obviousness : CAFC Alert

The act of contemplation then creates the thing created (Isaac D’Israeli).

Adele Critchley | April 21, 2015

Kennametal, Inc., v. Ingersoll Cutting Tool Company.

March 25, 2015

Before: Newman and Linn. Opinion by Linn.


The CAFC affirmed the decision of the Patent Trial and Appeal Board (the “Board”) in an inter partes reexamination of U.S. Patent No. 7,244,519 (the ‘519 Patent) in which the Board (i) entered a new anticipation ground of rejection asserted by Ingersoll over US. Patent No. 6,554,548 (Grab); and (ii) affirmed the Examiner’s obviousness rejection.

The CAFC held that “contemplation” of a method in a prior art reference is sufficient disclosure for a rejection under §102. The CAFC further held that a finite number of solutions were present in Grab for the specific claimed combination, and that the motivation to select the specific combination was not undermined by the known problem of cobalt capping.

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Improper modification of cited art in obviousness determination: how to define “principle of operation” or “intended purpose” of the art

Yoshiya Nakamura | February 11, 2015

Plas-Pak Industries v. Sulzer Mixpak AG

January 27, 2015

Panel: Before Lourie, Moore, and Reyna. Opinion by Lourie.


Sulzer Mixpak AG is the owner of Patent No. 7,815,384 (“the 384 patent”).  Plas-Pak Industries (Plas-Pak) is a requester of inter partes reexamination against the 384 patent.  In the reexamination, the examiner decided that the claims of the 384 patent are NOT obvious, and PTAB affirmed the decision.  Plas-Pak appealed to CAFC and argued that PTAB erred in finding that proposed modifications of prior art apparatus are improper because the modifications could destroy a “principle of operation” or “intended purpose” of the prior art apparatus.  CAFC agreed with PTAB’s narrower definition of the “principle operation” or “intended purpose” of prior art and affirmed that the 384 patent are not obvious.

本判決は、引用例の組み合わせに基づく自明性の認定において、主要引用例に第2引用例の要素を組み合わせると主要引用例の動作原理(principle of operation)あるいは意図された目的(intended purpose)を損なう場合は、組み合わせの動機付けがないので自明ではないとした米国特許庁の判断を維持したものである。本件では、主要引用例の改変がその発明の目的達成に必要である要素を取り除くような改変となる場合、あるいは主要引用例の技術の相当な再構築を必要とする場合は引用例の組み合わせを否定すべきであるとされた。引用例の組み合わせは主要引用例の動作原理あるいは意図された目的を損なわない範囲で可能であるというルールは従前とおりであるが、本判決において、先行技術の発明が従来技術に対してどのような技術的貢献を目的としているのか、それをどのような要素あるいはどのようなやり方で達成しているのかに着目して、主要引用例の動作原理や目的の内容をより具体的に定義できることが示唆された。


I. Patented subject matter

The 384 patent relates to apparatuses for mixing, and dispensing multi-component paints.  The representative claim 1 recites:

1.  A device for applying a coating, comprising:

at least two cylindrical cartridges,

a static mixing nozzle in fluid communication with the cartridges,

a spray tip, in fluid communication with the nozzle,

a first flexible hose is disposed between and in fluid communication with the nozzle and the spray tip, and

a second hose, in fluid communication with the spray tip, for supplying atomization air to the spray tip.

II.   Issues and PTO’s decisions

Issue 1: whether there is an error in finding that modification of Fukuta’s apparatus with a mixing and dispensing apparatus (two cylindrical cartridges) of Morris would have changed the “principle of operation” of Fukuta.

Plas-Pak first argues that replacing the components upstream of the mixer 3 (the set of paint suppliers, pumps, and valves, or only the paint suppliers and pumps) in Fukuta’s apparatus with the cartridges 70 of Morris is a simple substitution of known elements.  Plas-Pak particularly argues that the proposed modification does not require a substantial reconstruction of Fukuta simply because the apparatus of Fukuta and the two-component cartridges of Morris are combinable and still able to work as a dispenser.

PTAB disagrees and finds that Fukuta’s “contribution to the art” is not to merely provide an apparatus for bringing a two component mixture, but rather to provide an apparatus with the arrangement and implementation of additional components such as check valves, stop valves, escape valves, etc. for preventing a backflow problem.  Based on the narrower definition of “principle of operation” of Fukuta, PTAB rejected the Plas-Pak’s argument.

Plas-Pak also argues that only the two-component (suppliers and pumps) of Fukuta’s apparatus can be substituted with the cartridges of Morris as such known actuators are generally an obvious variation.  PTAB disagrees and reasons that Plas-Pak still fails to show how such modification would avoid a substantial reconstruction,  PTAB appears to note that it is unknown whether “using the manually actuated mixing gun” of Morris can attain the result intended by Fukuta.

Asserted definitions of “principle of operation”










Morris's apparatus








Issue 2: whether there is an error in finding that modification of Jacobsen’s apparatus with a spray nozzle of Hunter would have rendered the “intended purpose” of Jacobsen inoperable.

