Patent practitioners frequently encounter USPTO rejections during the prosecution of patent applications based on the idea that the "rearrangement of parts" is obvious. This rule, found in MPEP Section 2144.VI, is often referenced to suggest that merely rearranging parts found in the prior art is an obvious design choice and therefore unpatentable. However, the application of this doctrine is not as straightforward as it might seem, and a recent case at the Patent Trial and Appeal Board (PTAB) sheds light on its nuanced application.
MPEP 2144.VI(C) Rearrangement of Parts:
In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
The case is Appeal 2023-001092, Application 15/618,273. Chipotle, aiming to optimize their burrito-making process, sought patent protection for their make line optimization—an invention designed to speed up the creation of those beloved, mouth-watering burritos. Claim 1 on appeal is reproduced below:
A make line, comprising:
a plurality of sections positioned in a horizontal plane;
a heating surface comprising a plurality of heating stations in a first section of the plurality of sections;
a product preparation surface in a second section of the plurality of sections;
a plurality of product assembly stations at which a plurality of separate orders may be assembled simultaneously, the plurality of product assembly stations arranged in rows and columns on the product preparation surface and delimited by visible markings, the plurality of product assembly stations in the second section;
a plurality of ingredient containers next to and separate from the product preparation surface, the plurality of ingredient containers in a third section of the plurality of sections; and
a line level lighting system, comprising:
a plurality of ingredient lights in the third section, at least one ingredient light positioned adjacent each one of the plurality of ingredient containers;
a plurality of target lights in the second section, at least one target light positioned adjacent each one of the plurality of product assembly stations, wherein each of the target lights are fixed in position; and
a line level lighting system controller comprising an ingredient light interface, a target light interface, a first processor, and a first memory storing first instructions for execution by the first processor that, when executed by the first processor, cause the first processor to generate and transmit signals for selectively operating the plurality of ingredient lights and the plurality of target lights to simultaneously identify at least one ingredient container holding an ingredient for an order and at least one product assembly station at which the order is being assembled.
The examiner rejected the application based on prior art, and further relied on the idea that certain parts in the prior art could be rearranged to reach the missing claimed elements. Specifically, the Examiner provided rationale citing In re Harza and Japikse for duplication and rearrangement of parts to cure deficiencies in the cited references, applying the cases as providing per se rules without any fact specific analysis.
The PTAB disagreed and found that the examiner failed to establish two crucial aspects: (1) that the facts in Japikse were sufficiently similar to those of the case at hand, and (2) that the prior art provided a motivation for the rearrangement without using impermissible hindsight. Thus, simply citing MPEP 2144 did not automatically support a rejection based on rearrangement of parts. From the decision:
We do not read Japikse as establishing a per se rule of unpatentability that every rearrangement of parts involves only routine skill. Japikse involved the relocation of a starting switch. The facts of Japikse indicate that relocation of the starting switch would not otherwise modify the operation of the device Although we recognize that the structure of an individual component does not change when the component is moved to a different location (such as the switch in Japikse), on this record, the Examiner has not shown the claimed structural arrangement of components recited in claim 1 would have been obvious. The Examiner has not established in the record why an artisan of ordinary skill in the art, having knowledge of Assar and Yoshida (and with no prior knowledge of Appellant’s Specification and claims), would have been motivated to arrange the components found in the prior art in the manner required by claim 1.
For patent practitioners, this case illustrates some insights into how to attack an improper rejection relying on the mere rearrangement of parts. Practitioners can challenge whether the examiner has adequately demonstrated the similarity of facts between the case at hand and those in Kuhle or Japikse. Additionally, practitioners can question whether a valid motivation for the rearrangement has been established without hindsight bias. If successful on either front, the rejection is flawed and should be withdrawn.
After all, there’s a lot at stake—just as Chipotle sees a clear competitive advantage in maintaining exclusivity in their efficient burrito-making process, inventors need fair patent examination to protect their edge. Imagine the joy of biting into a perfectly crafted burrito, swiftly made thanks to an optimized make line. The speed and efficiency not only enhance customer satisfaction but also give Chipotle a significant operational advantage. By understanding and effectively navigating the intricacies of the rearrangement of parts doctrine, patent practitioners can ensure that such valuable innovations receive the protection they deserve.