In re Fulton, 391 F.3d 1195 (2004)
`73 U.S.P.Q.2d 1141
`
`KeyCite Yellow Flag - Negative Treatment
`Distinguished by
`Ex Parte St. Jude Medical, Atrial Fibrillation Div. Inc.,
`Bd.Pat.App. & Interf., March 21, 2011
`
`(cid:5)(cid:6)(cid:7)(cid:3)(cid:8)(cid:9)(cid:5)(cid:10)(cid:3)(cid:7)(cid:7)(cid:6)(cid:11)
`(cid:12)(cid:13)(cid:14)(cid:15)(cid:16)(cid:10)(cid:3)(cid:17)(cid:15)(cid:18)(cid:15)(cid:16)(cid:19)(cid:3)(cid:20)(cid:21)(cid:22)(cid:23)(cid:15)(cid:3)(cid:21)(cid:24)(cid:3)(cid:25)(cid:26)(cid:26)(cid:16)(cid:18)(cid:27)(cid:19)(cid:28)
`(cid:8)(cid:16)(cid:10)(cid:16)(cid:23)(cid:18)(cid:27)(cid:3)(cid:20)(cid:14)(cid:23)(cid:29)(cid:22)(cid:14)(cid:15)(cid:9)
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`(cid:30)(cid:13)(cid:3)(cid:23)(cid:16)(cid:3)(cid:31)(cid:18)(cid:13)(cid:14)(cid:16)(cid:27)(cid:3)(cid:17)(cid:9)(cid:3)(cid:8)(cid:12)(cid:32)(cid:33)(cid:34)(cid:35)(cid:3)(cid:18)(cid:13)(cid:10)(cid:3)(cid:36)(cid:18)(cid:37)(cid:16)(cid:19)(cid:3)(cid:38)(cid:22)(cid:18)(cid:13)(cid:39)
`
`(cid:35)(cid:21)(cid:9)(cid:3)(cid:40)(cid:41)(cid:42)(cid:7)(cid:43)(cid:44)(cid:45)(cid:9)
`(cid:46)
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`
`Synopsis
`Background: Inventors of shoe soles with increased traction
`appealed from decision of Board of Patent Appeals and
`Interferences, rejecting patent application on ground of
`obviousness.
`
`[Holding:] The Court of Appeals, Michel, Circuit Judge,
`held that evidence supported finding that prior art suggested
`desirability of combination of claimed limitations.
`
`Affirmed.
`
`West Headnotes (8)
`
`[1]
`
`[2]
`
`Patents
`Questions of law or fact
`Patent obviousness is question of law based
`on underlying findings of fact. 35 U.S.C.A. §
`103(a).
`
`1 Cases that cite this headnote
`
`Patents
`Scope of Review
`Factual findings by Board of Patent Appeals
`and Interferences are upheld on judicial review
`unless they are unsupported by substantial
`evidence. 28 U.S.C.A. § 1295(a)(4)(A).
`
`Cases that cite this headnote
`
`[3]
`
`[4]
`
`[5]
`
`Patents
`Combination of prior art references;
` “teaching, suggestion, or motivation” test
`When patent's alleged obviousness depends on
`combination of prior art references, there must
`be some teaching, suggestion, or motivation to
`combine references, i.e., prior art as a whole must
`suggest desirability of combination. 35 U.S.C.A.
`§ 103(a).
`
`23 Cases that cite this headnote
`
`Patents
`Combination of prior art references;
` “teaching, suggestion, or motivation” test
`Source of teaching, suggestion, or motivation
`to combine prior art references, for purpose of
`patent obviousness inquiry, may be nature of
`problem, teachings of pertinent references, or
`ordinary knowledge of those skilled in art. 35
`U.S.C.A. § 103(a).
`
`19 Cases that cite this headnote
`
`Patents
`Particular products or processes
`Evidence supported finding that prior art shoe
`sole patterns suggested desirability of combining
`layout and hexagonal stud limitations claimed
`in patent application, and
`thus
`that such
`combination was unpatentable as obvious; prior
`patent, which described same stud pattern as
`application but used differently shaped studs,
`also suggested possibility of using other shapes,
`and persons of skill in the art would have
`recognized that hexagonal studs known from
`other prior art were particularly well suited to
`prior patent's purposes. 35 U.S.C.A. § 103(a).
