Anticipate This!™ | Patent and Trademark Law Blog

In Re John B. Sullivan, et al.

Posted in Opinion Commentary by Jake Ward on September 5, 2007

When an applicant puts forth evidence to rebut a prima facie case of obviousness, the evidence must be considered.  

(Fed. Cir. 2007, 06-1507)


On appeal from the BPAI, the CAFC vacated the BPAI’s decision that affirmed a final rejection of application Serial No. 08/404,454 (the ‘454 application) on obviousness grounds.

Sullivan had originally filed the ‘454 application with claims directed to an antivenom composition.  During prosecution, Sullivan had provided three expert declarations related to the use of the claimed composition as an antivenom.  The BPAI, in finding the claims unpatentable, stated in a footnote that:

The remainder of appellants [sic] arguments on this record, in addition to the Declarations of record, relate to the use of the claimed composition as an antivenom. Since we have placed not [sic] weight on the intended use of appellants’ composition we do not address these arguments or the Declarations.

Sullivan argued that even if the BPAI established that the claimed composition was prima facie obvious over the cited references, the BPAI erred by ignoring extensive rebuttal evidence (teaching away, unexpected properties, and other objective indicia of nonobviousness) in the expert declarations.

The CAFC agreed that the BPAI imroperly failed to consider the rebuttal evidence.  When a prima facie case is made by the PTO, the burden shifts to the applicant to come foward with evidence and/or argument supporting patentability.  Evidence rebutting a prima face case of obviousness can include: “evidence of unexpected results,” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1369 (Fed. Cir. 2007), evidence “that the prior art teaches away from the claimed invention in any material respect,” In re Peterson, 315 F.3d 1325, 1331 (Fed. Cir. 2003), and evidence of secondary considerations, such as commercial success and long-felt but unresolved needs, WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999).  When a patent applicant puts forth rebuttal evidence, the Board must consider that evidence. 

The BPAI’s focus on the intended use of the composition missed the mark.  The issue was not whether the claim recited a new use, but whether the subject matter of the claim possessed an unexpected use.  An unexpected property is relevant, and thus the declarations that described it should have been considered by the BPAI.


Egyptian Goddess, Inc., et al. v. Swisa, Inc., et al.

Posted in Opinion Commentary by Jake Ward on September 5, 2007

For a combination of individually known elements to constitute a point of novelty for design patent infringement purposes, the combination must be a non-trivial advance over the prior art.   

(Fed. Cir. 2007, 06-1562)


Egyptian Goddess (EGI) argued that the district court’s (N.D. Tex) summary judgment of noninfringement of U.S. Design Pat. No. 467,389 (the D’389 patent) was improper.  On appeal, the CAFC disagreed with EGI and affirmed the summary judgment.

The D’389 patent covered an ornamental nail buffer (see above).  Swisa  was sued by EGI, claiming that Swisa nail buffers infringed the D’389 patent.  The district court granted summary judgment on the ground that the Swisa nail buffers did not contain the point of novelty of the patented design; namely, the addition of a fourth side without a pad.

There are two distinct requirements for establishing design patent infringement, namely:

1)  The ordinary observer test – requires that “in the eye of an ordinary observer, giving such attention as a purchaser usually gives, [the] two designs are substantially the same . . . the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other.” Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528 (1871).

2)  The point of novelty test – requires that “no matter how similar two items look, ‘the accused device must appropriate the novelty in the patented device which distinguishes it from the prior art.’” Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984) (citing Sears, Roebuck & Co. v. Talge, 140 F.2d 395, 396 (8th Cir. 1944)).

The CAFC recited that “[t]he point of novelty must include features of the claimed design that distinguish it from the prior art.  Additionally, for a combination of individually known design elements to constitute a point of novelty, the combination must be a non-trivial advance over the prior art.  EGI’s asserted point of novelty is a combination of four elements: 1) an open and hollow body, 2) a square cross-section, 3) raised rectangular pads, and 4) exposed corners.

Neither EGI nor Swisa disputed that the referenced prior art to the D’389 design contained all the elements of the D’389 design, except for the fact that the body was triangular rather than square in cross-section (see below) . 


There was also no dispute that nail buffers with square cross-sections were widely known in the prior art.   In light of this, the CAFC held that no reasonable juror could conclude that EGI’s asserted point of novelty constituted a non-trivial advance over the prior art.  Furthermore, even if the point of novelty were to include a fourth side without a raised pad, as found by the district court, the Swisa buffers had pads on all four sides.  The CAFC concluded that this is not a minor difference from the D’389 design.  Accordingly, the summary judgment of noninfringement was properly granted.


Circuit Judge Dyk dissents, stating: 

. . . [B]y conflating the criteria for infringement and obviousness, the [new] test eviscerates the statutory presumption of validity by requiring the patentee to affirmatively prove nonobviousness. . . . Under the majority’s test . . . the patentee would have to prove nonobviousness in order to establish infringement.

They Invented What? (No. 63)

Posted in They Invented What? by Jake Ward on September 5, 2007

U.S. Design Pat. No. D384,716:  Rattlesnake skin football. 


What is claimed is:

The ornamental design for a rattlesnake skin football, as shown and described.