Case: 20-1816 Document: 26 Page: 1 Filed: 12/14/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: MATTHEW EARLEY,
Appellant
______________________
2020-1816
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 12/925,235.
______________________
Decided: December 14, 2020
______________________
MATTHEW EARLEY, Allenwood, NJ, pro se.
MARY L. KELLY, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for appellee
Andrei Iancu. Also represented by MICHAEL S. FORMAN,
THOMAS W. KRAUSE, AMY J. NELSON, FARHEENA YASMEEN
RASHEED.
______________________
Before PROST, Chief Judge, CLEVENGER and TARANTO,
Circuit Judges.
PER CURIAM.
Matthew Earley is the named inventor on U.S. Patent
Application No. 12/925,235 (the ’235 application), titled
“Fixed Pitch Wind (or Water) Turbine with Centrifugal
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2 IN RE: EARLEY
Weight Control (CWC).” The examiner rejected claims 26–
29 of the ’235 application for obviousness based on one of
Mr. Earley’s prior patents, i.e., U.S. Patent No. 6,949,842
(the ’842 patent), in combination with U.S. Patent No.
3,942,026 (Carter) and U.S. Patent Publication No.
2010/0207396 (Simon). The Patent Trial and Appeal Board
affirmed the examiner’s rejections. We affirm the Board.
I
The ’235 application, filed on October 18, 2010, involves
fixed-pitch wind or water turbines with centrifugal weight
control. J.A. 30. For this appeal, the application’s disclo-
sures on wind turbines are most relevant. The application
builds on Mr. Earley’s ’842 patent and uses that earlier pa-
tent’s “control solution”—a centrifugal-weight-control as-
sembly. J.A. 31. This application describes “an
implementation” that “extend[s] the low speed shaft down
the length of the tower” of a wind turbine. J.A. 31. Accord-
ing to the ’235 application, “extending the low speed shaft
down the length of the tower also means you can move
other major components down, including [a] generator and
[a] gearbox,” resulting “in several compelling advantages.”
J.A. 31. The centrifugal-weight-control “configuration is
horizontal (perpendicular to [the] vertical low speed
shaft).” J.A. 32.
Figure 1 illustrates the wind-turbine embodiment:
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IN RE: EARLEY 3
J.A. 35.
The specification asserts that this configuration is an
improvement over the prior art. It says: “Employing [cen-
trifugal weight control] (in lieu of pitch or stall solutions)
in conjunction with induction generator torque, enables on
demand control of necessary amounts of opposing torque to
manage rotor speed in gusty and increasing wind speeds
through cut-out . . . typically 25 meters per second.” J.A.
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4 IN RE: EARLEY
31 (second alteration in original). “Current technology cap-
tures and transforms less than half of the energy content
available,” the specification states, explaining that, in the
prior art, “the operating speed [for wind turbines] is typi-
cally up to 25 m/s” but the “rated power is typically reached
at 14 or 15 m/s.” J.A. 30. The arrangement in the ’235
application purports to use more of the available energy.
Claim 26 is representative and recites:
A wind turbine for the production of in-
creasing amounts of energy in increasing
wind speeds up to cut-out at 25 m/s [c]ompris-
ing:
a supporting framework including:
an elevated platform for the swiveling
movement about a vertical axis;
a supporting tower;
a rotor with fixed pitch blades;
a horizontal low speed shaft that couples to
said rotor for rotation with said rotor;
a right angle gearbox that journals said
horizontal shaft to input of said right angle
gearbox;
an extended vertical shaft that journals to
output side of said right angle gearbox;
a centrifugal weight control apparatus that
drivingly connects to said extended vertical
shaft at base of tower;
a multi-geared transmission having a low
speed input connected to said extended vertical
shaft;
a high speed output of said multi-geared
transmission;
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IN RE: EARLEY 5
a clutch that journals to said high speed
output[; and]
an induction generator that operatively
connects to said clutch for rotation at desired
speeds.
J.A. 756 (emphasis added).
II
A
The examiner and the Board relied on three prior-art
references—the ’842 patent, Carter, and Simon—for reject-
ing representative claim 26.
The ’842 patent: “Centrifugal Weight Control for a Wind
or Water Turbine.” The ’842 patent lists Mr. Earley as the
inventor and describes a “centrifugal weight control” as-
sembly that “control[s] rotor speed” while wind (or water)
speed changes. ’842 patent, col. 2, lines 14–18. The assem-
bly includes weights that can be moved away from or to-
ward the rotational axis to change the inertial force.