`
`5 Cases that cite this headnote
`
`[6]
`
`Patents
`Combination of prior art references;
` “teaching, suggestion, or motivation” test
`Particular combination of prior art limitations
`need not be the preferred, or most desirable,
`combination described in prior art in order for
`
` © 2016 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
`USAA 1037
`
`

`
`In re Fulton, 391 F.3d 1195 (2004)
`73 U.S.P.Q.2d 1141
`
`[7]
`
`[8]
`
`such art to provide motivation for combination,
`for purpose of determining whether combination
`is unpatentable as obvious. 35 U.S.C.A. § 103(a).
`
`6 Cases that cite this headnote
`
`Patents
`Teaching away from prior art reference
`Prior art's mere disclosure of more than one
`alternative does not constitute “teaching away”
`from any of those alternatives, for purpose
`of determining whether subsequent invention
`making use of yet another alternative
`is
`patentably nonobvious; rather, such teaching
`away will only be found where prior art
`affirmatively states
`that subsequently used
`alternative is undesirable. 35 U.S.C.A. § 103(a).
`
`19 Cases that cite this headnote
`
`Patents
`Design
`Patents
`In general; utility
`US Patent D263,645, US Patent D281,462. Cited
`as Prior Art.
`US Patent 3,793,750. Cited as Prior Art.
`
`8 Cases that cite this headnote
`
`Attorneys and Law Firms
`
`*1196 Garth E. Janke, Birdwell & Janke, of Portland,
`Oregon, for appellants.
`
`John M. Whealan, Solicitor, United States Patent and
`Trademark Office, of Arlington, Virginia, for the Director of
`the United States Patent and Trademark Office. With him on
`the brief were W. Asa Hutchinson III, Attorney–Advisor, and
`William LaMarca, Associate Solicitor.
`
`Before MICHEL, RADER, and GAJARSA, Circuit Judges.
`
`Opinion
`
`MICHEL, Circuit Judge.
`
`Appellants Daniel Fulton and James Huang appeal from the
`decision of the U.S. Patent and Trademark Office, Board of
`Patent Appeals and Interferences (“Board”), affirming the
`examiner's rejection of appellants' application for a utility
`patent on grounds that the invention claimed would have
`been obvious under 35 U.S.C. § 103(a). The appeal was
`submitted for decision without oral argument on November 5,
`2004. Because the Board's finding that the prior art suggested
`the desirability of the combination of shoe sole limitations
`claimed in appellants' patent application was supported by
`substantial evidence, we affirm.
`
`Background
`
`On July 24, 1997, appellants filed application number
`09/122,198 (the “ '198 application”) for a utility patent
`directed to a shoe sole with increased traction. Claim 1, the
`only independent claim at issue, reads:
`
`An improved shoe sole for increasing
`the resistance to slip on a contact
`surface,
`the
`sole comprising a
`bottom
`surface and defining a
`perimeter bounding a forefoot portion
`corresponding to the forefoot of the
`shoe and a heel portion corresponding
`to the heel of the shoe, *1197 wherein
`the sole extends generally along a
`fore-aft axis running from said heel
`portion to said forefoot portion, the
`sole further comprising a substantially
`regular tiling array of projections
`projecting from said bottom surface,
`said projections
`terminating
`in
`hexagonal shaped projected surfaces
`spaced from said bottom surface in a
`direction for making contact with the
`contact surface, said projections being
`oriented so that opposite edges of
`said projected surfaces face generally
`in the directions of said fore-aft
`axis, said projected surfaces being
`substantially flat and parallel to the
`bottom surface to maximize the area
`of contact with the contact surface,
`said projections being spaced from
`one another to define substantially
`continuous channels therebetween for
`
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`
`2
`
`

`
`In re Fulton, 391 F.3d 1195 (2004)
`73 U.S.P.Q.2d 1141
`
`conducting liquid, said channels being
`open over at least most of said
`perimeter, said forefoot portion and
`said heel portion of the sole.
`
`'198 application, at 7 (emphases added).
