We’ve all been there. The Office Action for your client’s latest US patent application contains an inventive step objection based on the combination of two documents. The documents together appear to be relevant to your main claim but the client swears blind that the documents would never be combined to arrive at the invention. What do you do? How can you argue against such a combination of prior art. Well, here is a brief compilation of relevant US cases bearing on the obviousness of combinations*.

Is there a reason to combine?

In Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) the mere fact that elements separately existed in the cited prior art was not held to render the invention obvious. For obviousness, there must be proof of a legally sufficient “reason to combine” as well.  In the same case it was noted that where a reason to combine the documents is absent, it cannot be assumed that the artisan would be “awakened” to modify the prior art. It is also noted that this case also cautions about the dangers of hindsight bias.

A case that similarly touched upon the combination of prior art documents is Synopsys, Inc. v. Mentor Graphics Corp., IPR2012-00041, Paper No. 16, at 14 (22 Feb. 2013). In this instance an obviousness challenge was dismissed as the petitioner “does not clearly provide analysis” and “has not provided sufficient reasoning or facts”. It is also noted that this burden of a proper analysis and articulated reasoning is also applicable to USPTO examiners.

Do the cited prior art documents address different problems?

In Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed. Cir. 2013), the Court held that “[a]n invention is not obvious just ‘because all of the elements that comprise the invention were known in the prior art;’ rather, a finding of obviousness at the time of the invention requires a ‘plausible rational [sic] as to why the prior art references would have worked together.” Where the problems respectively addressed by the references are totally unrelated to one another, and in view of the fundamentally different problems involved, there is no logical basis for a person of ordinary skill in the art to consult both of such references simultaneously or to otherwise attempt to modify one reference in view of the disclosure of the other.  Broadcom held that while a prior art reference may support any finding apparent to a person of ordinary skill in the art, prior art references that address different problems may not, depending on the art and circumstances, support an inference that the skilled artisan would consult both of them simultaneously.  732 F.3d at 1334.

The Examiner’s burden

According to In re Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011), the examiner bears the initial burden of presenting a prima facie case of obviousness. See also the Manual of Patent Practice (MPEP § 2142) – “the examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness“.

Unigene Labs., Inc. v. Apotex,Inc., 99 USPQ2d 1858, 1863 (Fed. Cir. 2011) noted that “Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination.  KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).  Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id. at 421…”

The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385, 1396 (2007) noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Federal Circuit has stated that “rejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).

Modifying prior art makes it unsatisfactory 

If a proposed modification of a prior art invention would render that invention unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984)

Entirety of prior art document considered?

A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)

Primary reference already solves the problem

In Square, Inc. v. Cooper, IPR2014-00158, Paper No. 8, at 30 (15 May 2014) an  obviousness challenge was dismissed where the primary reference already had the capabilities that the secondary reference provided with its added disclosures.

Mark Richardson 26 August 2015

*Many thanks to Steven J. Hultquist of Hultquist IP for providing the source material for this blog post.