Id.,
col. 2, lines 30–50. By adjusting the location of the weights
while the overall assembly rotates, the centrifugal-weight-
control assembly can maintain the wind turbine’s operat-
ing speed while increasing rolling torque, which allows
generators to capture energy.
Id. The general concept is
similar to changing gears on a bike. Unlike the ’235 appli-
cation, the centrifugal-weight-control assembly of the ’842
patent is essentially parallel to the blades of a wind turbine
and not connected to a vertical shaft.
Figure 1 shows the placement of the assembly:
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6 IN RE: EARLEY
’842 patent, fig. 1.
Carter: “Wind Turbine with Governor.” Carter “gener-
ally relates to a wind driven turbine assembly for driving a
generator or generators in a manner to produce electrical
energy in response to rotation of the wind turbine.” Carter,
col. 1, lines 6–9. Carter describes “a wind turbine assembly
including a single vertical drive shaft drivingly connected
to a generator assembly and a governor assembly for con-
trolling the rotational speed of the drive shaft by connect-
ing additional generators to the drive shaft for increasing
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IN RE: EARLEY 7
the load thereon.”
Id., col. 1, lines 37–43. “The horizontal
shaft is drivingly connected to a vertical shaft which drives
a generator assembly at the lower end of the supporting
framework. A wind vane assembly is connected to the
turntable and a governor assembly is drivingly connected
to the horizontal shaft for controlling the rotational speed
of the wind wheels and horizontal shaft.”
Id., Abstract.
Figure 1 shows the location of the transmission and
generator at the base of the turbine:
Carter, fig. 1.
Simon: “Power Generating System.” This prior-art ref-
erence describes “[a] system for converting wind power to
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8 IN RE: EARLEY
electrical power comprising a transmission module with
multiple power flows to an output and a first generator cou-
pled to the output.” Simon, Abstract. In particular, Simon
describes a “power conversion module 18” with “an induc-
tion generator, which provides a cost-effective machine for
converting the rotational energy to electricity for power to
the grid 22.”
Id., ¶ 26. Simon also describes a multi-geared
transmission, namely, “a transmission 30 selectable be-
tween at least two gear ratios, for example[,] a three (or
more) speed transmission, coupled between the turbine 10
for receiving wind energy and at least one generator 36 in
the power conversion module 18.”
Id., ¶ 30.
B
On January 6, 2017, the examiner issued Mr. Earley a
final rejection of claims 26–29 for obviousness over the
combination of the ’842 patent, Carter, and Simon. J.A.
598 (Final Rejection). The examiner determined that the
’842 patent disclosed all claim elements except (1) an ex-
tended vertical shaft, (2) a gearbox with a multi-geared
transmission, and (3) an induction-type generator. J.A.
598–99. As to “an extended vertical shaft,” the examiner
concluded that “[i]t would have been obvious to one skilled
in the art at the time the invention was made to use the
extended vertical shaft disclosed by Carter on the support-
ing tower disclosed by [the ’842 patent] for the purpose of
providing mechanical power to a generator located at the
base of a tower.” J.A. 600. As to “a gearbox with a multi-
geared transmission” and “an induction-type generator,”
the examiner determined:
It would have also been obvious to one skilled
in the art at the time the invention was made to
use the multi-speed transmission (in lieu of the
multi-geared transmission disclosed by [the ’842
patent]) and an induction generator (in lieu of the
generator disclosed by [the ’842 patent] or the gen-
erator disclosed by Carter) disclosed by Simon on
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IN RE: EARLEY 9
the wind turbine disclosed by [the ’842 patent] for
the purpose of providing multiple high-speed out-
puts instead of a single high-speed output from the
transmission and providing “a cost-effective ma-
chine for converting the rotational energy to electric-
ity.”
J.A. 600 (quoting Simon, ¶ 26).
On November 14, 2019, the Board affirmed the exam-
iner’s rejections. Ex parte Earley, 2019 Pat. App. LEXIS
10527, *2 (P.T.A.B. November 14, 2019). In reaching that
result, the Board rejected three arguments. The Board
first explained that the ’842 patent’s “wind turbine in-
cludes the same structural elements that [Mr. Earley] dis-
closes are responsible for the functional limitations recited
in claim 26’s preamble.”
