Ex parte Jud

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte Wilfi-ied JUD
and Hans-Rudolf Nageli
Appeal No. 2006- 1061
Application No. 09/505,7 13
Technology Center 1700
Decided: 30 January 2007
Before FLEMING, Chief Administrative Patent Judge, and TORCZON,
KRATZ, TIMM, JEFFREY T. SMITH, MOORE, and LINCK,
Administrative Patent Judges.
TORCZON, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
The appellant, Jud et al. (Jud), requests reconsideration of the original
panel hearing in the present appeal by the Board sitting en banc and reversal
of the original decision.
A rehearing pursuant to 35 U.S.C. 6(b) and 37 C.F.R. 5 41.52 on the
points specifically raised in the request is GRANTED;

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Application No, 09/505,7 13
the suggestion to rehear the request en banc is DECLINED, but the
panel for rehearing has been expanded; and
the requested relief is DENIED.
Throughout the request, Jud argues that the Board misapprehended or
overlooked the requirement that a determination of the level of ordinary skill
in the art must be made in the record as part of an obviousness
determination. The request presents four distinct issues: first, what
determination must be made; second, from what evidence is such a
determination made; third, whether such a determination was in fact made;
and finally, to the extent the original decision failed to make such a
determination, was the failure prejudicial error such that the decision must
be set aside.
A. 	What determination must be made?
An obviousness determination is grounded in 35 U.S.C. 103(a), which
provides in part:
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 the subject matter pertains.
The language of the statute suggests that the "ordinary skill in the art to
which the subject matter pertains" may be a contested issue in determining
obviousness. The Supreme Court has elaborated that:
Under 5 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give

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Application No. 09/505,7 13
light to the circumstances surrounding the origin of the subject
matter sought to be patented.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). These four
determinations have come to be known as the Graham factors. The Board
immediately adopted Graham as a source of authority in determining
obviousness. See, e.g., Exparte Rachlin, 151 USPQ 56, 57 (Bd. Pat. App. 1
1966) (affirming obviousness rejections against some, but not all, claims).
The Board continues to follow the guidance of Graham today. See, e.g., In
re Kahn, 441 F.3d 977,985 78 USPQ2d 1329,1334-35 (Fed. Cir. 2006).~
The skill-level determination is an important guarantee of objectivity
in an obviousness analysis. Al-Site Corp. v. VSZ Int'l Inc., 174 F.3d 1308,
1324, 50 USPQ2d 1161, 1171 (Fed. Cir. 1999). Neither the statute nor the
Graham factors, however, prescribe a specific format for the skill-level
determination. There are several pragmatic reasons for this flexibility. The
nature and sources of evidence for skill level and the manner in which it is
contested vary widely from case to case. E.g., In re GPAC, 57 F.3d 1573,
1579,35 USPQ2d 1116, 1121 (Fed. Cir. 1995) (various factors may be
considered, but in a given case some may predominate and others may be
absent). At its core, however, the question of the level of ordinary skill in
the pertinent art boils down to a question of what the hypothetical person
with such skill would have known (and known how to do). E.g., Kahn, 441
F.3d at 988, 78 USPQ2d at 1337 ("...the level of skill in the art-i.e., 	the
' The immediate predecessor to the present Board.
2 The request includes an extensive new argument about the applicant's
understanding of United States Patent and Trademark Office and
Department of Commerce policy. The argument is internally inconsistent
and factually incomplete. It is also, however, moot in view of the Board's
long-standing history of following the Graham factors.

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Application No. 09/505,7 13
understandings and knowledge of persons having ordinary slull in the art at
the time of the invention.. ..").
B. 	Evidencefor determining the ordinary level of skill
The applicant's disclosure provides a starting point for determining the
level of skill in the art, followed by references and additional testimony, if
any.
1. 	The applicant's disclosure
The disclosure is present in every examination and provides the
applicant's views of the skill level at the time of filing. The disclosure is
particularly helpful when it describes the background to the invention and
the applicant's contribution to the art. Care must be exercised, however, to
ensure that the applicant's contribution is not itself mistaken as an admission
regarding the pre-existing knowledge and skill in the art.
Evidence of the slull level in the disclosure tends to be i n d i r e ~ t . ~	The
disclosure must, however, "enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make and use" the
invention. 35 U.S.C. 112(1). Thus, an enabling disclosure implies a
minimum base of technical knowledge and ability for "any person" skilled in
the pertinent art at the time of filing. E.g., Koito Mfg. Co. v. Turn-Key-Tech,
LLC, 381 F.3d 1142, 1156,72 USPQ2d 1190,1200 (Fed. Cir. 2004) ("[A]
patent applicant does not need to include in the specification that which is
already known to and available to one of ordinary skill in the art.").
The disclosure sets a floor rather than a ceiling on the level of skill.
Moreover, it may be wrong-leading 	to a rejection under 8 112(1). The
Few patent disclosures provide express statements of the level of skill in
the pertinent art. Fewer still include statements like "Aperson of slull in this
art has a Ph.D. in.. .."

