Motivation to Combine References Need Not be Explicit

How much motivation do you need to combine references to make something obvious? According to the Federal Circuit, enough to reasonably discern a proper path to combine the references. In Cablz, Inc. v. Chums, Inc., No. 2016-1823 (Fed. Cir. Sep. 12, 2017)(nonprecedential), the Federal Circuit Court of Appeals affirmed an obviousness rejection from the Patent Trial and Appeal Board of claims of U.S. 8,366,268.

The ‘268 patent is directed to a resilient cable for eyeglasses that suspends off a user’s neck while retaining eyeglasses around the user’s neck. The ‘268 patent allegedly solves the problem of eyeglass retainers that rest on users’ necks, and thus can get entangled with clothing or covered in sweat or suntan lotion. The PTAB rejected the claims of the ‘268 patent based on a news article (Monroe) about an Oregon fisherman who connected his eyeglasses temples with 300-lb monofilament fishing line bent so that the line “never hangs up and never drapes around [the fisherman’s] neck.” The PTAB combined Monroe with US Patent No. 6,941,619 to Mackey, which disclosed temple retainers that could be moved along the eyeglasses temples. The PTAB concluded that the references taught “temple retainers connected by a resilient cable.” Cablz, the appellant and patentee, argued that the PTAB failed to provide evidence of a reason to combine the references.

The Federal Circuit reviewed the finding of motivation to combine for substantial evidence, and affirmed the PTAB, noting ”[w]e may affirm the Board’s ruling if we reasonably discern that it followed a proper path, even if that path is less than perfectly clear.” The Court accepted the PTAB’s argument that a PHOSITA would recognize that “simple substitution” of elements between the references would have resulted in the device of the ‘268 patent with the advantages of the ‘268 patent. Furthermore, the Court agreed with the PTAB that none of the references taught away from the combination and that the references did not teach the problem to be solved by the ‘268 patent, i.e., eyeglass retainers interfering with the backs of users’ necks.

Lessons for Practice

The key takeaway from this brief decision is the Federal Circuit’s comment on the standard of review, noting that “[w]e may affirm the Board’s ruling if we reasonably discern that it followed a proper path, even if that path is less than perfectly clear” (emphasis added). The Patent Office is not always explicit when describing a motivation to combine references to support an obviousness rejection. When arguing against the stated motivation to combine references, argue more than the lack of a stated motivation, or that the motivation is unclear. Focus on whether a PHOSITA would reasonably follow the path laid out by the motivation, and attack that reasonableness.

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