Patent Practice Tip


This drawing comes from application n 14/595,771 handled by the Minneapolis law firm of Dicke, Billig & Czaja.  The owner of the application is a Minnesota company called Inspire Medical Systems.  According to the company’s website, they specialize in technology that helps people sleep more soundly.

The title of the ‘771 application is “Nerve Cuff.”  Element 501 in this Figure is probably a nerve of some sort.  Element 504 is probably a cuff of some sort.  Or something like that.  You get the idea.

This case caught our attention due to an interesting argument made by Attorney Paul Grunzweig in his appeal brief.  Independent claim 12 was rejected as being obvious in view of a proposed combination of references.  Mr. Grunzweig attached the proposed combination as being non-analogous and therefore not reasonably combinable.  In essence, he accused the examiner of doing exactly what the KSR case law says you cannot do, namely, supporting a conclusion of obviousness simply by demonstrating that each of element of the claim was, independently, known in the prior art.  Mr. Grunzweig further contends that the cited references are actually divergent in their teachings, and thus one of ordinary skill in the art would not arrive at the subject matter of the independent claim 12 absent improper hindsight reconstruction.

These issues went to the Board.  Not surprisingly, the Board wasted no time in concluding that the proposed combination of references were adequately analogous.  We rarely have seen the Board unwilling to quickly conclude that references come from the same field of endeavor and are reasonably pertinent to the problem the applicant is trying to solve.  This seems like a tough argument to win on appeal.

The Board did go on to say something that was perhaps more interesting.  Following is an excerpt from the Board’s decision:


The Board seems to be suggesting that Applicant failed by not pointing to specific sections of its own Specification in order to prove the examiner’s use of improper hindsight.  So there is the practice tip of the day.  It would seem that the Board is willing to consider citations of your own Specification as evidence of the Examiner’s state of mind.  To be fair, the Board did infer that the cited passages must teach something that is neither taught nor suggested by the prior art references themselves.  But that should not be a difficult bar to get over, should it?