During examination of a patent application, the examiner and patent applicant may disagree on various issues such as claim interpretation, patentable subject matter, written description, novelty, obviousness, etc. After the examiner has rejected the patent application twice, the patent applicant may appeal the matter to the Board of Patent Appeals and Interferences (“BPAI”).
The following case is a precedential decision by the BPAI on the issue of whether an invention is obvious. In Ex parte Jella 2008-1619 (Nov. 3, 2008 BPAI), the claims were directed to a three panel garage door with each panel being 28 inches in height. Typically, garage doors are 7 feet tall and have four panels with each panel being 21 inches. The Patent Office contends that the change is obvious in light of the decision by the United States Supreme Court in KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727 (2007), a seminal case in relation to obviousness.
In KSR, the Supreme Court noted that “when a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” In applying the holding of KSR to the case of Ex parte John F. Jella, the BPAI held that “changing a conventional seven foot high overhead garage door from a four panel section door to a three panel section door is nothing more than a predictable variation sparked by design incentives. The inventor acknowledged that market pressure existed to update the look of garage doors to spur additional sales in the industry. The inventor hoped that a new look to the door would result in increased sales.
If you are interested in other examples of obviousness, please read “what types of inventions are obvious?”.
You may also want to read my original KSR post “Supreme Court Broadens Obviousness”.
Should you have any further questions, please feel free to contact me.