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Application No. 09/505,7 13
assessment of enablement may, however, prompt more direct evidence
regarding the level of skill in the art. E.g., Constant v. Advanced Micro-
Devices, Inc., 848 F.2d 1560, 1569,7 USPQ2d 1057, 1063 (Fed. Cir. 1988)
(affirming use of statements made during prosecution regarding undue
experimentation as evidence of the level of skill in the art).
2. 	References
References are also a part of an examination leading to an
obviousness rejection. Prior art references are cited precisely because they
show what those slulled in the art would have known and been able to do
before the effective filing date for the application. When used in
combination, prior art references may even reveal a continuum of knowledge
and ability greater than the sum of their separate, express disclosures.
References are typically indirect in their teachings regarding the skill
level in the art. Moreover, the teachings may sometimes be incomplete
since explaining the skill level in the art is rarely the intended purpose of a
reference. References are generally entitled to great weight, however,
because they are almost always prepared without regard to their use as
evidence in the particular examination in which they are used. See, e.g.,
Velander v. Garner, 348 F.3d 1359, 1371,68 USPQ2d 1769, 1778 (Fed. Cir.
2003) (contrasting preexisting references and litigation-inspired testimony
from the authors of the references). Other references, even if not cited as a
basis for the rejection, may be similarly probative of the skill level.
3. 	Declarations and other testimony
Testimony is the least common source of evidence for the level of
shll in an art during examination. Generally, it is provided by the applicant
with little opportunity for direct challenge from the examiner. A declaration
well-grounded in facts may be quite probative, however, particularly if it

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Application No. 09/505,7 13
directly addresses the level of skill in the pertinent art at the relevant time.
Compare In re Oelrich, 579 F.2d 86,9 1-92, 198 USPQ 2 10,214 (CCPA
1978) (fact-based affidavits are probative) with In re American Academy of
Sci. Tech Ctr., 367 F.3d 1359, 1368,70 USPQ2d 1827, 1833 (Fed. Cir.
2004) (broad discretion to discount unsupported testimony). Testimony
contrary to the other evidence of record may, however, be accorded little
weight. E.g., GPAC, 57 F.3d at 1579-80, 35 USPQ2d at 1121.
Two common types of testimony regarding skill level, however, are in
themselves typically insufficient: (1) what education and work experience
the hypothetical person of skill had and (2) whether the skill level was high
or low. A statement that "a person of ordinary skill in the art had a Ph.D. in
X and 7 years of relevant experience in Y" assumes that the reader already
appreciates what such a person would have known.4 A statement about
education level and work experience could be relevant but only to the extent
that it supports more direct evidence of what one of skill would have known
(and known how to do). Indeed, the basis for a stated education level and
work experience (if any is given) tends to be whatever would be necessary to
understand and use references in the pertinent art. A statement that "the
level of skill was high" is a summary of specific findings about the level of
shll rather than a finding in itself.
The recent decision in DyStar Textilfarben GmbH v. C.H. Patrick Co.,
464 F.3d 1356,80 USPQ2d 1641 (Fed. Cir. 2006), shows how unhelpful the
education level and work experience findings can be. The jury appeared to
A number of recent non-binding decisions of the Board have made this
same point. E.g., Univ. of California v. Children's Medical Center Corp., 79
USPQ2d 1029, 1032-33 (BPAI 2005); Scripps Research Inst. v. Nemerson,
78 USPQ2d 1019, 1025 (BPAI 2005); and Argyropoulos v. Swamp, 56
USPQ2d 1795, 1807 (BPAI 2000).

