Addressing issues of obviousness, the US Court of Appeals for the Federal Circuit upheld the obviousness determination of the Patent Trial and Appeal Board (PTAB or Board), explaining that it is not necessary for two references to be physically combinable in order to render a patent obvious. Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments, LLC, Case No. 15-1533 (Fed. Cir., June 15, 2016) (Wallach, J).
Allied owns a patent directed to an interchangeable tool system that includes a jaw set couplable to a universal body. Allied’s claims require a jaw set having a pair of moveable blades pivoted together about a main pivot pin that is encased by a housing, wherein the blades are moveable relative to the housing. To decouple the jaw set, the housing can be removed from the universal body without disassembly of the pivot pin. Genesis filed a request for inter partes reexamination of Allied’s patent, arguing that it is obvious over two references, Caterpillar and Ogawa. The PTAB agreed, and Allied appealed to the Federal Circuit.
At the Federal Circuit, the issue was whether it would have been obvious to modify Caterpillar to make both blades movable as taught by Ogawa, while retaining Caterpillar’s quick-change functionality. Allied presented two distinct arguments in support of its position that the combination was not proper. First, Allied challenged the PTAB’s finding of any motivation to combine Caterpillar and Ogawa, arguing that making the proposed combination requires “a massive, nonobvious reconstruction of the device that not only changes its principle of operation, but renders the device inoperable as a result.” Second, Allied argued that Caterpillar teaches away from a combination with Ogawa.
With respect to the first argument, the Federal Circuit agreed with the PTAB’s reasoning, explaining that the test for obviousness is whether the claimed invention is rendered obvious by the teachings of the prior art as a whole, not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. As such, even though modifying Caterpillar’s movable blades “may impede the quick change functionality disclosed by Caterpillar,” the Federal Circuit stated that “[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”
As for the second argument, the Court concluded that Caterpillar does not expressly teach away from Ogawa. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In this case, although Caterpillar criticizes a specific structure disclosed by Ogawa (the use of two separate hydraulic chambers), the criticized structure is extraneous to the proposed combination. Because Caterpillar does not criticize the actual portions used in the combination (the pivot pin attachment mechanism and two movable jaws), Alliance’s argument is not persuasive.