Ex parte Thompson

Informative decision only: persuasive authority, not binding precedent. When an applicant submits objective evidence of nonobviousness (here, long-felt but unsolved need and failure of others), the Examiner must consider it together with the prior-art evidence and weigh it anew, even where the prior-art findings and their combinability are undisputed, and may not dismiss it on a mischaracterization of the problem solved. A long-felt need requires that the need was persistent and recognized by ordinarily skilled artisans, was not satisfied by another before the invention, and that the invention in fact satisfies it. No prior Board precedent is named as directly addressed; the decision applies Federal Circuit authority that objective indicia must be considered in the obviousness analysis. For the examiner, a strong undisputed prior-art combination and KSR rationales do not end the inquiry, and the secondary-considerations evidence must be weighed against it, with the problem defined accurately. For the applicant, well-corroborated declarations showing persistent need, failure of others, and nexus to the claims can win reversal even when the prior-art findings are unchallenged. The Board relied on In re Huang, Graham v. John Deere Co., In re Piasecki, Leo Pharm. Products, Ltd. v. Rea, Newell Cos. v. Kenney Mfg. Co., Takai Corp. v. Easton Enter., Inc., and KSR Int'l Co. v. Teleflex Inc. LEGAL TEST OR STANDARD: Objective evidence of secondary considerations must be considered in determining obviousness, including long-felt but unsolved needs and failure of others. To establish a long-felt need, three elements must be proven: "First, the need must have been a persistent one that was recognized by ordinarily skilled artisans." "Second, the long-felt need must not have been satisfied by another before Appellant's invention." "Third, the invention must, in fact, satisfy the long-felt need." Such evidence does not control, and a strong obviousness case cannot be overcome by a far weaker showing. TRIGGERING FACTS: Appellant did not dispute the Examiner's findings on Wheeler, Christatos, Vitale and Kamiya or their combinability, and instead submitted four expert declarations from cable-industry personnel. They showed cable theft from keyed Legacy Cable Distribution Boxes persisting at least 29 years, failed attempts by others, and deployments of the assignee's boxes (reasonable nexus to claim 1) where no theft was later observed. The Examiner dismissed the evidence as improving on an already-solved problem of preventing cable theft. KEY QUOTE: "Nevertheless, "[ o]bjective indicia of nonobviousness play a critical role in the obviousness analysis." (Paper N, p. 6) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board follows In re Huang, 100 F.3d 135 (Fed. Cir. 1996), In re Piasecki, 745 F.2d 1468 (Fed. Cir. 1984), and Leo Pharm. Products, Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013). PRACTICE TIP: On appeal, define the problem narrowly and accurately, as it exists in the art, and support persistence, failure of others, non-satisfaction by others, and nexus to the claims with corroborated declarations that state facts such as tenure and dates, and argue that the Examiner failed to weigh them against the prior art.