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Application No. 09/505,7 13
have determined a skill level based on testimony and then used its skill-level
determination to disregard a century's worth of prior art. Id. at 1362-63,
80 USPQ2d at 1646-47. Understandably, the court held that the jury's
determination lacked substantial evidence. We take DyStar Textilfarben as
confirmation that a skill-level determination must not be at odds with what
the prior art actually teaches about the art.
C. 	Was the level of skill actually determined?
In explaining her final rejection, the examiner reiterated what she
believed one of skill in the art would understand based on the Breitler and
the ~ u ~ ~ l i '	references (Final Rej. at 3-4; Ans. at 7). For example, the
examiner-
...further notes that her interpretation is consistent with what is
understood in the packaging art, note specifically, the attached
Muggli (USPN 5,968,663, commonly owned to Alusuisse
Technology & Management) which also utilizes the same
language as the commonly assigned Breitler et al.. ..
(Final Rej. at 4, original emphasis). While the examiner did not have an
expressly denominated finding regarding the level of skill in the art, Jud was
on notice about what the examiner thought one of skill in the art would have
known and why.
The original panel in this case certainly understood the examiner's
basis with regard to the level of skill in the art. Indeed, when affirming the
examiner's obviousness rejection, the panel specifically discussed what a
'The Examiner relied on Muggli only "as an evidentiary reference to rebut
Appellants' arguments that the Examiner's interpretation of Breitler was
incorrect and inconsistent with the art." Ans. at 9. See also Dec. at 11-12.
As such, the Examiner applied Muggli to illustrate the level of skill in the art
and also to show that Breitler, the reference supporting the prior art
rejection, reflected that level of skill.

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Application No. 09/505,7 13
person of ordinary skill would have known in terms of references of record
(e.g.,Dec. at 9).
The panel also specifically addressed Jud's argument that the
examiner had not made a finding about the level of skill in the art (Dec.
at 12). The panel indicated that it was satisfied with the examiner's reliance
on the prior art for this purpose and noted that Jud had not provided any
substantive reason to suppose that the prior art was not used appropriately as
evidence of the level of skill.
On rehearing, Jud's request continues the approach of narrowly
challenging the form of the skill-level finding rather than pointing to
evidence that would support a materially different finding. The request does
not attempt to demonstrate that the decision was wrong on the merits of the
obviousness rejection, but instead focuses on the form of the opinion. The
request does not point to any specific evidence that would require setting the
decision on the merits aside.
Although Jud's disclosure is of record, neither the examiner nor Jud
appears to have relied on it as a source of evidence regarding the level of
shll. The examiner relied on the cited references as evidence of the skill
level. Jud points out that many other references are of record (Req. at 9), but
does not specifically point out how any of them would apply in determining
the skill level. Jud also points to testimony from ~ r e i t l e r ~	(Req. at 8), but
again does not explain how the testimony would lead to different findings
regarding the level of skill. Breitler did not testiQ directly to the level of
skill in the art, concentrating instead on the intended meaning of the
6 Breitler is a named inventor of the Breitler patent and an employee of a
"sister company" of the real party-in-interest for the present application
(Breitler decl. at 1).

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Application No. 09/505,7 13
reference bearing his name. Thus, the relevance of the Breitler testimony
stems from what its discussion of the Breitler patent would imply about the
knowledge and ability of a person having ordinary skill in the art. The
examiner and the original panel both considered Breitler's testimony
regarding the Breitler patent but discounted its value because they
considered Breitler's interpretation of his patent to be too narrow. The
request neither asks us to rehear this finding nor points us to evidence
requiring a different finding.
By outlining what one would know from references, the examiner met
her burden to establish the shll level in the way it is typically met during
examination. Since Jud failed to argue or provide a persuasive basis for a
different finding, the original Board panel used the same methodology to
make essentially the same findings. Procedurally the skill-level findings
can-at 	most-be 	faulted for failing to be explicitly labeled as such. Jud's
position that no skill-level finding was in fact made is simply wrong.
D. 	Was there prejudicial error?
Assuming, arguendo, that the original panel did fail to make a
required finding about the skill level, our analysis would not be at an end.
Jud cites I n re Lee, 277 F.3d 1338, 1342,61 USPQ2d 1430, 1433 (Fed. Cir.
2002), for the proposition that the Administrative Procedure Act [APA]
requires the Board's decision to be full and reasoned such that it is amenable
to judicial review. Significantly, however, the last sentence of the APA
regarding judicial review states:
In making the foregoing determinations, the court shall review
the whole record or those parts of it cited by a party, and due
account shall be taken of the rule of prejudicial error.

