U.S. COURT OF APPEALS FOR THE FEDERAL CIRCUIT. No PLASMART, INC., Appellant

Transcription

1 U.S. COURT OF APPEALS FOR THE FEDERAL CIRCUIT No PLASMART, INC., Appellant v. DAVID J. KAPPOS, DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE, Appellee and JAR CHEN WANG, Appellee and HONG JIUN GU, Appellee APPEAL FROM THE UNITED STATES PATENT AND TRADEMARK OFFICE, BOARD OF PATENT APPEALS AND INTERFERENCES PETITION FOR REHEARING EN BANC Eugene R. Quinn, Jr. Phone: Fax: ZIES WIDERMAN & MALEK, PL 1990 West Haven Ave., Suite 201 Melbourne, Florida Phone: Fax: Date: July 6, 2012 Attorney for the Appellee, Jar Chen Wang

2 UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT Plasmart v. Kappos No CERTIFICATE OF INTEREST Counsel for the Appellee, Jar Chen Wang certifies the following: 1. The full name of every party or amicus represented by me is: Jar Chen Wang 2. The name of the real party in interest (if the party names in the caption is not the real party in interest) represented by me is: Jar Chen Wang 3. All parent corporations and any publicly held companies that own 10 percent or more of the stock of the party or amicus curiae represented by me are: None 4. The names of all law firms and the partners or associates that appeared for the party or amicus now represented by me in the trial court or agency or are expected to appear in this court are: On this petition for rehearing: Eugene R. Quinn, Jr. (Zies Widerman & Malek, PL)! i!

3 Previously represented client: Christopher Raimund (Morris, Manning & Martin) Bryan Harrison (Morris, Manning & Martin) July 6, 2012 Signature of counsel Eugene R. Quinn, Jr. Printed name of counsel! ii!

4 TABLE OF CONTENTS CERTIFICATE OF INTEREST... i TABLE OF CONTENTS... iii TABLE OF AUTHORITIES... iv FEDERAL CIRCUIT RULE 35(b) STATEMENT OF COUNSEL... 1 STATEMENT OF THE CASE AND FACTS... 1 SUMMARY OF THE ARGUMENT... 3 ARGUMENT... 5 The original panel did not provide proper deference to the Board s finding of facts and instead merely substituted their own view, which was not explained with the required specificity under KSR. 5 The original panel s statements of fact relative to the claimed invention and prior art do not support the panel s rationale for finding claims 1 and were obvious. 8 An obviousness rejection pursuant to 35 U.S.C. 103 is not appropriate when all of the elements of the claimed invention are not found within the prior art CONCLUSION...15 CERTIFICATE OF SERVICE APPENDIX A PANEL DECISION IN PLASMART V. KAPPOS! iii!

5 TABLE OF AUTHORITIES! CASES Akzo N.V. v. U.S. Int l Trade Com., 808 F.2d 1471 (Fed. Cir. 1986). 8 Consol. Edison Co. v. NLRB, 305 U.S. 197 (1938). 6! In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000). 6 In re Hummer, 241 F.2d 742 (C.C.P.A. 1957).. 15! KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007) 1, 3-6, 8, Honeywell Int l, Inc. v. ITT Indus., 452 F.3d 1312 (Fed. Cir. 2006) 11 Nippon Steel Corp. v. United States, 458 F.3d 1345 (Fed. Cir. 2006) 6 Orthopedic Equip. Co. v. United States, 702 F.2d 1005 (Fed. Cir. 1983) 12 Ritchie v. Vast Resources, Inc., 563 F.3d 1334 (Fed. Cir. 2009) 12, 14 Tokai Corp. v. Easton Enterprises, 632 F.3d 1358 (Fed. Cir. 2011) 12, 14 STATUTES 35 U.S.C , 8 35 U.S.C. 102(b) U.S.C , 10, 13!! iv!