Id. at *9–10
(citation omitted).
For that reason, explained the Board, “the burden was on
[Mr. Earley] to show that [the ’842 patent’s] wind turbine
as modified by the suggestions in the other prior art refer-
ences would not inherently perform the same function re-
cited in claim 26.”
Id. at *1
0.
Because Mr. Earley did not
“direct” the Board “to any objective evidence,” he did not
meet the burden.
Id. Next, the Board rejected Mr. Earley’s
challenge of the motivation to combine the three prior-art
references. The Board accepted the examiner’s explana-
tion that a relevant artisan would have used the vertical
shaft taught in Carter “for the purpose of providing me-
chanical power to a generator located at the base of a
tower.”
Id. at *5–6.
As to Simon, the Board found that a
relevant artisan “would have implemented an induction
generator in [the ’842 patent] for the purpose of providing,
inter alia, a cost-effective machine for converting the rota-
tional energy to electricity.”
Id. at *1
1–12.
Last, the Board
rejected Mr. Earley’s contention that the ’235 application’s
claimed invention achieves unexpected results.
Id. at *1
2–
13.
The Board reasoned that Mr. Earley did “not direct us
to objective, experimental data comparing the claimed
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10 IN RE: EARLEY
invention against the closest prior art,” so his argument
was “unsupported” and “unpersuasive.”
Id. at *1
2.
Mr. Earley requested a rehearing, arguing that the
Board relied on a new ground of rejection. On January 27,
2020, the Board maintained its affirmance of the exam-
iner’s rejection, but because of Mr. Earley’s “pro se status
and the complex nature of this prosecution,” the Board
thought it was “appropriate to designate [its earlier] affir-
mance as a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).” Ex parte Earley, Appeal 2019-000815,
2020
WL 489476, at *3 (P.T.A.B. Jan. 27, 2020). Based on that
designation, the Board gave Mr. Earley two options to ad-
dress the ground: reopen prosecution or request a rehear-
ing.
Id.
Mr. Earley chose to request a rehearing. On March 11,
2020, the Board denied that (second) request for rehearing
on the merits. Ex parte Earley, Appeal 2019-000815,
2020
WL 1286056, at *2–3 (P.T.A.B. Mar. 11, 2020). Mr. Earley
contended that Simon’s induction generator could not meet
the capability in the preamble because “[a]n induction gen-
erator with a 12 m/s rating would render the claimed in-
vention inoperable for its intended use—i.e., where [t]he
claimed invention is unique in its ability to generate in-
creasing amounts of energy through 24 m/s.”
Id. at *1
(in-
ternal quotation marks omitted). The Board rejected that
contention because it was “not supported by objective evi-
dence (e.g., a sworn declaration).”
Id. Mr. Earley also as-
serted that the ’842 patent’s centrifugal-weight-control
assembly would “inherently” act as “a very large air brake,”
causing the capability requirement of the new application’s
preamble not to be met.
Id. at *2.
The Board rejected the
assertion, stating that it was “based merely on conclusory
statements that are not accompanied by any objective evi-
dence (e.g., declaration evidence) providing detailed specif-
ics of the systems used for comparison.”
Id.
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IN RE: EARLEY 11
Mr. Earley timely appealed. We have jurisdiction un-
der 35 U.S.C. § 141(a) and 28 U.S.C. § 1295(a)(4)(A).
III
Accepting that claim 26 is representative, Mr. Earley
challenges the Board’s determination of obviousness of
claim 26 based on the ’842 patent, Carter, and Simon. The
ultimate obviousness determination under 35 U.S.C. § 103
is a matter of law based on underlying factual findings,
which include “the scope and content of the prior art, the
differences between the prior art and the claimed inven-
tion, the level of ordinary skill in the art, the presence or
absence of a motivation to combine or modify with a rea-
sonable expectation of success, and objective indicia of non-
obviousness.” Ariosa Diagnostics v. Verinata Health, Inc.,
805 F.3d 1359, 1364 (Fed. Cir. 2015). We review the
Board’s ultimate obviousness determination de novo and
its underlying factual findings for substantial-evidence
support. In re Varma,
816 F.3d 1352, 1359 (Fed. Cir. 2016).
Our review for substantial-evidence support “ask[s]
whether a reasonable fact finder could have arrived at the
agency’s decision, which requires examination of the record
as a whole, taking into account evidence that both justifies
and detracts from an agency’s decision.” Personal Web
Technologies, LLC v. Apple, Inc.,
848 F.3d 987, 991 (Fed.
Cir. 2017) (cleaned up).
