Mr. Mettke is correct that the selective hindsight combination of
references that show various elements of the claim generally does not suffice to
establish obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(“[A] patent composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the prior art.”).
But the Board’s analysis included more than a combination of disparate
references disclosing different elements, for the Board explained why Shah teaches the
very combination of elements that Mr. Mettke sought to claim.
**As to the number of references used, the CAFC noted
this prima facie case of obviousness is not rebutted by the
number of citations alone.
**Of commercial success:
We note that when the commercially successful
device is the claimed invention itself, there is a presumption of nexus. See Demaco
Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988).
However, the Board found that Mr. Mettke failed to meet his burden because he has not
shown that the alleged commercial success is due to the claimed invention.
Rinehart is cited:
Taking all of the evidence in its entirety, see In re Rinehart, 531 F.2d 1048, 1052
(CCPA 1976), the Board’s conclusion of obviousness based on the combination of
Exhibit E, Exhibit F, and Shah was correct, in that it was based on findings supported by
substantial evidence and not rebutted by objective evidence.
**Two comments at PatentHawk are of interest:
Actually, Mr. Mettke's argument is sound except it doesn't relate to the claim. He argues "accessing the internet" is not disclosed. He's right. Unfortunately for him, "means for accessing the internet" are disclosed.
Method steps should never have been allowed into product claims, even under 112 6th.
This man is yet another example of why.
My kingdom for a continuation...