Nonobviousness: Prior Art Already Solves the Alleged Problem

On July 1, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Allen reversing an Examiner’s obviousness rejection for failing to provide sufficient reason based on rational underpinning to combine the teachings of the prior art. See Decision on Appeal, Appeal No. 2018-008208, at 6 (P.T.A.B. Jul. 1, 2020) (non-precedential).

Allen represents a common scenario encountered during prosecution; namely, where an Examiner relies on a secondary reference to teach elements missing from the primary reference based on an illusory or non-existent problem in the primary reference.

The independent claim in Allen recited a method for introducing a cable into a conduit by attaching a pliant material to the cable with an adhesive and then introducing the cable/pliant material into the conduit, where the pliant material exhibited less friction than the cable. See id. at 2 (claim 5).

The Examiner rejected the claims over a combination that included Conti (US 5,027,864), which disclosed a method of introducing a cable into a conduit but lacked the pliant material attached to the cable with adhesive, and Holland (US 2002/0170728), which disclosed attaching a pliant material to a cable with an adhesive “to mak[e] a cable abrasion-resistant … when being moved or pulled.” Id. at 4 (emphasis added). According to the Examiner, it would have been obvious to modify Conti to include the pliant material and adhesive of Holland for the purpose of making the cable abrasion resistant.

The Appellant disagreed because Conti already recognized the friction problem when inserting the cable into the conduit and solved it by applying a lubricant to the cable. Nevertheless, the Examiner speculated that “in practice[,] lubricated systems are not always perfectly lubricated due to inhibited lubricant flow and/or improper maintenance of the fluid within the passage/channel” and, in that scenario, the skilled artisan would “look to supplemental means for protecting the cable within the tube/duct.” Id. at 6.

Rejecting the Examiner’s rationale, the Board highlighted Conti’s teaching that “[t]he presence of lubricant on the cable greatly reduces friction and thus the pulling force required to install the cable.” Id. at 4. Given Conti’s teaching to continuously feed the lubricant to reduce friction and the pulling force required to install the cable, the Board failed to see why it would have been obvious to combine Conti’s lubricated cable to include a pliant material from Holland’s unlubricated system or how such a combination would resolve the speculative problems alleged by the Examiner (i.e., to make Conti’s cables more friction resistant and/or further protect Conti’s cable within the conduit).

Takeaway: Examiners often formulate a problem in the primary reference that can be solved by a secondary reference, thereby providing the motivation for combining the references to arrive at the claimed invention. However, when the problem is already solved by the primary reference, there may be no motivation to combine the references, even when the Examiner resorts to allegations that secondary reference can “further improve” upon the primary reference (e.g., to make Conti’s cable more friction resistant). Allen provides a good illustration of this scenario and the importance of assessing problem/solution motivations to determine whether the alleged problem is illusory or non-existent.

Judges: C. Greenhut, A. Reimers, S. Mitchell