From Plas-Pak as to obviousness:
Where “a patent claims a
structure already known in the prior art that is altered by
the mere substitution of one element for another known in
the field, the combination must do more than yield pre-
dictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007). However, combinations that change the
“basic principles under which the [prior art] was designed
to operate,” In re Ratti, 270 F.2d 810, 813 (CCPA 1959), or
that render the prior art “inoperable for its intended
purpose,” In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984), may fail to support a conclusion of obviousness.
And as to specifics:
” Such a change in a reference’s “principle of
operation” is unlikely to motivate a person of ordinary
skill to pursue a combination with that reference. In re
Mouttet, 686 F.3d 1322; In re Ratti, 270 F.2d 810. Accord-
ingly, the Board did not err in concluding that claims 1–
15 would not have been obvious over Fukuta in view of
As to "intended purpose"
We agree with Sulzer that the Board’s definition of
Jacobsen’s “intended purpose” and the Board’s finding
that adding Hunter’s spray nozzle would render Jacobsen
“inoperable for its intended purpose” are supported by
We have considered the remaining arguments and
find them unpersuasive. Because the Board did not err in
finding that the prior art combinations would either alter
Fukuta’s “principle of operation” or render Jacobsen
“inoperable for its intended purpose,” we affirm the
Board’s decision to decline to make the proposed obviousness
rejections of claims 1–15 of the ’384 patent.