Tuesday, November 20, 2012

CAFC affirms Board find of obviousness in In re Sutton

In In re Sutton , the CAFC affirmed the Board's determination of obviousness.

The basics of the law:

Whether an invention would have been obvious to one of ordinary skill in the art is a legal determination based on underlying findings of fact. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). “The presence or absence of a motivation to combine references in an obviousness determination is a pure question of fact.” In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). The PTO first must first carry its burden of demonstrating a prima facie case of obviousness. In re Mayne, 104 F.3d 1339, 1341 (Fed. Cir. 1997). Should the PTO succeed, the applicant must then rebut the PTO’s showing. Id. at 1323.

We review the Board’s legal conclusions de novo and its factual findings for substantial evidence. In re Gart- side, 203 F.3d at 1316. Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Id. at 1312 (quoting Consol. Ed. Co. v. NLRB, 305 U.S. 197, 229-30 (1938)).

Of the arguments by applicant:

First, Sutton argues that the combination of Backderf and White requires both plasticizers and HALs as primary components and, thus, they fail to render the claimed invention obvious. Sutton further asserts that there was no motivation to combine Backderf and White at the time of the invention. Sutton also makes two broad arguments that the Board erred by finding that color stability and flexibility are intrinsically present in the combination of Backderf and White, and that the Board did not consider the invention as a whole.

Footnote. In this decision on November 20, 2012, the CAFC refers to the Board in the following way: Steven Sutton and Stephen Thorp (collectively “Sut- ton”) appeal from the decision of the Board of Patent Appeals and Interferences (“Board”) affirming the rejec- tion of claims 7-9, 14, 19, and 30 of U.S. Patent Applica- tion No. 12/190,101 (“the ’101 application”) as obvious under 35 U.S.C. § 103(a). Because the Board’s conclusion is supported by substantial evidence and not legally erroneous, we affirm.


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