A recent Federal Circuit case illustrates perils of trying to show that patent claims are non-obvious by arguing that references would not have been combined. In Bosch Automotive Service Solutions. LLC v. Matal, No. 2015-1928 (Fed. Cir. Dec. 22, 2017) (non-precedential), the court affirmed a Patent Trial and Appeal Board (PTAB) finding of unpatentability, in an Inter Partes Review proceeding, of certain claims of U.S. Patent No. 6,904,796 (and, while not discussed in this post, also vacating the PTAB’s denial of the patent owner’s motion to amend certain claims). The court agreed with the PTAB that there was a sufficient motivation to combine references to achieve a single tool for activating tire sensors where different references taught each of the various functionalities now claimed in a single tool.
Independent claim 1 of the ’796 patent recites:
A tool comprising a plurality of means for activating remote tire monitoring system tire sensors, the plurality of means selected from the group consisting of a magnet, a valve core depressor, means for generating continuous wave signals, and means for generating modulated signals, wherein the tool is capable of activating a plurality of tire sensors, each of the plurality of tire sensors utilizing a different method for activating the said tire sensor.
The patent owner had conceded that “each of the claimed means of RTMS sensor activation was known in the prior art.” A first reference disclosed sensor activation by continuous wave signals, while a second disclosed use of modulated signals. Third and fourth references each “recognize[d] that different manufacturers use sensors that are not compatible with a single tool and” taught advantages of “a single, handy tool having the versatility to communicate with sensors by different manufacturers.” The prior art thus provided sufficient support for a finding of “known compatibility issues in the art of RTMS systems,” providing motivation for “the known solution of a universal communication tool.”
The patent owner argued that one of the references could not have been combined with the others because it programmed tire sensors but did not trigger them to respond. The patent owner thus argued that this reference “would be irrelevant to a person of skill in the art looking to create a universal activation tool.” Without disagreeing with the patent owner’s characterization of the reference, the court nonetheless discounted the argument. The reference was from the same field of endeavor as the claimed subject matter, and taught the advantages of a universal tool able to communicate with different systems. That was enough for the reference to teach the requisite motivation for obviousness under KSR Intern. Co. v. Teleflex Inc., 550 US 398 (2007.
The court further rejected the patent owner’s argument that secondary considerations of non-obviousness overcame the references. Purported showing of commercial success were to no avail, because the patent owner’s expert merely stated conclusorily that claimed features were responsible for sale, but never explained why he understood claimed features to be included in commercial tools. Moreover, claim charts purporting to link claimed features to commercial sale lacked proper evidentiary foundation. Likewise, purported evidence of licensing activity and industry praise was not shown with sufficient nexus to claimed features.
Lessons for Practice
This case arose from an Inter Partes Review proceeding, but is also consistent with my experience in ex parte patent prosecution. It is often tempting to appeal rejections under 35 U.S.C. § 103 where multiple references have been patched together to address all of the claim elements. Occasionally there is clear legal basis to argue to the PTAB that the rejection is wrong (perhaps, for example, where one reference undermines the principle of operation of another). However, as people in other jurisdictions are often surprised to learn, in the U.S. there is no legal limit on the number of prior art references that can be combined in an obviousness analysis. Most often, if there is no claim element to which you can point as simply unaddressed in any of the references, you need to consider claim amendments.