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Application No. 09/505,7 13
5 U.S.C. 706. A similar provision governs review of court decisions.
28 U.S.C. 21 11. Both statutes reflect the pragmatic Congressional policy
that a defect in a decision should not be used to reverse the decision unless
some harm has resulted. A Board rehearing is not, of course, subject to
either of these statutes, but the policy behind these statutes makes sense in
this context as well.
Significantly, our principal court of review has from its earliest days
assiduously followed the prejudicial error statutes. For example:
We also find no error in the Board's determination of the level
of ordinary skill in the art. Appellants contend that the Board
erred by not more precisely identifying the level of ordinary
skill in the art, and argue that the Board should have found a
person with ordinary slull to be "a golfer, golf professional
and/or golf course manager." (Appellants' Br. at 37.) But
appellants have not shown how a different, more precise
definition of the pertinent art would have changed the result.
In re Huston, 308 F.3d 1267, 1279 n.8,64 USPQ2d 1801, 1809 n.8 (Fed.
Cir. 2002) (affirming decision on ex parte appeal).
While it is always preferable for the factfinder below to specify
the level of skill it has found to apply to the invention at issue,
the absence of specific findings on the level of skill in the art
does not give rise to reversible error "where the prior art itself
reflects an appropriate level and a need for testimony is not
shown." Litton Indus. Prods., Inc. v. Solid State Sys. Corp.,
755 F.2d 158, 163,225 USPQ 34,38 (Fed. Cir. 1985); see also
Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d
955,963,l USPQ2d 1196,1201 (Fed. Cir. 1986) (excusing
failure to make express findings as to the level of ordinary skill
where there is no showing that the court's failure to make such a
finding influenced the ultimate determination).
Okajima v. Bourdeau, 261 F.3d 1350,1355,59 USPQ2d 1795,1797 (Fed.
Cir. 200 1) (affirming decision in interference).

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Application No. 09/505,7 13
[A]n invention may be held to have been obvious (or
nonobvious) without a specific finding of a particular level of
slull or the reception of expert testimony on the level of skill
where, as here, the prior art itself reflects an appropriate level
and a need for such expert testimony has not been shown.
Chore-Time Equip., Inc. v. Cumberland, 7 13 F.2d 774,779 n.2,2 18 USPQ
673, 676 n.2 (Fed. Cir. 1983) (affirming court decision of invalidity).
Jud has pointed to the reservation in Okajima regarding the need for
testimony, and we note a similar reservation in Chore-Time Equip. Inc., but
Jud has not explained its relevance in this case. The only cited testimony,
Breitler's declaration, lacks any direct testimony on skill level, but was
considered for what it had to say about the Breitler patent.
Curiously, the request does not urge alternative findings on skill level
that the Board should have made, does not point to other findings that would
have to change in view of a properly determined slull level, and does not
even explain whether and why the obviousness determination as a whole is
wrong on the merits. There is no point to undoing the original panel
decision in the absence of some indication that it would make a difference in
the ultimate outcome. Cf: McNally v. Mossinghoff; 673 F.2d 1253, 1254,
2 13 USPQ 28 1,281 (CCPA 1982) (holding no abuse of discretion in
declining to perform a useless act).
Special note regarding claim 51
The original panel stated that:
Appellants' representative in the Hearing.. .indicated that the
appeal as to the subject matter of claim 5 1 is withdrawn. Thus,
we summarily affirm the Examiner's 8 103 rejection of
claim 5 1.
(Dec. at 6). The request for rehearing does not specifically address any
claim, much less claim 5 1. Since the affirmance of the rejection of claim 5 1

Appeal No. 2006- 1061
Application No. 09/505,7 13
was based on the withdrawal of the appeal for claim 5 1, we construe the
request for rehearing to be directed at all of the rejected claims with the
exception of claim 51.
DECISION
The request for rehearing has been considered, and the panel on
rehearing has been expanded, but relief on the merits is-
DENIED
MICHAEL R. FLEMING
Chief Administrative Patent Judge
RICHARD TORCZON
Administrative Patent Judge
PETER F. KRATZ
Administrative Patent Judge
Board of Patent
CATHERINE TIMM Appeals
Administrative Patent Judge and
Interferences
JEFFREY T. SMITH
Administrative Patent Judge
JAMES T. MOORE
Administrative Patent Judge
NANCY J. LINCK
Administrative Patent Judge

. Appeal No. 2006- 1061
Application No. 09/505,7 13
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