Last week, the U.S. Court of Appeals for the Federal Circuit issued a nonprecedential opinion in In Re: CSP Technologies, Inc., No. 2020-1530 (Jan. 21, 2021). The Court affirmed the PTAB’s ruling that patent application claims to a container were obvious over two prior art references —Giraud and Hagen.
CSP filed a patent application having claims directed to a moisture-tight, re-sealable container including:
a body that is generally elliptical in cross-section…
a lid configured to seat on the body, the lid being linked to the body by a hinge…
the container…configured to store test strips such that exposed ends of the test strips extend beyond the entire dispensing opening of the body and…positioned within the lid when the lid is seated on the body without damaging the exposed ends” (the “heightened lid” feature)
The Examiner determined a POSITA would have modified the container of Giraud with Hagen’s test strip configuration because the resulting configuration allows for easy manipulation of individual test strips. CSP appealed the final rejection to the PTAB. The PTAB rejected CSP’s arguments that Hagen “discourages” using a hinge and that the combination would, therefore, not be predictable to achieve moisture tightness because the Examiner’s combination did not rely on the exemplary “separable configuration”. The PTAB also found CSP’s definition and related declaration evidence of the “heightened lid” having a specific height or structural vaulting designed to reduce hoop strength was not commensurate with the scope of the claim and rejected CSP’s reasonable expectation of success evidence based on this added feature.
The Federal Circuit affirmed. The Court held substantial evidence supported the PTAB’s conclusion that a POSITA would have modified Giraud’s nearly identical “heightened lid” with the extended-test-strip configuration taught by Hagen based on the benefits of such configuration taught by Hagen. The Court further held the fact that Hagen rather than Giraud expressly acknowledged the problem in the art and the need for easier test strip retrieval does not undermine the PTAB’s determination. The Court reiterated that a conclusion of obviousness cannot be overcome by attacking references individually where the rejection is based on their combined teachings. A POSITA, according to the Court, would have reasonably expected Hagen’s configuration to be workable in Giraud’s container and, as did the PTAB, rejected CSP’s evidence on the issue of reasonable expectation of success.