The patentee appealed the decision from the Patent Trial and Appeal Board (PTAB) following an inter partes reexamination, wherein the PTAB affirmed the examiner’s rejection of all of the patent claims as obvious under 35 U.S.C. § 103 while not giving any substantial weight to patentee’s evidence regarding objective indicia of nonobviousness. On appeal, the patentee argued that the PTAB’s obviousness rejection (1) impermissibly relied on hindsight, and (2) failed to explain why a person of ordinary skill in the art would combine the prior art references to create the claimed invention. The Federal Circuit affirmed the PTAB’s obviousness conclusion in a two-to-one vote.
The Federal Circuit reviewed the PTAB’s obviousness finding de novo and the underlying factual findings for substantial evidence. Upon review, the court held that there was substantial evidence to support the PTAB’s finding that one of ordinary skill in the art would be motivated to combine the relied upon prior art references. It further concluded that the patentee failed to proffer objective evidence of nonobviousness to outweigh such substantial evidence.
The Federal Circuit reasoned that a prior art reference can teach a claimed feature by listing it as a “suitable” option despite the reference suggesting a different option as “more desirable.” It explained that “this statement, absent clear discouragement from use, does not compel a finding that [the prior art] teaches away from using [the claimed suitable option].” The court also highlighted that the age of a reference “does not undermine the Board’s reliance on it.” Specifically, it found that a referenced patent that is more than 50 years older than the patent-at-issue was acceptable prior art.