6 FEDERAL CIRCUIT RULE 35(b) STATEMENT OF COUNSEL Based on my professional judgment, I believe the panel decision in Plasmart, Inc. v. Kappos et al is contrary to the United States Supreme Court ruling in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007). Furthermore, based on my professional judgment, I believe the panel decision raises a precedent-setting question of exceptional importance. There is scant Federal Circuit authority to support an obviousness rejection when not all elements of a claimed invention are found within the prior art. The only two cases that can be located that support this rationale have never been cited by any other panel to support that proposition. This interpretation of KSR conflicts with the Supreme Court s ruling. Thus, this Court should specifically determine whether it is appropriate to find a patent claim obvious under 35 U.S.C. 103 when not all of the elements of the invention are found in any combination of the cited prior art? Eugene R. Quinn, Jr., Counsel for Appellee STATEMENT OF THE CASE AND FACTS This request for rehearing en banc arises out of what was originally an inter partes reexamination of U.S. Patent No. 6,722,674 (attached in Appendix B). During reexamination the examiner rejected claim 1 as being anticipated by! 1!

7 Figure 1 of Chinese Patent Application No to Song and obvious over Chinese Patent Publication No. CN D to Handong in view of Figure 1 of Song. The Examiner allowed claims 20-33, which were added during reexamination. On appeal the Board reversed the anticipation and obviousness rejections of claim 1 and affirmed the patentability of 20-33, explaining: The Board reversed the rejection of claim 1, holding that Song did not clearly disclose the supporting arm of claim 1... The Board also found that Song Figure 1, read in light of the disclosure in the written description, could not anticipate alone because no portion of the tricycle body base plate is an arm. The Board held that the combination of Song and Handong would result in a scooter with two safety wheels, raised off the ground, and attached to the base plate, necessarily lacking the supporting arm limitation required for claims 1 and See page 6 of panel decision (emphasis added). In the original appeal the issue was whether substantial evidence supported the Board s findings of fact and determination that claims 1 and were patentable. More specifically, the issues were: (1) whether the Board erred in determining that claim 1 of the 674 patent was not anticipated under 35 U.S.C. 102(b) by Song; and (2) whether the Board erred in determining that claims 1 and were patentable over Handong in view of Song. The original panel determined that claim 1 was not anticipated by Figure 1 of Song. The panel decision explains:! 2!

8 Song fails to teach each and every limitation. Claim 1 requires a supporting arm frontwardly extended from said driven portion of said twister member. As the Board noted, the arm in Figure 1 of Song is not attached to the twister member. Instead, the arm is attached to the base plate, and thus does not meet this limitation. See page 7 of panel decision. Yet, the original panel noted that it would still be obvious to combine Song and Handong to render the presented claims unpatentable. SUMMARY OF THE ARGUMENT The original panel erred in its ruling for three separate reasons. First, the obviousness rejection of claims made by the original panel were made for the first time. The patent examiner in reexamination found claims to be patentable, as did the Board. Therefore, the original panel instituted a new ground of rejection, but did so without even the most basic explanation, which violates KSR. Moreover, supplanting the factual findings of the agency should not be permitted with respect to an obviousness rejection made for the first time and where the patentee no longer has the ability to present evidence to demonstrate why the rejection is inappropriate. This is particularly true where, as here, the USPTO has gone to the great extent of holding an inter partes reexamination proceeding and full Board adjudication. Second, the original panel s own findings and statements support a contrary conclusion to the one reached. Based on the findings of the Board, as! 3!

9 well as the findings of the original panel, the Song reference lacked a critical limitation for purposes of patentability pursuant to 35 U.S.C Despite that, however, in its obviousness conclusion, the original panel indicates that one of skill in the art would merely attach the Song safety wheel As a practical matter, it would be impossible to merely attach the Song safety wheel to Handong to achieve the claimed invention because Handong does not disclose a supporting arm. Thus, the combination of Song and Handong, at the very least, fails to result in device with a supporting arm, which is specifically claimed. Further, the panel themselves found that the Song safety wheel was structurally different compared to the safety wheel of the presently claimed invention. Third, the original panel decision in Plasmart, Inc. v. Kappos et al is contrary to the United States Supreme Court ruling in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007). More specifically, the legal rationale underpinning the original panel decision was that the presently claimed invention was merely a combination of prior art elements according to known methods to yield predictable results. However, the original panel acknowledges that Song plus Handong could not, in and of itself, lead to the presently claimed invention. There are critical things missing. Indeed, the Board found that there are no fewer than three (3) meaningful structural differences. Therefore, it would seem that the closest obviousness rationale that could support the original panel s decision comes from this KSR quote:! 4!

