious" without a more bright-line rule. (Yes, MST is more bright line than Graham). When is the last time any Examiner actually determined the "level of ordinary skill in the art"? District Courts have a hard time determining that, even with expert testimony and discovery. If SCOTUS does drop the M-S-T test and affirm the Graham rules, expect to see way more appeals to the BPAI re: obviousness. It is not going to stop corporations from trying to protect as much IP as possible.