Single Reference Obviousness

Idemitsu Kosan Co., Ltd., v. SFC Co. Ltd. (Fed. Cir. 2017).

The decision here is important as one example of a single-reference obviousness decision upheld by the Federal Circuit on appeal.  Here, the prior-art is a published international patent application also owned by the patentee and with overlapping (but not identical) inventorship. 

Idemitsu’s U.S. Patent No. 8,334,648 covers an organic LED and claims priority back to a July 19, 2002 Japanese patent application.  The asserted prior art is an international application (PCT) publication from a two-weeks prior – July 4, 2002. International Publication WO 02/052904 (claiming priority to December 2000 and named Arakane).  At this point it is unclear why, but Idemitsu never challenged the status of prior-art status of Arakane.

In its obviousness analysis, the Board found that Arakane taught all of the elements of ‘648 patent’s challenged claims and that it would have been obvious to combine them in the way claimed. On appeal, the Federal Circuit has affirmed – holding that the Board had made reasonable conclusions both on the facts and the law.

The case includes a couple of procedural findings — importantly the Court permitted (at least in this situation) the PTAB to reach factual and legal conclusions not directly addressed in the petition.

= = = =

Note: The opinion here does not discuss why the single-reference decision was based upon OBVIOUSNESS rather than ANTICIPATION.

41 thoughts on “Single Reference Obviousness

  1. This is intended for the Helsinn thread,

    Roebuck & Garbett v. Stirling, 1 WPC 45 (House of Lords, 1774)

    Method of manufacturing sulfuric acid.

    After 20 years of trade secret use, RG observed S building a factory. By spying, RG determined that S was intending to use the same method. RG filed and obtained a patent, sued, and obtained an injunction. While the case was ultimately disposed by a demonstration of prior public use by others, S objected strenuously to the whole idea that one could practice an invention in secret and then seek a patent only when they discover others are preparing to use the trade secret.

    Webster’s note at 44 had this:

    “In Wood & others v. Zimmer & others, 1 Holt, N.P. C., post 82, the patentee had sold the article in the public market four months before the date of the patent. Such sale .,.. evidence of the invention baying been used and exercised for the
    purpose of commerce, and not simply for the purpose of experiment, before the date of the letters patent; such use and exercise, and the subsequent obtaining a patent, are contrary to the whole spirit of the patent laws, which require a disclosure for the benefit of the public, whereas the secret might be lost to the public by such a course of proceeding; and further, the patentee might thus have a monopoly for a much longer period than 14 year, were he allowed to practise
    the invention in secret until there was danger of its being discovered, or some other circstances induced him to take out a patent.” 1 WPC at 44,

    1. “[T]he introducer from foreign parts of an invention withun the realm, is the
      true and lint inventor within the meaning of the statute, and this cue decides that publication is essential to the acquiring that character; that user in private, without some publication, will not defeat the claim of a subaequent independent inventor and publisher of bit invention under letters patent for the benefit of the public….”

      Ibid.

    2. are contrary to the whole spirit of the patent laws

      Interestingly, the quote you provide does not say anything ABOVE the patent laws…

      Congress changed that “spirit” Ned.

      You DO realize that our Constitution is a grant of authority to a particular branch of the government to write the statutory law that is patent law, right?

      As I have told you: the new “new” is that which is new to you.

  2. Can anyone say if an earlier filed prior art reference (i.e. patent) but published later to the filing date of the subject patent be used for obviousness? I’m aware that a reference under 102 (e) can be used for obviousness too (with a different inventive entity). What would be the scenario, if the prior art reference doesn’t anticipate, but only be used for obviousness? So, simply can a secret prior art (later published) be used only for obviousness rejection pre-AIA, even if it doesn’t anticipate under 102(e) (not all elements are present)? Can some one give an example/case for the same?

    1. Can anyone say if an earlier filed prior art reference (i.e. patent) but published later to the filing date of the subject patent be used for obviousness?

      Yes it can. Pre and post AIA.

      I do not have an example handy, but why would you think otherwise? The art in question goes NOT to you “personally” as an inventor knowing or seeing such art, but instead is what the legal fiction of a Person Having Ordinary Skill In The Art would “know or see.” It may help to remember that such a person is omniscient as to all existing material (even short writings in obscure languages properly indexed in a public library of some small foreign island nation).

