In Re: Anderson
662 F. App'x 958
Fed. Cir.2016Background
- Pro se inventor Lawrence E. Anderson appealed two PTAB decisions affirming Examiner rejections of his patent applications for traffic monitoring systems: application ’202 (solar/wind-powered photodetector speed sensors and displays) and application ’505 (traffic-monitoring transmitters/receivers and displays).
- Both applications were filed in 2011 (pre-AIA law applied). The ’202 is a continuation-in-part of the ’505. Each application had 20 claims with several independent claims.
- The Examiner rejected the ’202 claims as obvious over Macneille in view of Hutchinson; the Board adopted the Examiner’s rationale and affirmed. Key dispute included whether "for use by a motorist in determining a route of travel" is claim-limiting.
- For the ’505 application, the Examiner rejected claims as obvious over Macneille in view of Nadeem and anticipated claims 1 and 19 by Macneille alone; the Board affirmed. Anderson challenged the change in statutory basis for some rejections and sought Director review under 37 C.F.R. § 1.181.
- The Federal Circuit reviewed legal issues de novo and factual findings for substantial evidence, and affirmed the PTAB on both applications, finding substantial evidence that Macneille taught most limitations and that Hutchinson/Nadeem taught vehicle-speed detection and display, providing a rationale to combine.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Claim construction: whether "for use by a motorist…" is limiting | Anderson: "for use" is a claim limitation and changes scope | PTO/Board: phrase expresses intended use, not structural limitation | Held: "for use" is non‑limiting intended‑use language; Board’s construction affirmed |
| Obviousness of ’202 claims over Macneille + Hutchinson | Anderson: references do not teach speed measurement by two photodetectors, multi‑lane detection, nor displaying speed for motorists’ route selection; combination defeats Macneille’s purpose | PTO: Macneille teaches traffic detection/display for route guidance; Hutchinson teaches stationary photodetector speed measurement and display; combining is obvious to improve route efficiency | Held: Substantial evidence supports obviousness; affirmed |
| Obviousness of ’505 claims over Macneille + Nadeem | Anderson: Nadeem measures speed of mobile units (not passing vehicles); prior art does not teach claimed features | PTO: Nadeem teaches vehicle speed detection (including stationary TrafficEye); Macneille teaches stationary detection/transmission; combination would be motivated to provide better routing | Held: Substantial evidence supports obviousness; affirmed |
| Procedural: whether PTO’s change from §103 to §102 for some claims required reopening prosecution or constituted new ground | Anderson: change to §102 was a new ground and PTO should have reopened prosecution; Director’s denial of Rule 1.181 relief was improper | PTO: change merely omitted unnecessary reliance; §102 rejection relied on same Macneille teachings; Director’s Rule 1.181 decision not reviewable here | Held: Court lacks jurisdiction to review Director’s Rule 1.181 decision; Board’s handling of rejections affirmed on merits where presented |
Key Cases Cited
- In re Elsner, 381 F.3d 1125 (Fed. Cir.) (standard of review for Board legal determinations)
- In re Gartside, 203 F.3d 1305 (Fed. Cir.) (substantial‑evidence review of Board factual findings)
- Consol. Edison Co. v. NLRB, 305 U.S. 197 (U.S.) (definition of substantial evidence)
- In re Bayer Aktiengesellschaft, 488 F.3d 960 (Fed. Cir.) (deference to Board where record supports either of two conclusions)
- In re Baxter, 678 F.3d 1357 (Fed. Cir.) (obviousness as law based on subsidiary facts)
- In re Beattie, 974 F.2d 1309 (Fed. Cir.) (what a reference teaches is a factual inquiry)
- In re Hyon, 679 F.3d 1363 (Fed. Cir.) (reason to combine references is a factual inquiry)
- In re Stepan Co., 660 F.3d 1341 (Fed. Cir.) (when a Board/Examiner raises a new ground and applicant’s procedural rights)
- In re Makari, 708 F.2d 709 (Fed. Cir.) (limitation on appellate jurisdiction to review Director’s petition decisions)