`
`Three limitations of this claim are at issue, namely the
`limitations that: (A) the perimeter of the shoe is mostly
`open, (B) the projected surfaces, also called studs, are
`hexagonal in shape, and (C) the hexagonal shapes be oriented
`so that opposite edges of the hexagon “face generally in
`the directions of said fore-aft axis.” Id. A figure from the
`'198 application is reproduced below, with non-substantive
`modifications for simplicity of presentation.
`
`Prior art related to the '198 application includes U.S.
`Patent No. 3,793,750 (“Bowerman”), U.S. Design Patent
`No. 281,462 (“Pope”), U.S. Design Patent No. 263,645
`(“Mastrantuone”), and United Kingdom Patent No. 513,375
`(“Davies”). Figures from these patents are reproduced below.
`
`As can be seen in the figures, the orientation of the projected
`surfaces in these figures is different. In this opinion, we will
`refer to the orientation in the '198 application, Bowerman, and
`Pope as a “facing” orientation because the front edge of each
`hexagonal projected surface faces forward and the orientation
`in Mastrantuone and Davies as a “pointing” orientation.
`
`*1198
`
`The examiner rejected the '198 application, inter alia,
`on obviousness grounds by considering Pope in light of
`Bowerman and Davies, and appellants appealed this rejection
`
`to the Board. In its decision, the Board reversed the examiner's
`ground for rejection, supplied an alternative ground for
`rejection, and remanded. After *1199 the Board entered its
`decision, appellants filed a request for rehearing. The panel
`
` © 2016 Thomson Reuters. No claim to original U.S. Government Works.
`
`3
`
`

`
`In re Fulton, 391 F.3d 1195 (2004)
`73 U.S.P.Q.2d 1141
`
`held this motion for rehearing in abeyance while the examiner
`considered the application on remand. After reopening
`prosecution, the examiner rejected the '198 application for
`reasons identical to those offered by the Board in its first
`decision.
`
`Appellants again appealed the examiner's rejection. In its
`decision, the Board “vacat[ed] the rejection of claim 1 set
`forth in the earlier decision in favor of the identical rejection
`later entered by the examiner.” Ex parte Fulton, No.2003–
`0536, slip op. at 4 (Bd. Pat.App. & Int. Sept. 11, 2003). The
`Board vacated the rejection in order to alleviate the confusion
`caused by the appellant in concurrently pursuing a request for
`a rehearing of the Board's first decision and a new appeal from
`the final rejection of the '198 application after remand. The
`Board credited the arguments in both actions. The Board then
`proceeded to affirm the rejection but under a different line of
`reasoning. The Board stated:
`
`In the present case, the combined
`teachings of Bowerman and Pope
`would have suggested the shoe sole
`recited in claim 1 to a person having
`ordinary skill in the art. As indicated
`above, Bowerman's shoe sole responds
`to all of
`the
`limitations
`in
`the
`claim except for those relating to the
`hexagonal shaped projected surfaces.
`While not specifically mentioning
`hexagonal shaped projected surfaces,
`Bowerman clearly
`suggests
`that
`cylindrical polygon shaped studs or
`projections other than those expressly
`described
`(square,
`rectangular or
`triangular) may be employed
`to
`provide sharp edges which bite into
`artificial turf for good traction. Pope
`establishes that shoe soles having
`studs embodying projected surfaces
`hexagonally shaped and oriented as
`recited in claim 1 are conventional.
`Given these disclosures, a person
`having ordinary skill in the art would
`have readily appreciated Pope's known
`hexagonal shaped projecting surfaces
`as being particularly well suited for
`implementing Bowerman's desire for
`projections having a plurality of sharp
`edges adapted to bite into artificial
`turf to obtain good traction. This
`
`appreciation would have furnished
`the artisan with ample suggestion or
`motivation to combine Bowerman and
`Pope in the manner proposed so as to
`arrive at the subject matter recited in
`claim 1.
`
`Id. at 6–7. After appellants' request for a rehearing was
`denied, they appealed to this court, which has jurisdiction
`under 28 U.S.C. § 1295(a)(4)(A).
`
`Discussion
`
`I.