A
Mr. Earley challenges the Board’s finding that a rele-
vant artisan would have a motivation to combine teachings
of the ’842 patent, Carter, and Simon to arrive at claim 26’s
structure with a reasonable expectation that the result
would be capable, as required by claim 26’s preamble, of
“the production of increasing amounts of energy in increas-
ing wind speeds up to cut-out at 25 m/s.” First, Mr. Earley
asserts that use of Simon’s induction generator would
make the combination inoperable. Second, Mr. Earley as-
serts that the ’842 patent’s centrifugal-weight-control
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12 IN RE: EARLEY
assembly is “very different” from the claimed invention and
would not have the preamble-required capability. Op. Br.
8. We reject these contentions.
At the core of these contentions, which focus as a sub-
stantive matter on a reasonable expectation of success, is a
challenge to the Board’s demand for objective evidence. We
address that challenge through the framework applicable
during prosecution (in contrast to district-court litigation).
“[T]he concept of prima facie obviousness establishes the
framework for the obviousness determination and the bur-
dens the parties face” during patent examination. ACCO
Brands Corp. v. Fellowes, Inc.,
813 F.3d 1361, 1365 (Fed.
Cir. 2016); see also In re Brandt,
886 F.3d 1171, 1176 (Fed.
Cir. 2018) (describing the prima facie framework as well).
“Under this framework, the patent examiner must first set
forth a prima facie case, supported by evidence, showing
why the claims at issue would have been obvious in light of
the prior art.” ACCO
Brands, 813 F.3d at 1365. “Once the
examiner sets out this prima facie case, the burden shifts
to the patentee to provide evidence, in the prior art or be-
yond it, or argument sufficient to rebut the examiner’s evi-
dence.”
Id. at 1365–66.
“The examiner then reaches the
final determination on obviousness by weighing the evi-
dence establishing the prima facie case with the rebuttal
evidence.”
Id. at 1366.
“If this weighing shows obviousness
by a preponderance of the evidence, then the claims at is-
sue were unpatentable.”
Id. “This burden-shifting frame-
work makes sense during patent examination because an
examiner typically has no knowledge of objective consider-
ations, and those considerations ‘may not be available until
years after an application is filed.’” In re
Brandt, 886 F.3d
at 1176.
“The reasonable expectation of success requirement re-
fers to the likelihood of success in combining references to
meet the limitations of the claimed invention.” Intelligent
Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
821 F.3d
1359, 1367 (Fed. Cir. 2016). A relevant artisan’s
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IN RE: EARLEY 13
“expectation of success need only be reasonable, not abso-
lute.” Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348, 1364,
1367–68 (Fed. Cir. 2007). “This court has long rejected a
requirement of conclusive proof of efficacy for obviousness.”
Acorda Therapeutics, Inc. v. Roxane Labs., Inc.,
903 F.3d
1310, 1333 (Fed. Cir. 2018) (cleaned up).
1
Substantial evidence supports the Board’s finding that
a relevant artisan would “modif[y]” Simon’s induction gen-
erator—specifically, would “size and select an induction
generator as suggested by Simon to match the enhanced
capabilities of [the ’842 patent’s centrifugal-weight-control
assembly]” in order to produce more energy, Ex parte Ear-
ley,
2020 WL 1286056, at *1, i.e., “increasing amounts of
energy increasing wind speeds up to cut-out at 25 m/s,” as
required in claim 26’s preamble. Mr. Earley disputes that
finding because Simon’s generator could not be physically
combined with the ’842 patent. But the correct inquiry is
not limited to “an actual, physical substitution of ele-
ments”; “the test for obviousness is what the combined
teachings of the references would have suggested to” a rel-
evant artisan. In re Mouttet,
686 F.3d 1322, 1332–33 (Fed.
Cir. 2012); see also In re Applied Materials, Inc.,
692 F.3d
1289, 1298 (Fed. Cir. 2012) (“A reference must be consid-
ered for everything that it teaches, not simply the de-
scribed invention or a preferred embodiment.”); KSR Int’l
Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (obviousness
inquiry must “take account of the inferences and creative
steps that a person of ordinary skill in the art would em-
ploy”). The Board here properly relied on the “technical
grasp of a person having ordinary skill in the art.” Ex parte
Earley,
2020 WL 1286056, at *1.
The Board could reasonably determine that there was
no evidence that justified a different finding about a rele-
vant artisan’s modification of the specific Simon generator.
