It is a difficult time for everyone, but especially so in the Western United States. The recent fires and smoke have impacted millions, including many here in Oregon. While we have had to deal with significant smoke, that is nothing compared to those having their homes ravaged by fire.

But patent prosecution continues on - deadlines must be met and rejections addressed, especially now at the end of the fiscal year for the USPTO when the number of Office actions issued surges.

One of the most common patent prosecution issues is that of obviousness. Obviousness, as compared to novelty, is a much more flexible issue - heavily influenced by the particular facts and circumstances of any given case. There is a huge range of how examiners treat obviousness. This range is born out by examiner statistical data available from a multitude of sources on the web. In many cases, unfortunately, the outcome-determinative factor as to whether an applicant will overcome obviousness before the examiner is which examiner is assigned to the case.

Nevertheless, even when a case is assigned to an examiner that essentially never allows an application due to obviousness, the applicant can appeal to the PTAB. Obviousness can be tricky; the applicant needs to have a clear case and identify a clear error in the rejection for success at the PTAB. That error might be a missing feature, or lack of motivation to combine, or many others.

Today, we discuss the obviousness issue that arises when there are ostensibly both reasons to make the combination and also reasons against the combination. For example, sometimes a proposed modification by an examiner allegedly achieves some benefit (faster, better, cheaper), but at the same time also causes some other detriment (slower, worse, more expensive). The courts have addressed this issue, such as in Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). This case confirms that one must weigh the benefits (usually articulated by the examiner as the reason to make the combination), against the detriments (usually articulated by the applicant as why not to make the combination).

A recent PTAB case illustrates this balancing act. The case (Appeal 2019-006830, Application 15/016,460 (there are actually two related appeals)) relates to an improved cat litter system. We’ve had two awesome cats, but dealing with a litter pan is pretty low on the list of cat-related things that I enjoy. This invention is aimed at that very non-pleasantry. Claim 1 is below, along with some figures of the invention:

1. A pet litter box cleaning system comprising, in combination:
(a) a base structure comprising a bottom wall including an interior area and an exterior area, one or more upraised walls along a perimeter of said interior area while leaving a portion of the perimeter free of the one or more upraised walls, wherein the exterior area of said bottom wall extends outward from said portion of the perimeter which is free of the one or more upraised walls;
(b) a sieve member comprising a horizontally planar sifting portion configured to fit in said interior area of said base structure through said portion of the perimeter free of the one or more upraised walls, a back wall extending upward from one end of the sifting portion, and a handle member extending upward of the sifting portion and the back wall; and
(c) a trash receptacle extending outward from one of said one or more upraised walls of said base structure.

The cited art relied upon a combination of the following two devices, (and then further modified with two other references). First, the litter pan of Hecht is cited, but of course it is missing the bottom wall of the base structure including an exterior area that extends outwardly of a perimeter defining an interior area of the base member, with a portion of the perimeter of the base member being free of any upraised wall(s) where the exterior area extends outwardly.

For this, the Office turns to van Zuilekom, which relates to an animal toilet pad with side walls.

The Examiner argued that it would have been obvious to modify the base structure of Hecht to have a portion of its perimeter free of upright walls, and to provide the bottom wall with an exterior area extending outwardly of the perimeter at that portion, “because doing so would have provided an easy to use solution for small animal waste that can be used to enhance, replace, or complement current products that are designed or used for small animal waste management.”

As an aside, this examiner allows virtually no applications (and this has nothing to do with Section 101). So the applicant was left to appeal.

Looking to the balance of what is to be gained by the combination, and what is to be lost, the applicant pointed out some specific defects (put those in the negative column). Namely, the applicant explained that the short front wall is required in Hecht in order to aid in the proper reinsertion of the sifting insert (corresponding to the sieve member in claim 1) at an angle relative to the base member. This is seen by Hecht’s FIG. 8 below.

It is quite clear from this that were the shortened front wall (or other walls) removed, as proposed by the Examiner, Hecht would no longer be suitable for its intended purpose of containing litter material since one couldn’t properly slide the insert into place. Hecht specifically explains that the height of that front wall needs to be properly selected so that the insert remains oriented at the right angle as it is slid in place. Undeterred, the examiner argued that one could simply slide it at an angle of zero - but of course this does not address the effect the proposed modification would have on the relative ease or difficulty for such an insertion. Taking away the front wall, as proposed by the examiner, thus causes some problems (negative column).

In the plus column, we must come back to why the examiner alleged the combination was obvious. It is not any benefit that might come, but rather the focus is controlled by the Office’s reason for making the combination. Here, the reason cited by the Examiner for removing the front wall of Hecht, and extending, from that wall-free portion of the perimeter, an exterior area of the bottom wall, is “an easy to use solution for small animal waste that can be used to enhance, replace, or complement current products that are designed or used for small animal waste management.” But of course we must remember that in van Zuilekom, its small animal toilet pads are disclosed as being a replacement for traditional litter boxes, or being positioned as a liner inside a conventional litter box. Thus, the cited “ease” has nothing to do with lacking a front vertical wall. As the PTAB notes:

van Zuilekom is devoid of any suggestion that any of the several constructions of the toilet pads disclosed therein would have any application to the construction of a litter box itself. The Examiner does not identify, and we are at a loss in identifying, what problem exists in the Hecht construction for which any of the van Zuilekom pad configurations provide the so-called “easy to use solution for small animal waste,” as recited in van Zuilekom and parroted by the Examiner in articulating the reason for the proposed modification. See Final Act. 3. …

It appears to be no more than happenstance that van Zuilekom might be viewed as disclosing structure that corresponds to only a part of the claimed structure, i.e., upright walls, partial absence of an upright wall, and a bottom wall bounded in part by the upright walls and extending outwardly from the portion unbounded by upright walls. van Zuilekom, Fig. 7. The upright walls are repeatedly and consistently described as being provided to protect building wall structure in a corner of a room, whereas the bottom wall appears to simply be of sufficient area that a small animal will fit thereon, so as to protect the floor as well. van Zuilekom, passim. These considerations do not appear to have any particular applicability to the construction of the Hecht litter box and cleaning device, and particularly not to the configuration and function of the upright walls and bottom wall of the Hecht base structure.

In the end, the plus column is a goose egg. Further, it is never a good sign when the PTAB charges someone with “parroting”. All rejections reversed.

While these facts also align with the idea that the examiner’s reasons for making a combination must be supported by evidence and logic, this case illustrates how the non-obviousness arguments can be presented in a way that highlights the error in the rejection in a convincing way for PTAB judges.