This case discusses claim construction, as well as Examiner’s should take into consideration the background knowledge that would have been possessed by a person of ordinary skill in the art at the time of the invention.
This case is based on an appeal from the USPTO’s Patent Trial and Appeals board, and discusses whether the Board erred on not rejection the claims of US Patent Number 7,3444,450. The argument was based on if the Board erroneously failed to consider the general knowledge posses by one skilled in the art of “press fitting” in applying the obviousness standard.
The claims of the ‘450 patent are directed towards a method of shifting the center of gravity of a golf club head by attaching removable weights. The golfer can place weights within cavities on the head of the golf club via different mechanisms, such as weight-port covers that screw into the body, latches, press-fits, etc. Several of the dependent claims specifically claim “press-fittings” for attaching the weights, and this was one of the major issues on this appeal (thing of press-fittings as snaps).
Initially, the USPTO’s board of appeals found that the independent claims of the ‘450 patent were obvious based on the prior art. However, the USPTO’s board of appeals also found that the dependent claims based on press fittings would not have been obvious. Specific definitions for press fittings were not found in the specification, but using the standard definition of press fittings the Court of Appeals found that the standard definition of press fittings reciting “an interface fit formed by pressing, or forcing one component into another” was a clear enough recitation.
Although these “press fittings” of the weights were not found in the prior art, the Court of Appeals found that the USPTO’s Board of trials appeals was obligated to consider whether it would have been obvious to utilize press fittings even though the prior art did not disclose the use of press fitting for the specific purpose of the invention. Further, the court found that press fitting was common knowledge, thus it was error for the board to fail to consider whether a person of ordinary skill in the art would be motivated to combine press fitting with prior art to arrive at the claimed invention.
Patent Attorney Take-a-ways:
- Cases like this are important to remember when drafting claims when something is commonly known. Even though an invention may just be a new application of something that is already known, the new application will not be patentable.
- To me what is more interesting would be the arguments presented on whether the person of ordinary skill “would be motivated to combine” arguments that could be presented. This is just because arguments like this are much more subjective, then objective arguments if the limitation of an invention is known.