Jacobsen discloses a liquid dispensing device for establishing leakproof by directing a fluid into cracks in an underlying structure, while Hunter teaches a conventional spray nozzle.  Plas-Pak first argues that modifying Jacobsen’s apparatus with the spray nozzle of Hunter “would have nothing more than predictable variations of prior art elements.”  PTAB disagrees with the Plas-Pak’s argument by finding that the requester fails to show how the specific function of Jacobsen can be attained by using the spray nozzle of Hunter.   PTAB then concludes that such modification of Jacobsen would render the prior art “unsuitable for its intended purpose of dispensing the components into cracks.”

Asserted definitions of “intended purpose”




III. CAFC decision

Regarding the combination of Fukuta with Morris (issue 1), CAFC agrees with PTAB’s narrower definition of Fukuta’s “principle of operation” and with their finding that the proposed modification would fundamentally alter the principle operation of Fukuta.  CAFC refers to the uniqueness of Fukuta’s invention by citing its disclosures: “the inventors of the present invention have proposed placing stop valves disposed between the junction and the check valve in addition to the construction of the conventional two-component mixing type coating apparatus described above,” and “the present invention [] is characterized . . . by closing the stop valves when the spraying operation of the gun is stopped.”  CAFC then holds that “the Board correctly limited Fukuta’s “principle of operation” to that specific functionality.”

Regarding the combination of Jacobsen with Hunter (issue 2), CAFC agrees with PTAB’s narrower definition of Jacobsen’s “intended purpose” and with the PTAB’s finding that Jacobsen’s dispensing system has the very “specific function of dispensing fluid materials directly into surface[] cracks to minimize leakage.”  CAFC notes that “[a]dding a spray nozzle as Plas-Pak suggests would necessarily undermine that express goal of Jacobsen, i.e., “dispensing fluid materials directly into cracks.”  CAFC also notes that Jacobsen does not teach how a spray nozzle might accomplish the “intended purpose” of “dispensing fluid materials directly into cracks.”   Based on the specific purpose of Jacobsen, CAFC agrees with the PTAB’s decision that modifying Jacobsen to accommodate the spray nozzle of Hunter would render Jacobsen “inoperable for its intended purpose of dispensing fluid materials directly into cracks.”

Take Away

This may be a good case to note if you want to attack the combinability of references where a proposed modification of a main reference would result in requiring substantial reconstruction of the art in the main reference, such as removing or replacing some elements required for the “invention” or “features” (its contribution to the art) of the main reference.

Full Opinion

Establishing a General Premise Does Not Satisfy the High Burden of Proving an Inherent Disclosure of a Claimed Feature under an Obviousness Rejection

Bernadette McGann | December 22, 2014

Par Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc.

December 3, 2014

Panel: O’Malley, Wallach, and HughesOpinion by O’Malley.


Patent 7,101,576 (hereinafter ‘576) is directed towards a method of using megestrol nanoparticles to increase the body mass in a human patient suffering from wasting.

The CAFC vacated a District Court judgment of invalidity of the ‘576 patent and remanded for further analysis.  The CAFC held that the District Court committed an error since the District Court analysis of inherency ignored the specific claim limitations at issue.

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What Do a Resealable Cartridge for Low Pressure Liquid Chromatography and a Soda-Pop Bottle and Cap Have In Common?

Adele Critchley | September 23, 2014

Scientific Plastic Products, Inc., v. Biotage AB.

September 10, 2014

Panel:  Newman, Moore and Wallach.  Opinion by Newman. Dissent by Moore.


The CAFC affirmed the Patent Trial and Appeal Board’s decision that all claims of the three disputed patents held by Scientific Plastic Products, Inc. (SPP) would have been obvious.

The CAFC held that the cited references, King and Strassheimer, both of which related to the sealing of a beverage container, were available as prior art against the claimed resealable cartridge for low pressure liquid chromatography (LPLC).

The CAFC held that although the cited reference Yamada failed to explicitly disclose a leakage problem, by “providing for the presence of an O-ring,” Yamada implicitly acknowledged that there is the potential for a leak. Further, the CAFC concluded that the inventors, in the patents in question, identified that the potential for leaks is a “known problem.”

Accordingly, the CAFC found adequate reason for one of ordinary skill in the art to turn to King or Strassheimer to improve the sealing arrangement set forth in Yamada.

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Somewhat unexpected results yield to strong evidence of obviousness to try

John M. Wang | August 8, 2014

Roche and Genentech v. Apotex Inc; Roche and Genentech v. Dr. Reddy’s laboratories; Roche and Genentech v. Watson etc.; Roche and Genentech v. Orchid chemicals & pharmaceuticals etc; and Genentech v. Mylan etc.

April 11, 2014

Before  Newman, Lourie, and Bryson.  Opinion by Bryson. Dissent by Newman


Plaintiff Roche appeals from the decision of the U.S. District Court for the District of New Jersey granting the defendant generic drug companies summary judgment of invalidity of Roche’s two patents related to Boniva®, a commercial drug for the treatment of osteoporosis. CAFC affirms.

