Wednesday, July 1, 2009

In re: Mettke -- "On-Line Communication Terminal/Apparatus" is obvious

In a non-precedential decision, the Court of Appeals for the Federal Circuit affirmed the Board of Patent Appeals and Interference's rejection of Mettke's claim 6 as being obvious in light of the cited references. See In re: Mettke, 2009-1125 (June 25, 2009). U.S. Patent No. 5,602,905 issued to Mettke. Mettke applied for reissue of the '905 patent, and this appeal followed.

Claim 6 provided:
A public on-line Internet terminal comprising:
a central processing unit (CPU);
a video display monitor coupled to the CPU;
a keyboard for providing user interface coupled to the CPU;
a credit card reader swipe device coupled to the CPU for accepting payment by a user;
means for accessing the Internet and allow for user interaction;
software installed into the CPU to allow interface with the Internet and credit card service centers; and
a printer coupled to the CPU.

Mettke argued (pro se) that the prior art was non-analogous because it was not limited solely to an "Internet termina." The Court rejected this argument.

Mettke argued that the his claim could not be used as a hindsight roadmap for piecing together the prior art to show his invention. The Court agreed ("A patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR Int'l v. Teleflex, Inc., 550 U.S. 398, 418 (2007)), but explained that the Board's analysis showed how the prior art taught Mettke's invention.

Finally, and the most interesting point from this case for me, Mettke argued that 93 other patents had cited the '905 patent as prior art. Mettke then argued that this indicated his patent was a technology leader, and thus this secondary (objective) consideration shows that his invention was not obvious. The Court responded:
"We draw no generalization about the significance of citations, for we agree with the Board that in this case, where every element of claim 6 is shown in the prior art, performing the same funcatino as in the claim, along with a reference showing a reason to combine the elements, this prima facie case of obviousness is not rebutted by the number of citations alone."

Board affirmed.

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