NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

IN RE: JOSEPH MICHAEL CONRAD, III, KURT

GANS BRISCOE,

Appellants

______________________

2018-1659

______________________

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 13/554,193.

______________________

Decided: March 22, 2019 

______________________

MATTHEW JAMES DOWD, Dowd Scheffel PLLC, Washington, DC, argued for appellants. Also represented by 

ROBERT JAMES SCHEFFEL; KURT GANS BRISCOE, Norris, 

McLaughlin & Marcus, PA, New York, NY. 

 JOSEPH GERARD PICCOLO, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, argued for appellee Andrei Iancu. Also represented by 

THOMAS W. KRAUSE, BENJAMIN T. HICKMAN, JOSEPH 

MATAL, PETER JOHN SAWERT. 

 ______________________

Before MOORE, O’MALLEY, and CHEN, Circuit Judges.

Opinion for the court filed by MOORE, Circuit Judge.
2 IN RE: CONRAD

O’MALLEY, Circuit Judge, concurs in the result.

MOORE, Circuit Judge.

Appellants Joseph Michael Conrad III and Kurt G. 

Brisco (collectively, “Conrad”) appeal from a decision of the 

Patent Trial and Appeal Board affirming the examiner’s 

rejection of claims 1–13 of U.S. Patent Application No. 

13/554,193 (the “’193 application”). For the reasons discussed below, we affirm.

BACKGROUND

Conrad is the named inventor of the ’193 application. 

The ’193 application is directed to a urine-deflecting device 

with a plurality of attachment tabs that attach the device 

to the underside of a toilet seat, and a bendable urine-deflector that blocks the opening between the toilet seat and 

the toilet bowl. Figure 7 shows a cross-sectional side-view 

of the urine-deflector attached to the underside of a toilet 

seat.

The ’193 application includes thirteen pending claims. 

The only independent claim, claim 1 is representative:

1. A potty training device comprising:
IN RE: CONRAD 3

a bendable urine-deflector;

a plurality of attachment tabs, wherein 

said plurality of attachment tabs are in 

contact with the top of said bendable urinedeflector and are permanently positioned 

substantially at right angles to the bendable urine-deflector; and

a means for attaching said potty training 

device to the underside of a toilet seat;

wherein the device lacks a folding seam between said bendable urine-deflector and 

said plurality of attachment tabs; and 

wherein said bendable urine-deflector can 

be positioned in a curved configuration and 

attached in said configuration via said 

means for attaching to the underside of 

said toilet seat to block an opening formed 

between the toilet seat and a toilet bowl to 

which said toilet seat is attached, and a 

surface of said bendable urine-deflector 

serves as a urine-deflecting surface to deflect a urine stream directed towards said 

opening into the toilet bowl. 

The examiner rejected the pending claims for obviousness over U.S. Pub. No. 2007/0151009 (the “’009 publication”) and U.S. Pub. No. 2007/0056086 (“Raviendran”). 

Conrad was also the named inventor of the ’009 publication, filed before the instant ’193 application. The ’009 publication, filed by Conrad in 2007, discloses a nearly 

identical urine-deflecting device to the one in the ’193 application. The examiner found that the ’009 publication 

discloses a bendable urine-deflector satisfying all limitations of the pending claims except that the urine-deflector 

in the ’009 publication did not have attachment tabs that 

are permanently positioned substantially at right angles 

and did not have a folding seam. The examiner found that 
4 IN RE: CONRAD

Raviendran discloses a urine-deflector that is integrally 

formed at a right angle with no folding seam. The examiner rejected all the claims of the ’193 application as obvious over the ’009 publication in view of Raviendran because 

a person of ordinary skill in the art would have combined

the urine-deflector of the ’009 publication with the seamless structure in Raviendran to “improve the structur[al]

integrity and strength of the connection between the urine 

deflector and attachment tabs.” J.A. 92.

Conrad appealed to the Board, arguing that the ’193 

application solved an unknown problem. He argued the 

urine-deflector of the ’009 publication included a folding 

seam, which created a shelf when installed where urine collected, creating a bad smell. He argued that the urine-collection problem was unknown until he identified and 

solved it by designing a urine-deflector that has no folding 

seam. Without addressing the examiner’s structural motivation to combine, Conrad argued that the Board should 

reverse the examiner’s rejections because the examiner did 

not consider the unknown urine-collection problem. 

The Board affirmed the examiner’s rejection. Conrad 

appealed. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(4)(A).

DISCUSSION

We review the Board’s factual determinations for substantial evidence and its legal determinations de novo. In 

re Van Os, 844 F.3d 1359, 1360 (Fed. Cir. 2017) (citing 

Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. 

Cir. 2015)). Obviousness is a question of law based on subsidiary fact findings. Id.

