We recently considered arguments directed to rendering the prior art inoperable. A related conclusion, articulated In re Ratti, clarifies that a secondary reference cannot modify the principle of operation of the primary reference in an obviousness rejection. 270 F.2d 810, 813, 123 USPQ 349, 352 (CCPA 1959) (available at https://law.resource.org/pub/us/case/reporter/F2/270/270.F2d.810.6452.html); MPEP 2143.01 VI.
In Ratti, the Applicant’s Claim 1 was directed to a seal including “a metal ring . . . provided with a plurality of axially extending outwardly biased spring fingers.” Ratti, para. 3. The Examiner’s rejection was based on a British patent to Chinnery et al. in view of a US patent to Jepson.
The Court summarized the Chinnery patent as disclosing, “[a] bore engaging portion of [a] sealing member . . . ‘stiffened’ by an axially extending cylindrical sheet metal casing.” Id., para. 9. The Court then directed attention to Fig. 8 of the Chinnery patent, which “shows a radially extending flange at the outer edge of a reinforcing member of the internal reinforcement type . . . .” Id., para. 11.
The Jepson patent is directed to a gasket for a coffee maker, in which the gasket has a groove including “a sleeve member provided with axially and downwardly extending spring fingers which are so biased radially as to urge the lower peripheral portion of the gasket outwardly . . . .” Id., para. 12.
The Court found the Chinnery patent and the Jepson patent failed to disclose “outwardly biased resilient spring means or fingers inserted in the resilient sealing element.” Id., para. 17.
The Court considered the argument that the Jepson patent suggests inserting, into the Chinnery sealing member, a set of spring fingers. Id., para. 22. The Court dismissed this argument, because “the resilient element of Chinnery et al. is forced so tightly into the bore and is so ‘stiffened’ that the use of the resilient spring fingers of Jepson could not possibly increase the resilient deformation of the Chinnery et al. seal in the direction of the bore or increase the sealing engagement of the seal with the bore.” Id. Further, the Court stated, “The teaching of the Chinnery et al. patent points away from the addition of any spring element.” Id. (emphasis supplied).
Thus, the Court held, “This suggested combination of references would require a substantial reconstruction and redesign of the elements shown in Chinnery et al. as well as a change in the basic principles under which the Chinnery et al. construction was designed to operate.” Id., para. 23.
So, why review this case? In short, this case established the argument against changing the principle of operation of a reference. Further, it is the only decision discussed in the relevant portion of the MPEP. MPEP 2143.01 VI. And the MPEP’s explanation of the case is ambiguous, because the MPEP’s explanation focuses on the claim, not the Jepson patent.
Specifically, the MPEP characterizes Ratti: “The primary reference relied upon in a rejection based on a combination of references disclosed an oil seal wherein the bore engaging portion was reinforced by a cylindrical sheet metal casing. The seal construction taught in the primary reference required rigidity for operation, whereas the seal in the claimed invention required resiliency.” Id.
If I were explaining how to apply this case, I would rewrite this section as, “The Chinnery patent disclosed an oil seal wherein the bore engaging portion was reinforced by a cylindrical sheet metal casing. The seal construction taught in Chinnery et al. required rigidity for operation. Thus, no combination with a resilient spring element would have been obvious, even assuming the Jepson patent taught resilient spring fingers.”
In a future blog post, we will discuss strategic consideration of In re Ratti. In the meantime, please contact us, if you have any questions about whether an Examiner has proposed modifying the principle of operation of a reference.