Thursday, January 24, 2019

Obviousness through a single reference?

In a post Motivation to Combine Unnecessary Under Section 103 if Secondary Reference Does
Not Supply Element or Teaching
, Gene Quinn of IPWatchdog blistered the CAFC, writing:

It is worth pausing for a moment, however, to take issue with the Federal Circuit saying
that it is proper to reject a claim under §103 based on a single reference.
That is not technically correct. While there is no doubt a belief in the industry
that so-called single reference obviousness rejections exist and are legitimate,
even by some Judges on the Federal Circuit, that is not correct. Perpetuating the
myth of a single reference obviousness rejection really must stop.

While the outcome in the case would be unchanged, an anticipation rejection
under 35 U.S.C. § 102 is proper when a single reference provides exact identity
with the claimed invention. Obviousness always requires more than a single reference,
although that which is additional does not need to add an element or teaching found in the claims.

Post of 21 Jan 19 relating to Realtime Data, LLC v. Iancu, No. 2018-1154 (Fed Cir. Jan. 10, 2019)

MPEP 2143 states in pertinent part:

To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries.
Then, Office personnel must articulate the following:

(1) a finding that the prior art included each element claimed,
although not necessarily in a single prior art reference,
with the only difference between the claimed invention and
the prior art being the lack of actual combination of the elements in a single prior art reference;

(2) a finding that one of ordinary skill in the art could have combined
the elements as claimed by known methods, and that in combination,
each element merely performs the same function as it does separately;

(3) a finding that one of ordinary skill in the art would have recognized
that the results of the combination were predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary,
in view of the facts of the case under consideration, to explain a conclusion of obviousness.

[emphasis added]

Note also

the post on PatentlyO titled Single Reference Obviousness including the text:

Idemitsu Kosan Co., Ltd., v. SFC Co. Ltd. (Fed. Cir. 2017).

The decision here is important as one example of a single-reference obviousness decision upheld by the Federal Circuit on appeal.


From corridorlaw in July 2018:

Recent decisions by the Federal Circuit have ruled that obviousness under 35 USC 103 can be based upon a single prior art reference.


In some cases, obviousness has been found where only a single prior art reference, which didn’t disclose all of the claim elements, was cited, and “common sense” was cited to provide the missing element(s). In such cases, the Federal Circuit has ruled that the application of common sense requires explicit and objective support. In its decision in Arendi v. Apple, 832 F.3d 1355, 1363, 119 USPQ2d 1822, 1827 (Fed. Cir. 2016), the Federal Circuit stated: “[W]e conclude that while ‘common sense’ can be invoked, even potentially to supply a limitation missing from the prior art, it must still be supported by evidence and a reasoned explanation. In cases in which ‘common sense’ is used to supply a missing limitation, as distinct from a motivation to combine, moreover, our search for a reasoned basis for resort to common sense must be searching.



To reject a claim as obvious over a single reference, it was necessary to identify a teaching, suggestion, or motivation to modify the single reference to fall within the scope of the claim.



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