10 KSR, at 417. 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. The Supreme Court indicated the above after reviewing their obviousness jurisprudence. Reading the full paragraph makes clear that the Supreme Court was leading up to summarizing what a court must ask, which is whether the combination is more than a predictable use of the prior art elements according to their established functions. KSR, at 417. This critical question cannot be left unanswered when determining whether a combination of references renders a claimed invention obvious. In the present case, there are prior art elements missing and the resulting claimed invention will function differently. As found by the Board and agreed to by the original panel, no combination of Song and Handong would produce the claimed invention. The claimed invention is structurally unique and operates differently than a combination of Song and Handong. Simply stated, there is nothing in the Supreme Court s KSR decision that authorizes, or even suggests, that an obviousness rejection is appropriate when less than all of the elements are found in the prior art. ARGUMENT 1. The original panel did not provide proper deference to the Board s finding of facts and instead merely substituted their own view, which was not explained with the required specificity under KSR.! 5!

11 A factual determination of the Board is to be upheld if there is substantial evidence to support it, In re Gartside, 203 F.3d 1305, 1315 (Fed. Cir. 2000), and a finding is supported by substantial evidence if reasonable minds might accept the evidence as supporting the factual finding. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). This has been translated by the Federal Circuit to mean is the determination unreasonable? Nippon Steel Corp. v. United States, 458 F.3d 1345, 1351 (Fed. Cir. 2006). The factual findings of the Board relative to the scope and content of the prior art namely Song were reasonable and supported by substantial evidence. In fact, the original panel does not explain why the Board s findings were unreasonable or not supported by substantial evidence. In fact, the original panel does not offer any explanation whatsoever, instead only giving conclusions without support or explanation. This violates KSR, which explains that mere conclusions of the sort relied upon by the original panel are not enough to support an obviousness rejection. KSR at 401 ( To facilitate review, this analysis should be made explicit. ) This rejection by the original panel is made for the first time. The patent examiner in reexamination found claims to be patentable, as did the Board, and yet there is no explanation as to what exactly was unreasonable on the part of the Patent Office. Thus, the original panel simply gave a new! 6!

12 ground of rejection without even the most basic explanation. This level of explanation would be insufficient if provided by a patent examiner, and would be insufficient if found in a decision of the Board. There is no way a reviewing court could dissect the original panel s thinking because so many basic questions are left unexplained, including: (1) Why would it have been common sense? (2) What facts suggest the presence of few alternative designs? (3) How can this be a predictable use of prior art elements when not all of the elements are found in the prior art? (4) What was unreasonable about the USPTO determination? Great deference is to be paid to the findings of fact of the Board to avoid merely supplanting a reasonable, rational and supported determination with one that is simply different without further explanation. The patent examiner concluded that claims were patentable and non-obvious, and the Board made the same determination based on specific factual findings. Supplanting the factual findings of the agency should not be permitted with respect to an obviousness rejection made for the first time, especially when the patentee no longer has the ability to present evidence to demonstrate why the rejection is inappropriate. This is particularly true where, as here, the USPTO has conducted an inter partes reexamination proceeding and full Board adjudication. Both the patent examiner and the Board determined the patentability of these claims in an! 7!