`
`“A patent may not be obtained ... if the differences between
`the subject matter sought to be patented and the prior art
`are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103(a).
`
` [2]
`[1]
` Obviousness is a “question of law based on
`underlying findings of fact.” In re Gartside, 203 F.3d
`1305, 1316 (Fed.Cir.2000). The Board's factual findings are
`upheld unless they are unsupported by substantial evidence.
`Id. Substantial evidence is “such relevant evidence as a
`reasonable mind might accept as adequate to support a
`conclusion.” Consol. Edison Co. v. NLRB, 305 U.S. 197, 229–
`30, 59 S.Ct. 206, 83 L.Ed. 126 (1938). What the prior art
`teaches, whether it teaches away from the claimed invention,
`and whether it motivates a combination of teachings from
`different references are questions of *1200 fact. Id.; In
`re Berg, 320 F.3d 1310, 1312 (Fed.Cir.2003). Other factual
`findings related to obviousness may include “(1) the scope
`and content of the prior art; (2) the level of ordinary skill
`in the prior art; (3) the differences between the claimed
`invention and the prior art; and (4) objective evidence
`of nonobviousness.” In re Dembiczak, 175 F.3d 994, 998
`(Fed.Cir.1999), abrogated on other grounds in In re Gartside,
`203 F.3d 1305 (Fed.Cir.2000) (abrogating the holding in In
`re Dembiczak that the Board's findings of fact are reviewed
`for clear error); see also Graham v. John Deere Co., 383 U.S.
`1, 17–18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).
`
` [4]
`[3]
` “When a rejection depends on a combination of
`prior art references, there must be some teaching, suggestion,
`or motivation to combine the references.” In re Rouffet,
`
` © 2016 Thomson Reuters. No claim to original U.S. Government Works.
`
`4
`
`

`
`In re Fulton, 391 F.3d 1195 (2004)
`73 U.S.P.Q.2d 1141
`
`149 F.3d 1350, 1355 (Fed.Cir.1998). Stated another way,
`the prior art as a whole must “suggest the desirability”
`of the combination. In re Beattie, 974 F.2d 1309, 1311
`(Fed.Cir.1992) (internal quotation omitted); Winner Int'l
`Royalty Corp. v. Wang, 202 F.3d 1340 (Fed.Cir.2000)
`(“Trade-offs often concern what is feasible, not what is,
`on balance, desirable. Motivation to combine requires the
`latter.” (emphasis added)). The source of the teaching,
`suggestion, or motivation may be “the nature of the problem,”
`“the teachings of the pertinent references,” or “the ordinary
`knowledge of those skilled in the art.” In re Rouffet, 149 F.3d
`at 1355.
`
`II.
`
`[5]
` As quoted above, the Board found that the prior art as
`a whole suggested or motivated a combination of the open
`perimeter and orientation of Bowerman with the hexagonal
`surface and orientation of Pope. Appellants raise a number
`of arguments as to why this finding is not supported by
`substantial evidence.
`
`[6]
` Appellants first argue that the Board's finding of a
`motivation to combine lacks substantial evidence because the
`Board failed to demonstrate that the characteristics disclosed
`in Pope, hexagonal surfaces in a facing orientation, are
`preferred over other alternatives disclosed in the prior art.
`This argument fails because our case law does not require
`that a particular combination must be the preferred, or the
`most desirable, combination described in the prior art in
`order to provide motivation for the current invention. “[T]he
`question is whether there is something in the prior art as a
`whole to suggest the desirability, and thus the obviousness, of
`making the combination,” not whether there is something in
`the prior art as a whole to suggest that the combination is the
`most desirable combination available. See In re Beattie, 974
`F.2d at 1311 (internal quotation omitted; emphasis added).
`A case on point is In re Gurley, 27 F.3d 551, 552–53
`(Fed.Cir.1994), in which we upheld the Board's decision
`to reject, on obviousness grounds, the claims of a patent
`application directed to one of two alternative resins disclosed
`in a prior art reference, even though the reference described
`the resin claimed by Gurley as “inferior.” Far from requiring
`that a disclosed combination be preferred in the prior art in
`order to be motivating, this court has held that “[a] known
`or obvious composition does not become patentable simply
`because it has been described as somewhat inferior to some
`other product for the same use” and the reference “teaches
`
`that epoxy is usable and has been used for Gurley's purpose.”