Mr. Earley, who relies only on Simon’s specification, has
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14 IN RE: EARLEY
not shown otherwise. Mr. Earley repeatedly notes that Si-
mon’s specification is in miles per hour rather than meters
per second. See Op. Br. 1 (“Examiner does err when he fails
to understand that the quantitative work found in the prior
art of Simon is accomplished in mph (miles per hour) and
not m/s (meters per second).”); see also Op. Br. 3–4. To the
extent that Mr. Earley suggests that the Board’s finding
fails because a relevant artisan would not convert the units
from mph to m/s based on a very simple multiplicative re-
lationship, he has not pointed to any evidence to support
that implausible suggestion. Mr. Earley otherwise relies
on aspects of Simon’s specific induction generator, but that
reliance does not undermine the Board’s finding that a rel-
evant artisan would alter Simon’s specific generator to
achieve the 25 m/s capability.
2
Mr. Earley argues that the Board erred in failing to ac-
cept his assertion that a relevant artisan would not have a
reasonable expectation of success in using the ’842 patent’s
disclosure of a centrifugal weight control. Mr. Earley gives
two reasons. We find neither sufficient to show error.
First, Mr. Earley asserts that using the ’842 patent’s
centrifugal-weight-control assembly on a vertical shaft
would render the combination “inoperable.” Op. Br. 6–7.
Specifically, Mr. Earley asserts that “[t]he jackscrews and
guides” of the ’842 patent could not “support the amount of
weight that is called for” in the claimed invention. Op. Br.
7. The Board properly rejected this assertion as “based
merely on conclusory statements that are not accompanied
by any objective evidence (e.g., declaration evidence)
providing detailed specifics of the systems used for compar-
ison.” Ex parte Earley,
2020 WL 1286056, at *2. The Board
also properly explained that Mr. Earley’s arguments about
what the ’842 patent’s centrifugal-weight-control assembly
could not do relied on properties or features not actually
required by claim 26—“e.g., a limitation on air brake size,
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IN RE: EARLEY 15
the exclusion of an aerodynamic means, a [centrifugal-
weight-control] diameter, ability to extend or retract
weights totaling eight thousand pounds, or induction gen-
erator rating.”
Id. at *2.
Second, Mr. Earley contends that a relevant artisan
would “certainly see” the centrifugal-weight-control assem-
bly in the ’842 patent as an “air brake” that would cause a
“drag force,” preventing the combined prior art from having
the capability required by claim 26’s preamble. Op. Br. 8;
Reply Br. 4. Like his arguments for Simon’s induction gen-
erator, Mr. Earley’s contention addresses the wrong ques-
tion. It focuses only on the specific apparatus of the ’842
patent. It does not undermine the Board’s finding about
the ’842 patent’s overall teachings on the centrifugal-
weight-control assembly and Carter’s teachings on the lo-
cation of the assembly, among other components, at the
base of the support staff.
B
Mr. Earley also presents two challenges to the Board’s
inherency reasoning in finding that the combination of the
prior-art teachings would be a structure having the capa-
bility required by claim 26’s preamble. We reject both chal-
lenges.
1
Mr. Earley argues that the Board issued a new ground
of rejection when, in rejecting his second request for re-
hearing on the merits, the Board stated: “although we ap-
preciate that claim 26’s preamble language recites a new
capability rather than merely an intended use, this capa-
bility was already disclosed in [the ’842 patent] . . . .” Ex
parte Earley,
2020 WL 1286056, at *1; Op. Br. 5. We disa-
gree.
When the Board relies on “a new ground of rejection
not relied upon by the examiner, the applicant is entitled
to reopen prosecution or to request a rehearing.” In re
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16 IN RE: EARLEY
Leithem,
661 F.3d 1316, 1319 (Fed. Cir. 2011) (citing 37
C.F.R. § 41.50(b)). “Whether the Board relied on a new
ground of rejection is a legal question that we review de
novo.” In re Stepan Co.,
660 F.3d 1341, 1343 (Fed. Cir.
2011). “The ultimate criterion of whether a rejection is con-
sidered new in a decision by the Board is whether appli-
cants have had fair opportunity to react to the thrust of the
rejection.” In re
Leithem, 661 F.3d at 1319 (cleaned up); see
also In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (“It is
well-established that the Board is free to affirm an exam-
iner’s rejection so long as ‘appellants have had a fair oppor-
tunity to react to the thrust of the rejection.’”). Mr. Earley
had such an opportunity in his second rehearing.
