Digest of In re Singhal, No. 2014-1704 (Fed. Cir. March 10, 2015) (nonprecedential). On appeal from the Patent Trial and Appeal Board in Serial No. 11/497,047. Before Lourie, Bryson, and Chen (per curiam).

Procedural Posture: Applicant appealed the Board’s decision affirming the Examiner’s rejection of certain claims as obvious. CAFC affirmed.

  • Obviousness: The CAFC held that there was substantial evidence to support the Board’s finding that the combined teachings of the two cited prior art references rendered the claimed invention obvious to one of skill in the art at the time of the invention. The claimed invention was an obvious variation of the system described in the first reference with a communication choice well known in the art, as taught by the second reference. The CAFC rejected Appellant’s argument that the additional disclosures in the cited prior art taught away from the combination of the two references. Similarly, the CAFC rejected Appellant’s argument that the second reference was not analogous art, and that an inventor’s subjective intent or knowledge at the time of the invention should be the controlling factor in determining whether art is analogous. On the contrary, the CAFC held that the scope of the field of endeavor is a factual determination based on the scope of the application’s written description and claims. Thus, even if a reference is not within the relevant field of endeavor, “it may still be properly considered if it is reasonably pertinent to the problem”—meaning it would have “logically commended itself to an inventor’s attention.”