      1. Just to expand slightly on anon’s entirely correct response, an example of a §102(e) reference being used in a §103(a) rejection is found in In re Bartfeld, 925 F.2d 1450, 1453-54 (Fed. Cir. 1991), where the applicant tried to overcome the obviousness rejection by giving a terminal disclaimer over the §102(e) reference (it did not work).

        It is worth noting, however, that Bartfeld would not turn out the same way under the AIA, or even under the pre-AIA statute that has been in effect since 1999. The PTO was only allowed to discuss the (as yet unpublished) §102(e) reference with Bartfeld because the reference and Bartfeld’s application both belonged to the same assignee (this was an old-fashioned provisional 102(e)/103 rejection). Under the AIA and the immediately pre-AIA statute, §103(c) (now part of 102(c)) made §102(e) references unavailable as art for obviousness, if—at the time of filing—they belonged to a common assignee as the challenged patent.

        In other words, it is not only §102(e) references that belong to the same inventive entity that can be excluded, but also §102(e) references that belong to the same assignee (even with different inventive entities) at the time of filing.

  3. “Note: The opinion here does not discuss why the single-reference decision was based upon OBVIOUSNESS rather than ANTICIPATION.”

    Isn’t that obvious?

    ““The identical invention must be shown in as complete detail as is contained in the … claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). Note that, in some circumstances, it is permissible to use multiple references in a 35 U.S.C. 102 rejection. See MPEP § 2131

    In this case, you indicated that the order of the elements was different than claims. Hence, not “as required by the claim” and not identical.

  4. It is 103 because you must make specific selections from two groups, each having multiple members, to arrive at the claimed composition.

  5. Maybe obviousness instead of anticipation because the elements were in different embodiments of the reference, so it was necessary to rely on obviousness to combine the elements to obtain an embodiment having all of the features of the claim.

    Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim. [Citation omitted.] A prior art disclosure that “almost” meets that standard may render the claim invalid under §103; it does not “anticipate.” Connell v. Sears, Roebuck & Co., 220 USPQ 193, 198 (Fed. Cir. 1983).

    The jury was instructed under 35 U.S.C. §102 [footnote omitted] that there is no anticipation “unless all of the same elements are found in exactly the same situation and united in the same way * * * in a single prior art reference.” [Citation omitted.] Perkin-Elmer Corp. v. Computervision Corp., 221 USPQ 669, 673 (Fed. Cir. 1984).

  6. AT, although frequently ignored in blog comments here, there is an important difference between Fed. Cir. citations and mere personal opinions. Also, don’t overlook the “for whatever it discloses. ” All Star Wars actually disclosed was a fake toy light sword made with a flashlight. Numerous home copies were soon made of that. [Not even to mention that actual high power cutting lasers were already known in the prior art.]

    1. mere personal opinions” once more appears from Paul F. Morgan as some type of derogatory slight and call to dismiss a point put on the table for discussion…

      An important difference is ALSO the ability to see when a mere “snap cite” evident in a Fed. Cir. citation improperly moves the law.

      As shown below, the citation relied on by Paul F. Morgan (amusingly, for his own ‘mere personal opinion’) is quite readily shown to get the issue at point here completely wrong.

      Is it a coincidence that the wrong point is in the direction against patents…?

      The answer to that question I leave up to all of you and your “mere personal opinions.”

      1. Remember, folks: “anon” wants you to believe he’s all about “patent quality.”

        LOL

        1. Another mindless comment from you Malcolm.

          You act as if getting the law right must somehow be “anti-quality” if getting the right happens to be pro-patent.

          I suggest that get into a line of work in which you can believe in the work product produced.

          1. You act as if getting the law right must somehow be “anti-quality”

            Nothing that Paul said is inconsistent with “getting the law right.”

              1. the items that I have presented.

                Again: nothing that Paul said is inconsistent with “getting the law right.”

                Try not to be a s0 ci0 path, “anon.” I know it’s hard for you. But at least you can try.