13 adversarial setting. It is inappropriate for the Federal Circuit to create a new ground of rejection at this late stage without at least giving the patentee a thorough and complete explanation, as required by KSR, or even an opportunity to respond to such new grounds of rejection. 2. The original panel s statements of fact relative to the claimed invention and prior art do not support the panel s rationale for finding claims 1 and were obvious. The original panel determined that the Song reference did not anticipate claim 1 because it did not teach each and every limitation of the claimed invention. Specifically, the original panel explained at page 8 of its decision: The Board found that Figure 1 of Song did not clearly disclose a safety wheel attached to an arm frontwardly extended from the driven part of the twisting member or how those wheels were attached to the tricycle. Under 102, for a claimed invention to be anticipated, each and every element of the claimed invention must be disclosed in a single prior art reference, and that reference must be enabling so as to place the allegedly disclosed matter in the possession of the public. Akzo N.V. v. U.S. International Trade Com., 808 F.2d 1471, 1479 (Fed. Cir. 1986). The original panel agreed with the Board that the Song reference lacks at least one critical limitation, but yet still concluded that one of skill in the art would merely attach the Song safety wheel From a practical matter it would be impossible to attach the! 8!

14 Song safety wheel to Handong to achieve the claimed invention. The original panel themselves found that the Song safety wheel was structurally different. Furthermore, the safety wheel of the 674 patent is referred to as a universal rolling wheel, which is very different from the two wheel structure envisioned and claimed by Song. The Song reference does mention universal wheels, but those wheels are of a wholly different type, structure and function as the wheels disclosed in the 674 patent, which unfortunately use the same terminology. For example, the Board decision at page 11 explains: Song discloses that the universal wheels 24 are at both sides of the lower part of the front of the tricycle body base plate Thus, the Board understood the universal wheels of Song as different than the single universal rolling wheel of the 674 patent. There is, unfortunately, no good illustration of the Song safety wheel that clearly shows the two wheel embodiment, which is further support that a mere combination of Song and Handong could not produce the claimed invention. Notwithstanding, it is still useful to compare Figure 1 of Song (see page 5 of original panel decision) with Figure 4 of the 674 patent (see page 3 of the original panel decision). Notice the 674 patent universal rolling wheel is mounted to the center of the supporting arm. No similar supporting arm or safety wheel is shown in Song.! 9!

15 In fact, the two wheel structure of Song is structurally and functionally different than the universal rolling wheel of the presently claimed invention. Thus, the determination that claim 1 was not anticipated remains appropriate. Nevertheless, the original panel concluded: [The claimed invention] is nothing more than a predictable use of prior art elements (universal wheels in contact with the ground in front of the twister member) to address a known problem (stability) The difficulty with this conclusion is that it is not supported by the original panel s own statements. No combination of Song and Handong would result in the claimed invention. Furthermore, the conclusion is based on a factually incorrect understanding of the claimed invention and the prior art, thus underscoring exactly why the Federal Circuit, as a reviewing Court, is supposed to give broad deference to the Board on matters of fact. 3. An obviousness rejection pursuant to 35 U.S.C. 103 is not appropriate when all of the elements of the claimed invention are not found within the prior art. The Board recognized no fewer than three (3) characteristics that differentiate the claimed invention from the combination of Song and Handong namely: (1) The presence of a supporting arm, which is specifically claimed in each of claims 1 and 20-33; (2) The presence of a single universal rolling safety wheel, rather than two side-by-side wheels separated by a base; and (3) The safety wheels of a resultant combination of Song and Handong would be! 10

16 raised off the ground, unlike what is depicted in the 674 patent and recited in the claims. The first two differences mentioned above have been discussed previously. The third difference relates to the Board s finding of fact that the Song safety wheels are about one centimeter higher than the ground. See Board Decision at page 8. The Board further found that when the tricycle moves horizontally, the safety wheels remain off the ground. Id. Only when the scooter engages a sharp turn do the safety wheels touch the ground. Id. As shown in Figure 5 of the 674 patent (see page 3 of original panel decision), the single, universal rolling wheel is shown as always in a plane such that it will be touching the ground during both horizontal and lateral movement. Given that no combination of Song and Handong could produce the claimed invention in the 674 patent, it becomes clear that the panel decision of the original panel is contrary the Supreme Court s ruling in KSR. The obviousness rationale of the panel decision was that the claimed invention of the 674 patent was merely a combination of prior art elements according to known methods to yield predictable results. However, based on the reasonable findings of fact made by the Board there are still components missing even after the combination of Song and Handong. The original panel never articulated why or how the Board s factual findings were unreasonable.! 11

