[Patentpractice] In re Japikse and "criticality of the claimed limitation"

Tue Mar 25 14:19:48 UTC 2025

Krista, here are some references, with specific quotes, that I have in my notes for arguing against a “rearrangement of parts” rational for rejection.  I believe the ex parte Voden quote was from the BPAI opinion, while the ex parte Jensen one looks like it’s from the appellant's brief, but these cases might offer a good startingpoint for arguments.

We also agree with Appellant that Tsai ′564 does not render claim 36 obvious for the following reasons. First, we note that the Examiner finds that if Tsai ′564 does not disclose the air blower as being disposed in the space between the first game formed on the first side and the air hockey table formed on the second side of the combination game table, then it would have been obvious for one of ordinary skill in the art to have disposed the air blower of Tsai ′564 at any desired location, presumably to include between the soccer and hockey plates 34 and 31, as this amounts to nothing more than a rearrangement of parts requiring only routine skill in the art in reliance on In re Japikse, 181 F.2d 1019 (CCPA 1950). This analysis amounts to application of a per se rule of obviousness, namely, that parts of a reference may always be rearranged as a general proposition in order to negate any patentable distinction. However, the Examiner provided no comparison between the facts of Japikse and the facts of the underlying application to explain how the holding of Japikse applies to the claims on appeal. As such, the Examiner's 35 U.S.C. § 103(a) rejection does not rest on a sound evidentiary basis because reliance on per se rules of obviousness is legally incorrect. Thus, we find the Examiner's statement as to rearranging the location of the fan 4 of Tsai ‘564 to be conclusory and we are not persuaded of the obviousness of the subject matter of claim 36.

Ex Parte Justin L. Voden, 11/824,369, 2010 WL 5127444, at *6 (Dec. 13, 2010)

In re Japiske, 86 USPQ 70 held that shifting the position of the starting switch would not have modified the operation of the device. (See MPEP 2144.04 VI C).
In stark contrast to In re Japiske, 86 USPQ 70, adding a control (and its associated mechanical, electrical and software) for the special purpose function color-mode of Lundberg to the remote control device 34 of Bartol modifies the operation of the remote control device 34. That is, the remote control device 34 of Bartol would now be configured with additional components and an additional capability that it did not have. Hence, its operation would be modified. In In re Japiske, 86 USPQ 70, the switch was merely moved from one position to another position on the same hydraulic power press, and thus no new component or capability was added to the press by moving the switch to a different position on the press. In re Japiske, 86 USPQ 70 does not support the rationale proffered in the rejection of claim 1. Furthermore, Lundberg does not disclose or suggest the key and/or control 188 selects color mode, let alone from a group of the available scanning modes.

Ex Parte Ole C. JENSEN., 2015 WL 13413173 (Bd.Pat.App. & Interf.)

Regards,
Jeroen.

Jeroen Valensa
Assistant General Counsel – Intellectual Property
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email: jevalensa at aosmith.com<mailto:jevalensa at aosmith.com>

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Krista S. Jacobsen via Patentpractice
Sent: Tuesday, March 25, 2025 9:02 AM
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Subject: [Patentpractice] In re Japikse and "criticality of the claimed limitation"

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I have an office action in which claims have been rejected under 103. For several of the claims, the examiner could not find in the applied references exactly what is recited in the claims, but she rejected the claims anyway, stating only that the recited configuration would have been obvious “since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.” Then she adds, “Please note that in the instant application, the Applicant has not disclosed any criticality for the claimed limitation.”

I am trying to figure out how best to respond to the examiner’s citation to a CCPA decision from 1950 (!!!) and the apparent assertion that “criticality” of limitations must be disclosed.

My first thought is that these rejections amount to improper hand-waving.

Second, I am unaware of any requirement for an application to disclose “criticality for the claimed limitation” in order for a claim to be patentable over a combination of references. MPEP 2144.04 says this about “criticality”: "If the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on the rationale used by the court to support an obviousness rejection.” The examiner appears to have recast this statement as: “If the applicant has NOT demonstrated the criticality of a specific limitation, it WOULD be appropriate to rely solely on the rationale used by the court to support an obviousness rejection.” Then she sticks in a reference to In re Japikse and deems it obvious. I do not think that makes for a proper 103 rejection.

Third, the examiner’s rationale seems to seek to improperly shift the USPTO’s burden. The applicant is not required to prove that an invention is nonobvious (apparently by disclosing “criticality for the claimed limitation” in the application). Instead, the USPTO is required to allow the claim unless the examiner can show that the claimed invention IS obvious.

I would appreciate any thoughts from the brain trust, especially if you have received and responded to similar rejections. Thanks in advance.

Best regards,
Krista

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Krista S. Jacobsen
Attorney and Counselor at Law
Jacobsen IP Law
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