Federal Circuit disposition — 2011-1310

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
(Serial No. 11/900,462)
IN RE CONRAD OLIVER GARDNER
__________________________
2011-1310
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
__________________________
Decided: November 14, 2011
__________________________
CONRAD O. G ARDNER , of Edmonds, Washington, pro
se.
RAYMOND T. CHEN , Solicitor, Office of the Solicitor,
United States Patent and Trademark Office, of Alexan-
dria, Virginia, for appellee. With him on the brief were
BENJAMIN D. M. WOOD and Nathan K. Kelley, Associate
Solicitors.
__________________________
Before RADER , Chief Judge, PLAGER, and DYK , Circuit
Judges.

-- 1 of 8 --

IN RE GARDNER 2
PER CURIAM.
Conrad Oliver Gardner appeals a decision of the
Board of Patent Appeals and Interferences (Board),
affirming the rejection of claims 1 and 5-13 of his patent
application. Because the Board’s findings are supported
by substantial evidence, and because we find no legal
error in the Board’s decision, we affirm.
Claims 1 and 5-13 of Mr. Gardner’s application relate
to a method of operating a motor vehicle using a hybrid
electric/internal combustion (IC) propulsion system.
Representative claim 1 reads:
1. In combination in the method of operating
a hybrid motor vehicle having an electric motor
and an internal combustion engine:
a. causing a fast charge-discharge battery to
power the electric motor in response to a logic con-
trol circuit, said logic control circuit responsive to
vehicle speed and accelerator pedal information;
and,
b. transferring power output into electric
power conserved in a fast charge-discharge bat-
tery when the internal combustion engine contin-
ues to run.
The examiner rejected claims 1 and 5-13 under 35
U.S.C. § 103(a) as unpatentable over U.S. Patent No.
4,923,025 to Ellers (Ellers) in view of U.S. Patent No.
3,615,829 to Sprague (Sprague). The Board affirmed the
examiner’s obviousness rejection.
The determination of obviousness under 35 U.S.C.
§ 103 is a legal question based on underlying factual

-- 2 of 8 --

IN RE GARDNER 3
findings. In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir.
2000). We review the Board’s factual findings for sub-
stantial evidence and the Board’s legal conclusions with-
out deference. Gartside, 203 F.3d at 1315.
The parties do not dispute that Ellers discloses a hy-
brid motor vehicle having an electric motor that is pow-
ered by a battery, an IC engine that charges the battery
when the electric motor drives the vehicle, and a logic
control circuit that can switch between the electric motor
and IC engine to drive the vehicle. See, e.g., Ellers at col.
1, ll. 53-61; col. 3, ll. 19-39; and col. 3, ln. 59-col. 4, ln. 49.
The parties also do not dispute that Sprague teaches a
specific example of a fast charge-discharge battery. See,
e.g., Sprague at col. 1, ll. 65-75. The Board affirmed the
examiner’s finding that at the time of Mr. Gardner’s
invention, it would have been obvious for a person of
ordinary skill in the art to use Sprague’s fast charge-
discharge battery in Ellers’ hybrid vehicle. Bd. Dec. at 5.
Mr. Gardner argues on appeal that the examiner and
the Board improperly selected the Sprague reference from
Mr. Gardner’s own disclosure in the application at issue.
But the examiner and the Board based the obviousness
rejection on the teachings of Sprague itself, not Mr.
Gardner’s reference to Sprague in his application. Bd.
Dec. at 3-4. At most, the examiner and the Board relied
on Mr. Gardner’s disclosure simply to support a finding
that Sprague’s battery was, in fact, a fast charge-
discharge battery. Id. at 4. Such reliance is appropriate.
See Dow Chem. Co. v. Mee Indus., Inc., 341 F.3d 1370,
1377 (Fed. Cir. 2003) (relying on patentee’s admission
that the cited prior art encompasses a claim limitation to
find the claims obvious).

-- 3 of 8 --

IN RE GARDNER 4
Mr. Gardner also argues that Ellers fails to teach or
suggest the claim limitation requiring a logic control
circuit to be “responsive to vehicle speed and accelerator
pedal information.” This court has held that when evalu-
ating claims for obviousness under 35 U.S.C. § 103, all the
limitations of the claims must be considered and given
weight. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
1530 (Fed. Cir. 1983). Here, the Board determined that
columns 3-4 of Ellers describe a logic circuit that is re-
sponsive to vehicle speed and accelerator pedal informa-
tion. Bd. Dec. on Req. for Rehearing at 2. Thus, the
Board concluded that Ellers teaches all the elements of
the claimed invention except for the fast charge-discharge
battery, which is taught by Sprague. There is no error
with the Board’s decision in this regard.
Mr. Gardner further argues that the substitution of
Ellers’ battery with Sprague’s fast charge-discharge
battery would require a substantial re-design of Ellers’
system, that neither Ellers nor Sprague enables such a re-
design, and that Ellers teaches away from the use of a
fast charge-discharge battery. Our predecessor court held
that if a proposed modification or combination of the prior
art would change the principle of operation of the prior
art invention being modified, then the teachings of the
references are not sufficient to render the claims prima
facie obvious. In re Ratti, 270 F.2d 810 (CCPA 1959).
Here, however, the Board determined that Mr. Gardner
had not established that Sprague’s fast charge-discharge
battery could not be used in Ellers’ system. Bd. Dec. at 5.
There is no error with the Board’s decision in this regard.
In addition, although this court has observed that an
obviousness finding was appropriate when the prior art
“contained a detailed enabling methodology for practicing
the claimed invention, . . . all that is required is a reason-