17 Given that critical things were missing in the prior art that are specifically recited in the claim, or are necessarily present given the way the invention has been disclosed in the specification, Cf. Honeywell Int l, Inc. v. ITT Indus., 452 F.3d 1312, 1381 (Fed. Cir. 2006), the closest rationale that could support the original panel s decision is from KSR, where the Court noted: 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. KSR, at 417. The aforementioned rationale seems to have been used only twice in Federal Circuit decisions Tokai Corp. v. Easton Enterprises, 632 F.3d 1358 (Fed. Cir. 2011) and Ritchie v. Vast Resources, Inc., 563 F.3d 1334 (Fed. Cir. 2009). In Tokai, Judge Lourie, also the author of the instant panel decision, writing for a non-unanimous majority stated that a combination of elements is appropriate to render a claimed invention obvious even where some variation in the selection or arrangement of particular components is necessary. In dissent in Tokai, Judge Newman observed that the prior art elements if collected in total could not be assembled to result in the claimed invention absent first modifying one or more of the elements, as is the case here. She explained that this weighs against obviousness. Tokai at 1377; see also Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1023 (Fed. Cir. 1983). In Ritchie, the Court per Judge Posner (sitting by designation) specifically relied upon the aforementioned KSR quote, but did not use the entirety of the! 12

18 paragraph within which the quote is found, thereby taking the quote out of context. The entire paragraph in the Supreme Court decision reads: The principles underlying these cases are instructive when the question is whether a patent claiming the combination of elements of prior art is obvious. 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. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida and Andersoni s-black Rock are illustrative a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. KSR at 417 (emphasis added). After reviewing their own jurisprudence relating to obviousness the Supreme Court summarized what a court must ask, which is whether the combination is more than a predictable use of the prior art elements according to their established functions. This critical question cannot be left unanswered when attempting to apply the Supreme Court rule to variations. The critical question, according to the Supreme Court, is whether the claimed invention is a predictable arrangement of the prior art that results in the same manifest functionality. That is simply not the case here. In other words, any arrangement, predictable or not, of the cited prior art in this! 13

19 particular case still fails to result in the same manifest functionality. To be specific, any arrangement of the cited prior art reference yields a scooter that has safety wheels raised off the ground, lacks a supporting arm and employs two safety wheels rather than a single universal rolling wheel as shown in Figure 4 of the 674 patent. Thus, any resulting combination of Song and Handong is structurally and functionally different when compared to the presently claimed invention. Moreover, there is nothing in the Supreme Court s KSR decision that authorizes, or even suggests, that an obviousness rejection is appropriate when less than all of the elements are found in the prior art. The Tokai and Ritchie rationale seems to have never been cited by any other panels of the Court. While this may be due to many reasons, the fact that this reasoning could so easily invalidate virtually any claim in any patent, combined with the fact that it has only scarcely been utilized by the Court, suggests that this is an extraordinarily important issue for the Court as a whole to consider. As Judge Newman explained in dissent in Tokai, incremental but unobvious improvements serve the public interest, and are included in the purpose of the patent incentive. Tokai at If a reviewing Court or patent examiner can merely conclude that this element or that element would be obvious to modify and then obvious to combine once modified it would! 14

