103‎ > ‎

not in mpep

103 - cases cited in BPAI decisions that are not now or are no longer in MPEP 2100
In sustaining a multiple reference rejection under 35 U.S.C. § 103(a), the Board may rely on one reference alone without designating it as a new ground of rejection. In re Bush, 296 F.2d 491, 496 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966).


Two criteria are relevant in determining whether prior art is analogous: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). Wyers v. Master Lock Co., App. No. 2009-1412, 2010 WL 2901839, at *4 (Fed. Cir. July 22, 2010).

"[T]he best defense against the subtle but powerful attraction of a hindsight-based obviousness analysis is rigorous application of the requirement for a showing of the teaching or motivation to combine [the] references." In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999). The motivation, suggestion or teaching may come explicitly from statements in the prior art, the knowledge of one of ordinary skill in the art, or, in some cases the nature of the problem to be solved. Id.
Invention or discovery is the requirement which constitutes the foundation of the right to obtain a patent . . . unless more ingenuity and skill were required in making or applying the said improvement than are possessed by an ordinary mechanic acquainted with the business, there is an absence of that degree of skill and ingenuity which constitute the essential elements of every invention. Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood, 52 U.S. 248, 267 (1850))

“Although it is well settled that comparative test data showing an unexpected result will rebut a prima facie case of obviousness, the comparative testing must be between the claimed invention and the closest prior art.” In re Fenn, 639 F.2d 762, 765 (CCPA 1981) (emphasis added).

In proceedings before the Patent and Trademark Office, the Examiner bears the burden of establishing a prima facie case of obviousness based upon the prior art. In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992). On appeal to this Board, Appellants must show that the Examiner has not sustained the required burden. See Ex parte Yamaguchi, 88 USPQ2d 1606, 1608 and 1614 (BPAI 2008) (precedential); Ex parte Fu, 89 USPQ2d 1115, 1118 and 1123 (BPAI 2008) (precedential).
Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.").
In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (“The mere fact that the prior art may be modified in the manner suggested by the Examiner does not make the modification obvious unless the prior art suggested the desirability of the modification.”).
As the court explained in In re Fritch, rather than relying on reasoning grounded in hindsight, the Examiner must advance an evidence-based explanation to support a conclusion that it would be obvious to modify an apparatus in a particular manner. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“The mere fact that the prior art may be modified in the manner suggested by the Examiner does not make the modification obvious unless the prior art suggested the desirability of the modification.”). Thus, “[i]t is impermissible to use the claimed invention as an instruction manual or „template‟ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” Id.

[W]hen the claimed structure performs differently from the prior art, a finding of obvious design choice is precluded. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious design choice precluded when claimed structure and the function it performs are different from the prior art).


Establishing long-felt need requires objective evidence showing existence of a persistent problem recognized by those of ordinary skill in the art for which a solution was not known. In re Gershon, 372 F.2d 535, 539 (CCPA 1967).


See Haynes Int’l, Inc. v. Jessop Steel Co., 8 F.3d 1573, 1577, n.3 (Fed. Cir. 1993) (“when the difference between the claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in range or value is minor.”);
“We must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008).

“[K]nowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references to reach the particular claimed method.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008).


In addition, one skilled in the art must be presumed to know something about the art apart from what the references disclose. In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).


In order for a showing of unexpected results to overcome the teachings of the prior art, the results presented must be commensurate in scope with the claims. See In re Kollman, 595 F.2d 48 (CCPA 1979).


Expectation of success is assessed from the perspective of a person of ordinary skill in the art, at the time the invention was made. Life Techs., Inc. v. Clontech Labs., Inc. , 224 F.3d 1320, 1326 (Fed. Cir. 2000).

To sustain a conclusion of obviousness, the prior art must provide a reasonable expectation of success for modifying a known method. E.g., Medichem, S.A. v. Rolabo, S.L. , 437 F.3d 1157, 1165 (Fed. Cir. 2006).
As stated in Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006):

[O]bviousness must be determined in light of all the facts, and there is no rule that a single reference that teaches away will mandate a finding of nonobviousness. Likewise, a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine. See [Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000)] ("The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.").

Because claims 24 and 25 include all the limitations recited in claim 23, we conclude claim 23 must have been obvious based on our conclusion of obviousness of claims 24 and 25. See Ormco v. Align Tech., 498 F.3d 1307, 1319 (Fed. Cir. 2007) (when a dependent claim is “found to have been obvious, the broader claims . . . must also have been obvious”).

see also, Para-Ordnance Manufacturing v. SGS Importers International Inc., 73 F.3d 1085, 1090 (Fed Cir. 1995) (a warning against use of an element, rather than omission of mention of the element, is required to find teaching away).

"Common sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning and where there is a factual foundation from which the analysis flows." Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328 (Fed. Cir. 2009). Our reviewing court has explained that “the use of common sense does not require a ‘specific hint or suggestion in a particular reference,’ only a reasoned explanation that avoids conclusory generalizations.” Id. at 1329 (quoting DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1366 (Fed. Cir. 2006)).
See, e.g., In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) ("hindsight" is inferred when the specific understanding or principal within the knowledge of one of ordinary skill in the art leading to the modification of the prior art in order to arrive at appellant’s claimed invention has not been explained);

To establish prima facie obviousness of a claimed invention, all the claim limitations must be taught or suggested by the prior art. See In re Royka, 490 F.2d 981, 985 (CCPA 1974).
see also In re Sebek, 465 F.2d 904, 907 (CCPA 1972) (“Where . . . the prior art disclosure suggests the outer limits of the range of suitable values, and that the optimum resides within that range, and where there are indications elsewhere that in fact the optimum should be sought within that range, the determination of optimum values outside that range may not be obvious.”).

In other words, it is improper to base a conclusion of obviousness upon facts gleaned only through hindsight. “To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.” Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)). “The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made.” Id. (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)).

Skill in the art is presumed. In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985).
Further, although § 103 does not define what is meant by "prior art," this determination is frequently couched in terms of whether the art is analogous or not, i.e., whether the art is "too remote to be treated as prior art." In re Sovish, 769 F.2d 738, 741 (Fed. Cir. 1985).

One of ordinary skill in the art is presumed to have skills apart from what the prior art references expressly disclose. In re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985).

Thus, in an obviousness rejection, the prior art must provide a reference process as well as evidence that the modifications necessary to obtain the claimed process would have been obvious. (Cf. the role of the requirement, under some circumstances, that the prior art provide a “lead compound” when considering the obviousness of a chemical compound, discussed in Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd. , 492 F.3d 1350, 1356-57 (Fed. Cir. 2007)).
Applying KSR, the Federal Circuit has stated that “in cases involving new chemical compounds, it remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound.” Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1357 (Fed. Cir. 2007).

Where the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, the proposed modification would not have been obvious. See
Tec Air Inc. v. Denso Mfg.Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999);
See In re Winslow, 365 F.2d 1017, 1020 (CCPA 1966) (“We think the proper way to apply the 103 obviousness test to a case like this is to first picture the inventor as working in his shop with the prior art references—which he is presumed to know—hanging on the walls around him. . . . Section 103 requires us to presume full knowledge by the inventor of the prior art in the field of his endeavor.”).