-- 4 of 8 --

IN RE GARDNER 5
able expectation of success.” In re Kubin, 561 F.3d 1351,
1360 (citing In re O’Farrell, 853 F.2d 894, 902-904 (Fed.
Cir. 1988) (emphasis omitted). Here, the Board deter-
mined that even if modifications were required to incorpo-
rate Sprague’s battery into Ellers’ system, Mr. Gardner
had not established that such modifications would be
beyond the capabilities of a person of ordinary skill in the
art. Bd. Dec. at 5. There is no error with the Board’s
decision, and infer from it that one skilled in the art
would have had a reasonable expectation of success in
making the examiner’s proposed modification to Ellers’
system. Thus, we agree with the Solicitor that Mr. Gard-
ner’s argument lacks merit.
Finally, this court has held that a teaching away oc-
curs when a reference discourages one skilled in the art
from following the claimed path, or when the reference
would lead one skilled in the art in a direction divergent
from the path that was taken by the applicant. In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). The Board
considered Mr. Gardner’s argument that Ellers teaches
away from the use of Sprague’s fast charge-discharge
battery, but did not find that argument persuasive. Bd.
Dec. at 4-5. Nor do we.
Mr. Gardner separately argues for the patentability of
claims 5 and 6, which recite the speed at which the logic
control circuit transfers power between the electric motor
and IC engine. The Board determined, however, that a
person of ordinary skill would have known to vary Ellers’
changeover speed to account for user and environmental
factors. Bd. Dec. at 6-7. Our predecessor court has held
that the discovery of an optimum value for a result-
effective variable generally does not require an inventive
step. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) and
In re Goesch, 617 F.2d 272, 276 (CCPA 1980). Here, the

-- 5 of 8 --

IN RE GARDNER 6
Board determined that Mr. Gardner’s discovery of the
optimum speeds recited in claims 5 and 6 was not inven-
tive. We agree.
When an examiner establishes a prima facie case of
obviousness, the burden shifts to the applicant to show
non-obviousness. See In re Rijckaert, 9 F.3d 1531, 1532
(Fed. Cir. 1993). Mr. Gardner relies on three items of
evidence of secondary considerations to support the non-
obviousness of his claimed invention. First, Mr. Gardner
provided evidence that two of his related earlier-issued
patents (U.S. Patent Nos. 5,346,031 and 5,301,764) have
been cited by a considerable number of later patents.
Appeal Br. App. 1 at 1. Mr. Gardner contends that the
citation of his prior patents establishes that they disclose
and claim a “pioneer invention” that created a new art
and enabled a function never previously performed. Mr.
Gardner argues that this pioneer status should be ex-
tended to the claims on appeal as evidence of their non-
obviousness. Id. Second, Mr. Gardner submitted a
statement asserting that (1) there was a long-felt need in
the automotive industry for extended range vehicles, and
(2) another patent applicant had amended his claims to
overcome a rejection based on one of Mr. Gardner’s prior
patents, indicating that those skilled in the art recognized
Mr. Gardner’s prior invention of a solution to the long-felt
need. Appeal Br. App. 2 at p. 1. Finally, Mr. Gardner
submitted a letter from Philip C. Malte, Professor of
Mechanical Engineering at the University of Washington,
stating that the invention disclosed and claimed in Mr.
Gardner’s parent patents was “very intriguing.” Reply
Br. App. at 1.
This court has held that to be given substantial
weight in the determination of non-obviousness, evidence
of secondary considerations must be relevant to the

-- 6 of 8 --

IN RE GARDNER 7
subject matter as claimed. Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 306 (Fed. Cir.
1985). Thus, an applicant must establish a nexus be-
tween the merits of the claimed invention and the prof-
fered evidence of secondary considerations. Id. at n. 42.
Here, the Board determined that even if Mr. Gardner had
established that his prior patents disclose and claim a
pioneer invention, there is no evidence that the claims on
appeal would also be regarded as pioneering. Bd. Dec. at
8. The Board also determined that an apparent acquies-
cence by another patent applicant that Mr. Gardner’s
parent patents constitute a prior invention is not relevant
evidence of the non-obviousness of the claims on appeal.
Id. at 9-10. We agree with these decisions by the Board.
While the Board did not specifically comment on the letter
from Professor Malte, we see no reason that they needed
to. The letter was considered in oral argument by the
Board and properly rejected as not establishing the requi-
site nexus between Professor Malte’s praise and the
claims on appeal.
Finally, regarding Mr. Gardner’s argument that there
had been a long-felt need in the automotive industry for
extended range vehicles, the Board determined that the
argument was unsupported by any evidence, and failed to
establish that a long-felt need existed for the claimed
invention as opposed to extended range vehicles of un-
specified configuration and operation. Bd. Dec. at 9. The
Board further noted that no evidence was presented that
the claimed invention actually satisfied the purported
long-felt need. See In re Cavanaugh, 436 F.2d 491, 496
(CCPA 1971) (once a long-felt need is established, evi-
dence must show that the claimed invention satisfied that
need). Thus, we agree with the Board’s conclusion that
the proffered evidence of secondary considerations fails to
overcome the examiner’s prima facie case of obviousness.

-- 7 of 8 --

IN RE GARDNER 8
Because we find no legal error in the Board’s deter-
mination and because the Board’s findings are supported
by substantial evidence, we affirm.
AFFIRMED

-- 8 of 8 --