Attacking Individual References of an Obviousness Combination

In re: CSP Technologies (Fed. Cir., Jan. 21, 2021) is a nonprecedential opinion that nevertheless provides us with a good excuse to discuss In Re Keller, 642 F.2d 413 ( CCPA 1981) which is cited from time-to-time by Examiners during patent prosecution. 

This case is an appeal of an ex parte PTAB decision for US Patent Application No. 12/992,749.  The claim at issue is presented below and this post involves the italicized language in the penultimate claim.

  1. A moisture-tight, re-sealable container comprising:
  2. a body that is generally elliptical in cross-section having a generally tubular sidewall with first and second axially opposed ends, a base, and a dispensing opening axially spaced from the base and at least adjacent to the second end;
  3. an interior space disposed generally within the sidewall and at least generally between the base and the dispensing opening;
  4. the generally tubular sidewall having a generally elliptical cross-section having a major diameter and a minor diameter, wherein the ratio between the major diameter and the minor diameter of the sidewall cross-section is a value between 1.1 : 1 and 10 : 1, inclusive;
  5. a generally elliptical body sealing surface located on an exterior portion of the body and disposed about the dispensing opening, the body sealing surface having a major diameter and a minor diameter, wherein the ratio between the major diameter and the minor diameter of the body sealing surface is a value between 1.1 : 1 and 10 : 1, inclusive;
  6. a lid configured to seat on the body, the lid being linked to the body by a hinge;
  7. a lid sealing surface located on an interior portion of the lid, the lid comprising a lid sidewall extending from the lid sealing surface and terminating at a lid underside;
  8. the body sealing surface and the lid sealing surface being configured to mate to form a seal between the lid and the body when the lid is seated on the body; and
  9. the lid and lid sealing surface at least substantially closing the dispensing opening and isolating the interior space from ambient conditions, wherein the container is configured to store test strips such that exposed ends of the test strips extend beyond the entire dispensing opening of the body and wherein the exposed ends are positioned within the lid when the lid is seated on the body without damaging the exposed ends;

the container having a moisture ingress rate of 100-1000 micrograms per day, at 80% relative humidity and 22.2°C.

The Examiner rejected this claim as being obvious over the combination of US7,059,492 to Giraud, US2003/0133874 to Hagan, and US2,727,547 to Moon.  In summary, Giraud discloses most of the elements of claim 14 but does not disclose that “the container is configured to store test strips such that exposed ends of the test strips extend beyond the entire dispensing opening of the body and wherein the exposed ends are positioned within the lid when the lid is seated on the body without damaging the exposed ends.”  However, Hagan discloses this feature and the Examiner cited Hagan for the teaching that “such a configuration allows for easy manipulation of individual test strips.’ 

On appeal to the PTAB, CSP argued, among other things, that Hagan discourages the use of a hinge and thus the containers of Giraud and Hagan “would not have been predictably capable of being combined to achieve moisture tightness.” On this point, the PTAB upheld the rejection noting that the combination did not rely on the separable cap of Hagan nor was it “based on a bodily incorporation of” this feature of Hagan into Giraud. 

At the Federal Circuit, CSP argued, among other things, that the Board’s reason to modify Giraud in view of Hagan (i.e., to allow for easy manipulation of individual test strips) has no support in the evidence of record, and specifically there was no evidence of record that the problem Hagan was addressing exists in Giraud’s disclosure.  The Federal Circuit rejected this argument stating:

That Hagen rather than Giraud expressly acknowledges the problem in the art and the need for easier retrieval of test strips does not undermine the Board’s obviousness determination based on the combination of Giraud and Hagen.  A conclusion of obviousness “cannot be overcome ‘by attacking references individually where the rejection is based upon the teachings of a combination of references.’” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1050 (Fed. Cir. 2019) (quoting In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)); see In re Keller, 642 F.2d 413, 425 (CCPA 1981).

While this holding appears to be consistent with Keller and the later cases Bradium and Merck, this can be distinguished from the occasional improper reliance upon Keller by Examiners.  In particular, in the author’s experience, Examiner’s in mechanical/electrical hardware applications improperly cite Keller in response to the Applicant arguments that a claim element is missing in the combination of prior art references.  This is in contrast with the holding of Keller prohibiting the attack of individual references of a combination instead of the combination as a whole.  This is a meaningful distinction that can be argued to the Examiner, or perhaps with a higher likelihood of success, argued with the Board in an ex parte appeal.