Inre: Giannelli
739 F.3d 1375
Fed. Cir.2014Background
- Raymond Giannelli filed U.S. Patent Application No. 10/378,261 (the ’261 application) for a rowing exercise machine whose handles are "adapted to be moved... by a pulling force... in a rowing motion."
- The PTO examiner rejected all claims as anticipated/obvious over U.S. Patent No. 5,997,447 (the ’447 patent), a chest-press apparatus whose handles are described for a pushing motion.
- Giannelli amended claims to emphasize the handles are "adapted to" be pulled in a rowing motion; the examiner again rejected, and the rejection was made final.
- The Patent Trial and Appeal Board affirmed the obviousness rejection, finding the ’447 device was "capable of" being used by pulling and that a new intended use does not render old apparatus patentable.
- On appeal to the Federal Circuit, the court reviewed legal conclusions de novo and factual findings for substantial evidence and reversed the Board, holding the PTO failed to make a prima facie case of obviousness.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the ’447 chest-press patent rendered the ’261 claims obvious under 35 U.S.C. § 103(a) | Giannelli: Board relied on mere capability; examiner did not show how/why one of ordinary skill would modify the chest-press to be "adapted to" perform a rowing pull | Director: Claim simply requires handles that can be pulled; ’447 either discloses or renders obvious the limitations and Giannelli failed to rebut capability | Reversed: PTO failed to meet initial prima facie burden; Board erred by treating "adapted to" as merely "capable of" and not showing obviousness of modification |
Key Cases Cited
- In re Elsner, 381 F.3d 1125 (Fed. Cir. 2004) (standard of review for Board legal conclusions)
- In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000) (substantial-evidence review of factual findings)
- Consol. Edison Co. v. NLRB, 305 U.S. 197 (1938) (definition of substantial evidence)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (obviousness framework)
- Graham v. John Deere Co., 383 U.S. 1 (1966) (Graham factual inquiries for obviousness)
- In re Sullivan, 498 F.3d 1345 (Fed. Cir. 2007) (PTO initial burden to establish prima facie obviousness)
- In re Glaug, 283 F.3d 1335 (Fed. Cir. 2002) (applicant’s burden to rebut prima facie case)
- Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335 (Fed. Cir. 2012) (interpretation of "adapted to")
- In re Rijckaert, 9 F.3d 1531 (Fed. Cir. 1993) (burden shifts to applicant only after prima facie case established)