In its first rehearing decision, the Board specifically ex-
plained how the examiner properly “pointed out that a
claim to an apparatus must be distinguished patentably
from the prior art in terms of structure rather than func-
tion”—the same point made in the second rehearing deci-
sion. Ex parte Earley,
2020 WL 489476, at *2. Because of
Mr. Earley’s “pro se status and the complex nature of this
prosecution,” the Board in the first rehearing decision “des-
ignated” its reasoning a new ground of rejection and gave
Mr. Earley “two options”: (1) reopen prosecution or (2) re-
quest a rehearing.
Id. at *3.
By taking the rehearing op-
tion, Mr. Earley had a fair opportunity to address this
ground of rejection—which was not materially changed by
the Board’s second rehearing decision. See In re Black, 778
F. App’x 911, 918 (Fed. Cir. 2019) (concluding that the ap-
plicant’s “opportunity to respond to the Board’s grounds for
rejection in the Request for Rehearing” was sufficient).
2
On the merits, the Board did not commit reversible er-
ror. “We have recognized that inherency may supply a
missing claim limitation in an obviousness analysis.” PAR
Pharm., Inc. v. TWI Pharm., Inc.,
773 F.3d 1186, 1194–95
(Fed. Cir. 2014). Inherency is a question of fact.
Id. at
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IN RE: EARLEY 17
1194; In re Napier,
55 F.3d 610, 613 (Fed. Cir. 1995). “In-
herency . . . may not be established by probabilities or pos-
sibilities.” PAR
Pharm., 773 F.3d at 1195. “The mere fact
that a certain thing may result from a given set of circum-
stances is not sufficient.”
Id. A party must instead “show
that the natural result flowing from the operation as
taught would result in the performance of the questioned
function.”
Id.
In the present case, the Board stated that Mr. Earley’s
own application points to certain structural features as re-
sponsible for the preamble-required functional capability,
that the ’842 patent (being combined with teachings from
Carter and Simon) had the same structural features, and
that the combination therefore would have the functional
capability, unless objective evidence showed otherwise:
Because [the ’842 patent] wind turbine in-
cludes the same structural elements that [Mr. Ear-
ley’s present application] discloses are responsible
for the functional limitations recited in claim 26’s
preamble, the burden was on [Mr. Earley] to show
that [the ’842 patent’s] wind turbine as modified by
the suggestions in the other prior art references
would not inherently perform the same function re-
cited in claim 26. [Mr. Earley] does not direct us to
any objective evidence in satisfaction of meeting
that burden.
Ex parte Earley, 2019 Pat. App. LEXIS 10527, at *9–10.
That inherency reasoning is proper under the prima facie
framework.
Indeed, the Board needs only a “sound basis for believ-
ing” that the combined teachings of the prior art’s structure
results in the functional limitation. In re Spada,
911 F.2d
705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound
basis for believing that the products of the applicant and
the prior art are the same, the applicant has the burden of
showing that they are not.”); see also In re Ikeda Food
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18 IN RE: EARLEY
Research Co., Ltd., 758 F. App’x 952, 957 (Fed. Cir. 2019)
(obviousness case citing In re
Spada, 911 F.2d at 708, for
the sound-basis proposition); In re Best,
562 F.2d 1252,
1255 (C.C.P.A. 1977) (“Where, as here, the claimed and
prior art products are identical or substantially identical,
or are produced by identical or substantially identical pro-
cesses, the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess
the characteristics of his claimed product.”); Southwire Co.
v. Cerro Wire LLC,
870 F.3d 1306, 1311 (Fed. Cir. 2017)
(adopting In re Best’s burden-of-production framework).
The burden thus shifted to Mr. Earley to produce evidence
to rebut the Board’s initial finding. Mr. Earley did not do
so. The Board’s finding is supported by substantial evi-
dence.
IV
We have considered Mr. Earley’s other arguments and
find them unpersuasive. For the reasons we have stated,
we affirm the Board’s conclusion that claims 26–29 of the
’235 application are unpatentable for obviousness.
Each party shall bear its own costs.
AFFIRMED
