Nilssen, In re

• Decision Date: 13 July 1988
• Docket Number: No. 88-1240,88-1240
• Citation: 7 USPQ2d 1500,851 F.2d 1401
• Parties: In re Ole K. NILSSEN. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1401

851 F.2d 1401

7 U.S.P.Q.2d 1500

In re Ole K. NILSSEN.

Appeal No. 88-1240.

United States Court of Appeals Federal Circuit.

July 13, 1988.

Ole K. Nilssen, Barrington, Ill., pro se.

John C. Martin, Associate Sol., Office of the Sol., Arlington, Va., for appellee. With him on the brief was Fred E. McKelvey, Sol.

Before NIES, ARCHER and MICHEL, Circuit Judges.

NIES, Circuit Judge.

Ole K. Nilssen appeals from the final decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences in which the board, pursuant to its authority under 37 C.F.R. Sec. 1.196(b) (1987), rejected claims 1-4, 9-11, and 16 of Nilssen's patent application Serial No. 476,150 under 35 U.S.C. Sec. 103 (1982 & Supp. IV 1986) as unpatentable for obviousness. We affirm.

Background

Nilssen describes the invention of the instant appeal as a "means by which the self-oscillating inverter in a power-line-operated inverter-type fluorescent lamp ballast is disabled in case the output current from the inverter exceeds some pre-established threshold level for more than a very brief period." Claim 16 which appellant asserts concisely describes his invention reads as follows:

In an inverter operable to convert a DC voltage to an AC voltage and to provide said AC voltage at a power output, said inverter being of a type that is self-oscillating but which must be triggered into oscillation, the improvement comprising:

control means operable, upon application thereto of an actuation signal, to stop said inverter from oscillating;

current sensor connected in circuit with said power output and responsive to the output current flowing therefrom, said current sensor being operative to provide a sensor output signal with a magnitude that is substantially in proportion to the magnitude of said output current; and

threshold means connected in circuit between said current sensor and said control means, said threshold means being operative, whenever the magnitude of said sensor output signal reaches a pre-determined level, to provide said actuation signal to said control means, thereby stopping inverter oscillation and removing the AC voltage from said output terminals.

Nilssen challenges the board's holding that his invention would have been obvious to one of ordinary skill in the art from the combined teachings of two prior art references, USSR Certificate No. 729,738, and U.S. Patent No. 3,305,793 issued to Kammiller. Both procedural and substantive objections are raised.

As an initial matter we address Nilssen's collateral attacks on the board's decision to lay them to rest once and for all. ¹

Procedural Objection

Nilssen attacks the competency of the members of the board to render a decision on the patentability of his claimed invention. He argues:

[N]ot possessing ordinary skill in the art pertinent to the subject matter underlying the claimed invention, the Board is unqualified to render legally meaningful opinions related to what may or may not be obvious to a person who does possess ordinary skill in that art. This is so for the reason that the Board lacks the particular culture/literacy associated with that art; which therefore renders the Board incapable of properly comprehending/interpreting facts/circumstances/references/etc. associated with that art.

Nilssen's argument that the board's decision is invalid by reason of the members' lack of competency in the art relating to the claimed invention is rejected. The technical background and other professional qualifications of the particular Examiners-in-Chief are not legally relevant in an appeal to the board under 35 U.S.C. Sec. 134 (1982), just as the technical qualifications of a judge are irrelevant in a section 141 appeal to the Federal Circuit or under section 145 to the District Court for the District of Columbia. A board member need not possess "ordinary skill" in a particular art area to be qualified to render a patentability determination on a claimed invention drawn to that art. The correctness of a board's decision depends on whether the decision is supported by the record, not on the technical background of the Examiners-in-Chief who decided the appeal. Accord Lange v. Commissioner of Patents, 352 F.Supp. 116, 176 USPQ 162 (D.D.C.1972) (qualifications of lawfully appointed Examiners-in-Chief irrelevant in a section 145 proceeding), cited in In re Harry, 231 USPQ 984, 986 (Comm'r Pat.1986) (no basis for questioning the qualifications of lawfully appointed Examiners-in-Chief). See also Compagnie de Saint-Gobain v. Brenner, 386 F.2d 985, 987, 155 USPQ 417, 419 (D.C.Cir.1967) (examiner performs an administrative-adjudicatory function on the basis of the record before him; the issue on judicial review is whether his conclusions are supported by the record). The board's decision demonstrates that it understood the claimed invention and that it properly applied the legal standard of obviousness under section 103.

Hypothetical Person of Ordinary Skill in the Art

Obviousness is determined in terms of the level of skill of a "person having ordinary skill in the art" "at the time the invention was made." 35 U.S.C. Sec. 103 (1982 & Supp. IV 1986); Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 694, 15 L.Ed.2d 545, 148 USPQ 459, 467 (1966). Nilssen argues broadly that the characteristics attributed by the board to the hypothetical person of ordinary skill in the art are "manifestly absurd" and, thus, an improper interpretation of section 103. ² Specifically, Nilssen asserts that "it would be in manifest conflict with reality to assume that such a person would be familiar with all prior art references pertaining to [a] given art." (Emphasis in original.)

The board attributes to the "hypothetical person" knowledge of all prior art in the field of the inventor's endeavor and of prior art solutions for a common problem even if outside that field. That view accords with the plethora of this court's precedent. See, e.g., In re Deminski, 796 F.2d 436, 442, 230 USPQ 313, 315 (Fed.Cir.1986); Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454, ...