Obviousness – Don’t Get Tricked
Halloween candy containers have come a long way since I was a kid. Back then, we would use a plastic bag or a pillowcase to hold our trick-or-treating loot. The container market changed in 1986 when McDonald’s introduced their plastic Happy Meal containers. While these plastic containers could not hold as much candy as a pillow case, they were the pièce de résistance of containers – a review of social media hashtags reveals that these containers are still en vogue.
Most of us assumed that the introduction of plastic containers was the last nail in the coffin when it came to innovative candy container technology. Still, like Michael Myers, innovation never dies. Working away in their labs, engineers concocted a new breed of candy containers that include lights and sounds!
For example, U.S. Patent No. 9,022,595 (Schilling) is directed to an illuminated candy container with three Light Emitting Diodes (LEDs) that are used to, respectively, illuminate an ornamental pattern, provide increased visibility, and provide a glowing effect to the container. This container also includes a digital media player that plays recorded sounds.
In the same field as Schilling’s invention, U.S. Patent Application No. 2010/0128588 (Shuman) is directed to a Halloween greeting system for prompting young children to remember to say “trick or treat” and “thank you.” The inventor, who was also a patent attorney, must have been irked by rude trick-or-treaters. Shuman’s Halloween greeting system included a voice recorder/audio player integrated with a Halloween treat container and a remote control unit for triggering the voice recorder/audio player to play a recorded message. Shuman’s patent application was filed in 2008 and abandoned in 2017.
At first glance, one may scratch their head, wondering why Schilling was treated with a patent while Shuman was left holding an empty container. Still, upon further review, the obviousness monster (known as 35 U.S.C. § 103) played a role in this tale. Schilling slayed the obviousness monster while Shuman laid victim to its vicious wrath.
In an obviousness rejection, the examiner alleges that the invention would have been obvious to someone of ordinary skill in the art at the time of filing. Essentially the examiner is alleging that an individual who is skilled in the art would have found it obvious to combine or modify one or more cited prior art references (“references”) to arrive at the claimed invention. The rejection will articulate a motivation (e.g., rational reason) for combining or modifying the references.
Patent practitioners have an arsenal of options for overcoming obviousness rejections. Some of the more options include, but are not limited to:
- Amending the claims to add one or more elements that are not disclosed in the references.
- Argue that the examiner failed to show a reasonable motivation to combine or modify the prior art
- Argue that one or more references teach away from the claimed invention.
- Argue that the examiner failed to consider the totality of the references.
For brevity, we will spare you the ghoulish details of each option.
Various factors may guide a patent practitioner’s decision on how to address an obviousness rejection. These factors include, but are not limited to, the strength of the references, the client’s budget, and/or the client’s desire to obtain a certain claim scope.
In practice, amending the claims (option one) tends to be the path of least resistance, while teaching away arguments (option three) are often met with minimal success.
During prosecution, the claims in Shilling were amended in response to the obviousness rejection in first Office Action. Shilling’s application was subsequently allowed.
During prosecution, the independent claim in Shuman was rejected as obvious based on a first reference that had a played recorded audio in response to a motion-sensing trigger, and a second reference related to a remote control. Shuman took the path less traveled and argued the references taught away from his claimed invention.
Given the scope of claim 1, Shuman’s decision to go with the teaching away argument is a bit puzzling. Claim 1, which is the same claim that was reviewed (twice) by the Patent Trial and Appeal Board (PTAB), is as follows:
- A Halloween greeting system comprising:
- a Halloween treat container comprising a voice recorder/audio player combination device; and
- a remote control unit for triggering said voice recorder/audio player combination device to play a recorded message.
This claim was never amended, and teaching away arguments persisted through four non-final Office Actions, three final Office Actions, and two appeals. Shuman must have been a fan of the saying “if at first you don’t succeed, try, and try again.” Through it all, the examiner maintained his position that it would be obvious to use a remote control as a way to trigger playback in a device reference that discloses the motion-sensing triggered recording playback.
While it is difficult to provide a successful teaching away argument, Shuman may have dug his application’s grave by stating, in paragraph 5 of the specification, “examples of remote control units being used with toys and other devices are known and disclosed in U.S. patents and U.S. patent application Publications, including U.S. Pat. Nos. 6,757,393, 6,697,602, 6,881,122, 7,210,656 and U.S. Patent Application Publication No. 2008/0231740.” Often, a description of conventional systems is followed by a clear explanation of the issues with the described conventional systems, a solution provided by the disclosed invention, and the advantages of the disclosed invention. This type of description and some amendments may have provided more ammunition for slaying the obviousness monster. Unfortunately, Shuman’s application cannot rise from its grave. Thus we will never know if there could have been another way to overcome the obviousness rejections. Still, Shilling and Shuman are good examples of the different paths one can take to address obviousness rejections.