June 16, 2016

A Combination of References Can be Obvious Even it Requires a Bit of Work

By Bryan K. Wheelock, Principal

In Allied Erecting v. Genesis Attachments, LLC, [2015-1533] (June 15, 2016), the Federal Circuit affirmed the PTAB’s decision in IPR2014-001006 that claims 1–21 of U.S. Patent No. 7,121,489, were obvious.

Allied first challenged the motivation to combine the references, arguing that the proposed combination would would entail design and structural changes. However, the Federal Circuit said that it is not necessary that the reference be physically combinable to render the claimed invention obvious. The criterion is not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole. The Federal Circuit added that the fact that a modification has simultaneous advantages and disadvantages does not necessarily obviate motivation to combine.

Allied also argued that the references teach away from the combination. The Federal Circuit disagreed that the reference taught away from the combination, saying that teaching away is when a person of ordinary skill 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 patentee. The Federal Circuit noted that the reference did not teach away from the combination because the reference did not address the structure of the second reference.