Conrad’s primary argument on appeal is a legal argument related to the test for obviousness. He argues that 

despite having found a motivation to combine the ’009 publication and Raviendran, the Board erred as a matter of law 

in not considering all possible motivations to combine. The 
IN RE: CONRAD 5

’193 application describes a discovery of an unknown problem associated with the folding seam in the urine-deflector 

disclosed in the ’009 publication. The folding seam created 

a shelf that collected urine, which over time became malodorous. Accordingly, the ’193 application aimed to solve 

that problem by removing the folding seam. Conrad argues 

Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 

U.S. 45 (1923), and In re Sponnoble, 405 F.2d 578 (CCPA 

1969), require the Board to consider an inventor’s alleged 

recognition (and solution) of an unknown problem in its determination of obviousness even if there is an alternate motivation to combine prior art references that is not in any 

way factually undermined by the inventor’s being the first 

to recognize or solve an additional problem with the prior 

art.1 

At oral argument, the government at times appeared 

to agree with Conrad’s legal contention. Oral Arg. at 

19:24–30 (“. . . we agree with his legal propositions that 

such evidence should be considered . . .”); see also Oral Arg.

at 23:07–31 (Judge: “. . . [does the law] require the Board 

to consider both, the articulation of a problem and consider 

 

1 At oral argument, Conrad argued that evidence of 

the unknown urine-collection problem was countervailing 

evidence to the structural motivation to combine the ’009 

publication and Raviendran set forth by the examiner. 

Oral Arg. at 12:42–45. It was not. Conrad’s motivation to 

create a seamless urine-deflector to solve the urine-collection problem does not contradict the examiner’s proposed 

structural motivation to combine references to achieve the 

same urine-deflector design; it is therefore not countervailing evidence. Conrad also argued that the examiner’s 

structural motivation to combine was insufficient, but he 

did not raise that argument in front of the Board. Oral Arg. 

at 2:10–25, 9:38–10:20. His failure to do so waived his ability to raise it on appeal.
6 IN RE: CONRAD

that as negative evidence of a motivation to combine alongside the articulation of the solution to a separate problem, 

which would be positive evidence, and they have to somehow weigh those two against each other? A: Yes, your 

honor. . .”); Oral Arg. 19:57–20:06 (“what the Board and examiner did was spot on because it considered both the prior 

art and his little evidence of a problem”); Oral Arg. at 

27:57–28:19 (“[a]ssuming it wasn’t considered by the 

Board, then it was harmless error because of the strong 

prima facie case”). Elsewhere at oral argument, the government seemed to recognize that the Board had no legal 

obligation to consider the additional, independent problem 

recognition, stating that “you don’t need the same reason 

to combine a reference,” id., and that, by considering the 

urine-collection problem “the Board did extra.” Oral Arg. 

21:48–50, see also 22:02–06 (“. . .the Board took the extra 

step to shore up the case totally. . .”). 

If we agreed that the law of obviousness required that 

the inventor’s particular motivation be considered irrespective of other independent, sufficient motivations a skilled 

artisan would have to make the claimed combination, then 

a remand would be warranted in this case. The Supreme 

Court and this court, however, have repeatedly held that

the motivation that a person of ordinary skill in the art 

would have had to combine prior art references need not be 

the same motivation that inspired the patent owner. KSR 

Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (“[A]ny 

need or problem known in the field of endeavor at the time 

of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”); 

In re Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006) (“[T]he 

skilled artisan need not be motivated to combine [a prior 

art reference] for the same reason contemplated by the [inventor]”); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) 

(“As long as some motivation or suggestion to combine the 

references is provided by the prior art taken as a whole, the 

law does not required that the references be combined for 
IN RE: CONRAD 7

the reasons contemplated by the inventor.”); In re Kronig, 

539 F.2d 1300, 1304 (CCPA 1976). “[T]he problem motivating the patentee may be only one of many addressed by the 

patent’s subject matter.” KSR, 550 U.S. at 420. 

Here, the examiner determined that a person of ordinary skill in the art would have combined the ’009 publication with the seamless configuration of Raviendran to 

improve the structural integrity and strength of connection 

between the urine-deflector and the attachment tabs. The 

Board affirmed the examiner’s determination and found 

that the urine-deflector resulting from the combination of 

the ’009 publication and Raviendran would solve the urinecollection problem even though the separate motivation to 

combine the references was structural. Given that Conrad 

never challenged the structural-based motivation to combine the ’009 publication with Raviendran below, the Board 

did not err. If there is one clear, unchallenged motivation 

to combine as in this case, the Board need not separately 

consider the inventor’s particular motivation. We find no 

legal error in the Board’s decision to rely on a motivation 

to combine other than the one which solved the problem 

identified by Conrad. 

Eibel Process and Sponnoble both stand for the proposition that the discovery of an unknown problem can result 

in a patentable invention, even if the solution would have 

been obvious once the problem is identified. Eibel Process, 

261 U.S. at 67–68; Sponnoble, 405 F.3d at 585. They did 

not address whether the Board must consider the discovery 

of an unknown problem when there exists an independent 

motivation to combine prior art references. Instead, those 

cases found that the inventor’s discovery of and solution to 

an unknown problem weighed in favor of non-obviousness 

because the proffered reason to modify the prior art did not 

present a specific, alternate basis that was unrelated to the 

rationale behind the inventor’s reasons for making the invention. Here, the examiner and the Board determined 

that a person of ordinary skill in the art would combine the 
8 IN RE: CONRAD

’009 publication with Raviendran for a reason independent 

from solving the problem identified by Conrad—to improve 

structural integrity by removing the folding seam. And 

this motivation to combine was not challenged by the patentee before the Board. 

CONCLUSION

For the foregoing reasons, we affirm the Board’s determination that claims 1–13 of the ’193 application are unpatentable.

AFFIRMED

COSTS

No Costs.