20 become virtually impossible to ever obtain patent protection on incremental improvements, which have been the lifeblood of innovation and patent practice. Cf. In re Hummer, 241 F.2d 742, 744 (C.C.P.A. 1957) ("Progress is as important, however, in crowded arts as well as in those which are in the pioneer stage"). Expanded to its logical extent the Tokai and Ritchie rationale would turn patent law upside down, thus this issue and this case are most appropriate for en banc rehearing. CONCLUSION For the foregoing reasons, the Appellee respectfully asks the Court to rehear this case en banc and reinstate the determination of the Board, thereby finding claims 1 and patentable. The Appellee also respectfully asks the Court to set a schedule for plenary re-briefing on these issues and to set the matter for oral argument in due course before the full Federal Circuit. Respectfully submitted Date: July 5, 2012 Eugene R. Quinn, Jr. gquinn@ipwatchdog.com Direct Phone: Direct Fax: ZIES WIDERMAN & MALEK 1990 West Haven Ave., Suite 201 Melbourne, Florida Attorney for the Appellee, Jar Chen Wang! 15

21 CERTIFICATE OF SERVICE THIS WILL CERTIFY THAT on July 6, 2012, the following were served with two copies of the foregoing via first-class mail and another copy via Counsel for the USPTO: Raymond T. Chen, Solicitor United States Patent and Trademark Office Mail Stop 8 P.O. Box 1450 Alexandria, VA (571) Ray.Chen@uspto.gov Counsel for the Appellant: Jeffrey Sonnabend Sonnabend Law 600 Prospect Avenue Brooklyn, New York (718) info@sonnabendlaw.com In addition, on July 6, 2012, an original and eighteen copies of this nonconfidential PETITION FOR REHEARING EN BANC were dispatched for hand delivery to the Clerk of the Federal Circuit. Date: July 6, 2012 Eugene R. Quinn, Jr. Counsel for Appellee, Jar Chen Wang

22 APPENDIX A Panel Decision in Plasmart v. Kappos

23 NOTE: This disposition is nonprecedential. United States Court of Appeals for the Federal Circuit (Reexamination No. 95/000,355) PLASMART, INC., Appellant, v. DAVID J. KAPPOS, DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE, Appellee, and JAR CHEN WANG AND HONG JIUN GU, Appellees Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences. Decided: May 22, 2012 JEFFREY SONNABEND, Sonnabend Law, of Brooklyn, New York, argued for appellant.

24 PLASMART v. KAPPOS 2 BRIAN T. RACILLA, Associate Solicitor, United States Patent & Trademark Office, of Alexandria, Virginia, argued for appellee David J. Kappos, Director, United States Patent and Trademark Office. With him on the brief were RAYMOND T. CHEN, Solicitor, and SCOTT C. WEIDENFELLER, Associate Solicitor. CHRISTOPER W. RAIMUND, Morris, Manning & Martin, LLP, of Washington, DC, argued for appellees Jar Chen Wang et al With him on the brief was BRYAN G. HARRISON, of Atlanta, Georgia. Before LOURIE, DYK, and MOORE, Circuit Judges. LOURIE, Circuit Judge. PlaSmart, Inc. ( PlaSmart ) appeals from the Board s allowance of claims 1 and of Wang and Gu s U.S. Patent 6,722,674 (the 674 patent ) during inter partes reexamination. Because the Board erred both in reversing the examiner s rejection of representative claim 1 as obvious and in affirming the examiner s allowance of claims as patentable, we reverse. BACKGROUND The 674 patent describes a safety improvement for a scooter, in particular a safety wheel added to help prevent the scooter from flipping over.

25 3 PLASMART v. KAPPOS 674 patent, Figs. 4, 5. The claimed safety equipment is a safety wheel (24) that is connected to the free end of a supporting arm (23) that extends frontwardly from a twister member (2) to which a pair of driving wheels (21 and 22) are also attached. 674 patent, col.3 ll Claim 1 reads as follows: 1. A scooter, comprising: a scooter body; a pair of rear wheels rotatably supported at a rear portion of said scooter body; a transmission unit having an upper control portion positioned above said scooter body and a lower connecting portion extended underneath said scooter body;