`Id. Thus, a finding that the prior art as a whole suggests the
`desirability of a particular combination need not be supported
`by a finding that the prior art suggests that the combination
`claimed by the patent applicant is the preferred, or most
`desirable, combination.
`
`*1201 In this case, the Board found that “Bowerman clearly
`suggests that cylindrical polygon shaped studs or projections
`other than those expressly described (square, rectangular, or
`triangular) may be employed to provide sharp edges which
`bite into artificial turf for good traction.” Ex parte Fulton, slip
`op. at 6–7. Bowerman thus provides a motivation to combine
`its teachings with other prior art references that disclose
`cylindrical polygon shapes other than squares, triangles, and
`rectangles. The Board also found that Pope discloses a shoe
`sole with hexagonal surfaces, which is a cylindrical polygon-
`shaped surface, and a facing orientation. Finally, the Board
`found that no other prior art references taught away from the
`combination of Bowerman and Pope that it adopted. These
`secondary findings are sufficient to support a primary finding
`that the prior art as a whole suggests the desirability of the
`combination of Bowerman and Pope described by the Board.
`
`[7]
` Appellants disagree with the Board's finding that no
`prior art references taught away from the combination of
`Bowerman and Pope adopted by the Board. Appellants quote
`language from In re Gurley that “[a] reference may be said to
`teach away when a person of ordinary skill, upon reading the
`reference, would be discouraged from following the path set
`out in the reference, or would be led in a direction divergent
`from the path that was taken by the applicant.” 27 F.3d at
`553. Appellants argue that “the prior art disclosed alternatives
`to each of the claimed elements A [the perimeter], B [the
`shape of the surface], and C [the orientation of the surface].
`Choosing one alternative necessarily means rejecting the
`other, i.e., following a path that is ‘in a divergent direction
`from the path taken by the applicant.’ ” This interpretation
`of our case law fails. The prior art's mere disclosure of more
`than one alternative does not constitute a teaching away
`from any of these alternatives because such disclosure does
`not criticize, discredit, or otherwise discourage the solution
`claimed in the '198 application. Indeed, in the case cited by
`appellants, In re Gurley, we held that the invention claimed
`in the patent application was unpatentable based primarily
`on a prior art reference that disclosed two alternatives, one
`of which was the claimed alternative. Accordingly, mere
`disclosure of alternative designs does not teach away.
`
` © 2016 Thomson Reuters. No claim to original U.S. Government Works.
`
`5
`
`

`
`In re Fulton, 391 F.3d 1195 (2004)
`73 U.S.P.Q.2d 1141
`
`Here, the design patents in the prior art disclose a number
`of alternative shoe sole designs but do not teach that
`hexagonal projections in a facing orientation are undesirable
`and, therefore, do not teach away. Furthermore, Davies
`communicates in its specification that its claimed invention,
`which includes hexagonal surfaces in a pointing orientation,
`has “a non-skid characteristic effective in all directions
`relative to its use.” U.K. Patent No. 513,375 (accepted
`Oct. 11, 1939) at 2, II. 19–20. But Davies does not teach
`that hexagons in a facing orientation would be ineffective.
`Accordingly, we find unpersuasive appellants' arguments that
`the prior art teaches away from hexagonal surfaces in a facing
`orientation.
`
`Appellants next contend that the Board's finding lacks
`substantial evidence because it does not show a teaching
`in the prior art directed to the importance of aligning
`the cylindrical polygonal studs in a facing orientation. In
`their patent application, appellants assert that “[t]his general
`orientation [a facing orientation] of the surfaces 36 has
`been found optimal for slip resistance in the sole of a
`shoe, in which there is a predetermined, usual or ordinary
`direction of travel.” (Emphasis added.) Appellants' argument
`is unpersuasive from a legal standpoint because it again relies
`on the mistaken premise that the *1202 prior art must teach
`that a particular combination is preferred, or “optimal,” for the
`combination to be obvious. Furthermore, as we emphasized
`in In re Beattie, “[a]s long as some motivation or suggestion
`to combine the references is provided by the prior art taken
`as a whole, the law does not require that the references be
`combined for the reasons contemplated by the inventor.” 974
`F.2d at 1312. Accordingly, this argument is unpersuasive
`because the Board need not have found the combination of
`Bowerman and Pope to be desirable for the reason stated in
`the '198 application.