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Post-filing recognition of a drug compound’s unexpected property may not be sufficient to establish the compound’s nonobviousness.

Cindy Chen | July 24, 2014

Bristol-Myers Squibb Company v. Teva Pharmaceuticals USA, Inc.

June 12, 2014


The Federal Circuit found that a patent claim directed to a drug compound for treating hepatitis B was invalid as an obvious modification to a structurally similar lead compound. In so finding, the Federal Circuit dismissed evidence of later discovery, after the time of invention, that the lead compound was highly toxic and therapeutically useless. The Federal Circuit then determined that evidence of the drug compound’s later-discovered unexpected lack of toxicity was insufficient to prove nonobviousness, despite additional evidence demonstrating the drug compound’s unexpectedly high potency and unexpectedly high barrier to resistance. The Federal Circuit’s decision may have taken some bite out of the court’s precedents that an invention’s properties and advantagesneed not be fully known as of the filing date of the patent application to be relevant to nonobviousness.

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Rob Raheja | December 18, 2013

in re Lutz Biedermann – CAFC Opinion

Decided October 18, 2013

Panel:  Linn (Opinion author), Moore and O’Malley


While the Examiner’s motivation to combine prior art references in his rejection was the efficiency of a square thread, the principal reason the Board affirmed the combination of these references was the use of square threads to avoid splaying. The Federal Circuit held that these are different grounds of rejection, and form the bases or underpinnings of different rejections. Therefore, the Federal Circuit found that because the Board made new findings and adopted different reasons to support a new ground of rejection, it had improperly deprived the applicant of both notice and an opportunity to respond.
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Patent Infringement Litigation as a Double-Edged Sword: Invalidated Patents and Inequitable Conduct

John M. Wang | December 6, 2013

The Ohio Willow Wood Company (OWW) v. ALPS South LLC. (Alps)

Decided November 15, 2013

Before Dyk (Circuit Judge), Bryson (Circuit Judge) and Reyna (Circuit Judge).  Opinion by Reyna.

Keywords: collateral estoppel, obviousness, inequitable conduct, reexamination, and rule of reason.


OWW initiated a suit against Alps for patent infringement.  After a long legal battle including two ex parte reexaminations, two District Court proceedings, and two CAFC appeals, OWW lost two patents and was charged with inequitable conduct.


OWW is the owner of US Patent No. 5,830,237 (the ‘237 patent), entitled “Gel and Cushioning Devices,” filed on March 5, 1996.  The ‘237 patent disclosed cushioning devices designed to cover the residual stumps of amputated limbs, acting as a shape-conforming buffer, as illustrated below, to make the use of attached prostheses more comfortable.  The primary invention was a cushion liner comprising a fabric covering in the shape of a tube sock coated on only one side with mineral oil-based polymeric gels.


On December 27, 2004, OWW filed its complaint against Alps for infringement of the ‘237 patent.  After the District Court issued its Claim Construction order in the proceedings, Alps filed its first request for an ex parte reexamination of the ‘237 patent.  The District Court stayed the litigation for the duration of reexamination proceedings, pending resolution of the validity of the disputed patent.
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“Ordinary Designer” Standard Should Be Used in Design Patent Obviousness Analysis

Kumiko Ide | October 24, 2013

High Point Design LLC, et al. v. Buyer’s Direct, Inc.

September 11, 2013

Panel: O’Malley, Schall, and Wallach. Opinion by Schall


This case addresses obviousness and functionality analysis for design patents.  The CAFC stated that the obviousness of a design patent must be analyzed from the perception of a designer of ordinary skill in the field to which the design pertains. With regards to functionality, a design that can perform functions can be protected under design patent so long as the claimed design is “primarily ornamental” and not “primarily functional.”


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CAFC Reminds the Patent Office to Play Fair When Issuing New Grounds of Rejection and Evaluating Objective Evidence of Non-Obviousness

Cindy Chen | October 3, 2013

Rambus Inc. v. Rea

September 24, 2013

Panel of Moore, Linn, and O’Malley, Opinion by Moore


The Court of Appeals for the Federal Circuit in Rambus Inc. v. Rea reminds Examiners and the Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board) that procedural checks remain in place for issuing new grounds of rejection. Examiners and the Board cannot bury a new ground of rejection in a decision, without ensuring that a patent applicant has had a fair opportunity to respond to the rejection. Indeed, whether the applicant has had a fair opportunity to react to the thrust of the rejection is reiterated as the ultimate determination of whether a rejection is considered “new”.

In line with the Federal Circuit’s recent decision in Leo Pharmaceutical Products v. Rea, Rambus is also a reminder that objective evidence of non-obviousness must be given due consideration and weight. Examiners and the Board cannot undercut an applicant’s objective evidence of non-obviousness through an overly stringent interpretation of the nexus and “commensurate in scope” requirements.

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