26 PLASMART v. KAPPOS 4 a steering means affixed to said control portion of said transmission unit for driving said connecting portion thereof to rotate in clockwise and anticlockwise directions; a twister member having a driven portion connected to said connecting portion of said transmission unit; a pair of driving wheels spacedly and rotatably mounted to said twister member wherein said two driving wheels are spaced apart from said driven portion of said twister member; and a safety driving equipment, comprising: a supporting arm frontwardly extended from said driven portion of said twister member; and a safety wheel which is rotatably mounted to a free end of said supporting arm to support a front portion of said scooter body and prevent said scooter from being flipped over. 674 patent, col.6 ll (emphases added). Claims 20 27, added during reexamination, depend directly or indirectly from claim 1. Claims 29 33, also added during reexamination, depend either directly or indirectly from newly added independent claim 28, which contains all the limitations recited in claim 1. The additional features of claims place the safety wheel in a center forward position of the driving wheels, a supporting arm integrally extended from the twister member at the driven position, and having the supporting arm and twister member swing right and left through the transmission unit. PlaSmart, in its request for inter partes reexamination, alleged that the 674 patent was anticipated and obvious in view of two prior art references: Song and Handong.

27 5 PLASMART v. KAPPOS Song, Chinese Patent Application , discloses a children s exercise tricycle. Song describes using two wheels (24), only one of which is visible in Figure 1, mounted off the ground that make contact during sharp turns to prevent tipping. Song, in its written description, discloses that the safety wheels are attached to the tricycle body base plate (4). Handong, Chinese Patent Publication CN D, discloses a scooter, similar to the 674 patent, having a pair of front and rear driving wheels, but without any supporting safety wheel. Song Handong

28 PLASMART v. KAPPOS 6 During reexamination, the Examiner rejected claim 1 of the 674 patent as anticipated by Song and obvious over Handong in view of Song. The Examiner found that Song discloses all the limitations of claim 1, including both a supporting arm frontwardly extended from said driven portion of said twister member and a safety wheel which is rotatably mounted to a free end of said supporting arm to support a front portion of said scooter body and prevent said scooter from being flipped over at issue in this appeal. In particular, the examiner found that the front end of the tricycle s base plate in Song meets the supporting arm limitation. The examiner then held claims to be patentable because the safety wheel in Song was not attached in the same position or manner as in claims and the claimed features have not been shown to be predictable variations of claim 1. The Board reversed the rejection of claim 1, holding that Song did not clearly disclose the supporting arm of claim 1, noting that while Song disclosed safety wheels attached to the tricycle base plate, it did not disclose the means of attachment. The Board also found that Song Figure 1, read in light of the disclosure in the written description, could not anticipate alone because no portion of the tricycle body base plate is an arm. The Board held that the combination of Song and Handong would result in a scooter with two safety wheels, raised off the ground, and attached to the base plate, necessarily lacking the supporting arm limitation required for claims 1 and PlaSmart appealed the Board s decision to this court. We have jurisdiction pursuant to 28 U.S.C. 1295(a)(4)(A).

29 7 PLASMART v. KAPPOS DISCUSSION I. The scope of our review in an appeal from a Board decision is limited. We review the Board s factual findings for substantial evidence and review the Board s legal conclusions de novo. In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000). A finding is supported by substantial evidence if a reasonable mind might accept the evidence to support the finding. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). PlaSmart argues that the Board erred in finding claim 1 not anticipated by Song Figure 1. In support of this argument, PlaSmart notes that Song Figure 1 must be viewed in isolation for all that it teaches, even if accidental, and that when viewed as such, Figure 1 discloses a frontwardly extending arm. PlaSmart also argues that claims 1 and were obvious in light of Handong and Song and faults the Board for failing to take a common sense view of the references. As an initial matter, we disagree with PlaSmart that Song anticipates claim 1. If each and every limitation is found either expressly or inherently in a single prior art reference, then a claim is invalid under 102 for anticipation. Sanofi Synthelabo v. Apotex, Inc., 470 F.3d 1368, 1375 (Fed. Cir. 2006) (quoting Celeritas Techs. Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Here, Song fails to teach each and every limitation. Claim 1 requires a supporting arm frontwardly extended from said driven portion of said twister member. As the Board noted, the arm in Figure 1 of Song is not attached to the twister member. Instead, the arm is attached to the base plate, and thus does not meet this limitation. Therefore, as Song does not disclose this limitation, it cannot anticipate claim 1.