`
`This argument also fails on the facts of this case because
`the Board's findings are sufficiently broad to encompass
`appellants' idea of using a facing orientation because the
`predominant direction of travel is forward. The Board's
`finding that other cylindrical polygon shapes “may be
`employed to provide sharp edges which bite into artificial
`turf for good traction” suggests the importance of orientation
`because “bite” comes primarily from the front and back edges
`of the contact surface of a multi-sided stud being oriented
`so that the front edge faces the direction of travel and the
`back edge is directly opposite, as disclosed in Bowerman.
`See Bowerman, col. 2, II. 55–60, figs. 2, 4. Indeed, in a
`discussion of “bite,” Bowerman refers to Figures 2 and 4 of its
`
`specification, which depict a facing orientation. Id. Bite may
`also arise from the other edges of the contact surface, as well
`as edges formed by the intersection of the sides of the stud.
`
`The Board also found that “a person having ordinary
`skill in the art would have readily appreciated Pope's
`known hexagonal shaped projecting surfaces as being
`particularly well suited for implementing Bowerman's desire
`for projections having a plurality of sharp edges adapted to
`bite into artificial turf to obtain good traction.” Ex parte
`Fulton, slip op. at 6–7. Reasons why a hexagonal surface
`would be well-suited for obtaining good traction include the
`fact that the greater number of edges in a hexagon over
`a square provide bite in more directions. Further, although
`the Board's finding could perhaps have been clearer, it
`encompasses appellants' claim that a facing orientation is
`desirable because it provides bite in the forward direction.
`The Board's finding states that a person of ordinary skill of the
`art would have recognized that hexagonal surfaces as in Pope
`are “particularly well suited” to provide bite. Id. By referring
`to Pope, which has a facing orientation, rather than patents in
`the examination record that disclosed a pointing orientation,
`the Board's finding recognizes the importance of a facing
`orientation and, therefore, also the importance of providing
`“bite” in the forward direction.
`
`Appellants finally contend that the Board did not properly
`weigh the prior art as required by In re Young, 927 F.2d 588
`(Fed.Cir.1991), and did not provide sufficient reasoning for
`its rejection of these references as required by In re Lee, 277
`F.3d 1338 (Fed.Cir.2002). Although the Board's analysis is
`short, the Board's decision is not so lacking in comparative
`reasoning that it fails under In re Young or In re Lee. The
`Board clearly considered the prior art cited by appellants
`and provided a factual basis upon which we can affirm its
`decision.
`
`III.
`
`The Board sustained the examiner's rejection of the dependent
`claims of the '198 application because “appellants have not
`challenged such with any reasonable specificity, thereby
`allowing these claims to stand or fall with parent claim 1.”
`Ex parte Fulton, slip op. at 8. In its briefing before this
`court, appellants have also not raised *1203 any arguments
`related solely to the dependent claims. Accordingly, because
`we affirm the Board's decision as to claim 1 of the '198
`
` © 2016 Thomson Reuters. No claim to original U.S. Government Works.
`
`6
`
`

`
`In re Fulton, 391 F.3d 1195 (2004)
`73 U.S.P.Q.2d 1141
`
`application, we also affirm the Board's decision as to the
`dependent claims.
`
`of Pope. Because this finding was supported by substantial
`evidence, we affirm the Board's rejection of the claims of the
`'198 application.
`
`Conclusion
`
`In sum, the Board found that the prior art as a whole suggested
`or motivated a combination of the open perimeter of
`Bowerman with the hexagonal surface and facing orientation
`
`AFFIRMED
`
`All Citations
`
`391 F.3d 1195, 73 U.S.P.Q.2d 1141
`
`End of Document
`
`© 2016 Thomson Reuters. No claim to original U.S. Government Works.
`
` © 2016 Thomson Reuters. No claim to original U.S. Government Works.
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`7