30 PLASMART v. KAPPOS 8 We also reject PlaSmart s argument that each drawing in a prior art reference must always be viewed in isolation from the rest of a reference. Our precedent has held that drawings can be used as prior art, without referring to the surrounding description, only if the prior art features are clearly disclosed by the drawing. See, e.g., In re Wagner, 63 F.2d 987, (CCPA 1933) ( While it is true that drawings may not always be relied upon for anticipation of a later application, it is also true that, if a drawing clearly suggests to one skilled in the art the way in which the result sought is accomplished by a later applicant, it is immaterial whether the prior patentee s showing was accidental or intentional. ) (internal citations omitted); see also In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) ( [W]e did not mean that things patent drawings show clearly are to be disregarded. ); In re Seid, 161 F.2d 229, 231 (CCPA 1947) ( [A]n accidental disclosure, if clearly made in a drawing, is available as a reference. ). Here, the Board properly followed this precedent. The Board found that Figure 1 of Song did not clearly disclose a safety wheel attached to an arm frontwardly extended from the driven part of the twisting member or how those wheels were attached to the tricycle. Because of that ambiguity, the Board properly referred to the rest of the disclosure in determining that Figure 1 of Song describes safety wheels attached to the base plate, and thus cannot anticipate claim 1. We do, however, agree with PlaSmart and the examiner that claim 1 would have been obvious over Handong in view of Song. Under the Patent Act, [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

31 9 PLASMART v. KAPPOS matter pertains. 35 U.S.C. 103(a). Although the ultimate determination of obviousness under 103 is a question of law, it is based on several underlying factual findings, including (1) the scope and content of the prior art; (2) the level of ordinary skill in the pertinent art; (3) the differences between the claimed invention and the prior art; and (4) evidence of secondary factors, such as commercial success, long-felt need, and the failure of others. Graham v. John Deere Co., 383 U.S. 1, (1966). The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Int l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). In other words, when there exists a finite number of identified, predictable solutions to a known problem, a combination that results in anticipated success is likely the product not of innovation, but of ordinary skill and common sense. Id. at 421. That is the case here. The Board, in reversing the examiner s rejections, relied only on minor distinctions between the prior art and the claimed invention. Handong shows all the limitations of claim 1 of the 674 patent except the safety driving equipment, which is not disputed on appeal. The Board agreed with the examiner that Song discloses a reason for adding universal wheels (the safety driving equipment in Song) to Handong s scooter, but then held that because Song does not place those universal wheels in the exact location as the 674 patent, it cannot render claim 1 obvious. But such a distinction reads the teaching of Song too narrowly. Song discloses a safety feature, namely, using universal stabilizing wheels on the front of a scooter. Whether or not those wheels touch the ground all the time, the safety disclosure in Song is that an additional wheel placed in front of the twister member provides additional

32 PLASMART v. KAPPOS 10 stability in the direction of movement when in contact with the ground, which in the case of Song occurs in the direction of the turn. Modifying the Handong scooter to prevent tipping by placing such a safety wheel in front of the twister member would thus have been obvious for one with skill in the art trying to increase stability in the direction of movement. The decision to attach the Song safety wheel directly to the twister member instead of the body would have been a common sense alternative design choice and reasonably obvious to one of ordinary skill in designing a safety feature to prevent tipping of the Handong scooter. Such a modification is nothing more than a predictable use of prior art elements (universal wheels in contact with the ground in front of the twister member) to address a known problem (stability), and would thus have been obvious. See KSR, 550 U.S. at 417. We therefore reverse the Board s holding that claim 1 would not have been obvious over the prior art. Claims 20 33, added during reexamination and held to be patentable by the examiner, were each also held by the Board to be patentable over Handong in view of Song for the same reasons that the Board affirmed patentability of claim 1. Because claims add only minor, predictable variations to claim 1, we agree with PlaSmart that those claims would have been obvious as well. Accordingly, the Board s decision is reversed. REVERSED