    2. Paul,
      Would you agree that an anticipatory reference for a claim also makes that claim obvious under 103? If so, how can the law hold 102 art to higher standard than 103 art, when the basis for invalidity could be simply ‘downgraded’ from 102 to 103 to avoid the requirement of an enabling disclosure?

      1. salvaged…

        Your comment is awaiting moderation.

        September 25, 2017 at 5:09 pm

        enabling is STILL required, Ben.

        That’s a rather important point for you to grasp from the citations (and comments) below.

        [Malcolm’s expletive laden rants get free passes because he does NOT engage in conversations, while those in conversations get the “quantity limit” block…

        Someone needs to rethink why comment sections are here in the first place.

  7. There is a requirement for anticipation: that all the elements be combined in the same way as claimed. When you pick elements from multiple lists, an extensively large combination of options are not all considered at once envisioned and anticipated by the disclosure. This is common in the small molecule pharmaceutical area. See also e.g., Wrigley v Cadbury, Fed. Cir. 2012.

  8. Re the note as to why a 103 rather than a 102, perhaps because it looks like there was an enablement argument re this particular single reference? 103 prior art does not need to meet 112 requirements, including enablement, it is a teaching for whatever it discloses, whereas 102 [fully anticipatory] prior art does. E.g., Amgen Inc. v. Hoechst Marion Roussel Inc. and cases cited therein: “In order to anticipate, a prior art reference must not only disclose all of the limitations of the claims invention, but also be enabled ” Elan Pharms., Inc. v. Mayo Found., 346 F.3d 1051, 1054 (Fed. Cir. 2003).

    1. Beg to differ, Paul. The release of Star Wars did not make the light saber obvious – Star Wars was a non-enabling disclosure. (For that reason it didn’t anticipate either.)

    2. AM,

      But Paul’s post does bring to light a critical item concerned with 103 attacks.

      That critical item is the nose-of-wax feature that the courts (and Court) wants to imbue into 103 in order to include science fiction as prior art and drive 103 back into what the Court was expressly chastised for trying to make patent law require: a Flash of Genius.

      It is worth reminding people that enablement of a reference is presumed for those references that are granted patents.

      Amgen: “ TKT’s position is further undermined because the asserted claims issued. We must presume the examiner did his job, and if he truly thought that the specification taught or enabled only the use of exogenous DNA, the asserted claims would not have issued.

      But also from Amgen:

      On remand, the district court should reconsider obviousness with respect to Sugimoto, but should do so without reference to whether Sugimoto is enabled, as enablement of the prior art is not a requirement to prove invalidity under § 103. See Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247 (Fed.Cir.1991); Reading & Bates Constr. Co. v. Baker Energy, 748 F.2d 645, 652, 223 USPQ 1168, 1173 (Fed. Cir.1984).

      (reminder: Sugimoto was a granted patent)

      Now one has to wonder why the court in Amgen did what it did (and it’s sloppiness actually turned the law 180 degrees in the wrong direction).

      Symbol is not all that helpful as it references Reading and Bates (as well as Beckman Instruments). But Reading and Bates does NOT say what the later court indicates, and Beckman actually says the opposite:

      Second, the jury instruction complained of is a correct statement of the law. In order to render a claimed apparatus or method obvious, the prior art must enable one skilled in the art to make and use the apparatus or method. In re Payne, 606 F.2d 303, 314, 203 USPQ 245, 255 (CCPA 1979).

      By the way, in re Payne ALSO says the opposite: enablement IS required for a 103 rejection.

      As I reminded someone else recently (and as Atari Man here reminds us all): science fiction is not prior art for 103 purposes.

      And under any reasonable view, it should not be.

      The courts seem TOO eager to create vehicles to deny patents. The emphasis in the prior decisions – and that very same type of emphasis here promoted by Paul – speak to efforts to restrict protections. The animus (yes, Paul, that word fits here) needs to be recognized. But so too, what should be recognized was that Congress intended to be MORE liberal than the courts in allowing patents.

      103 was created by Congress explicitly to constrain an anti-patent Supreme Court that was running amuck with its then-allowed ability (through the tool of common law evolution) to set the meaning of the word “invention” (or any of the more than dozen equivalents including “GIST of the invention”); how do people not remember the self-describing quote of the Supreme Court of “The only valid patent is one that has not yet appeared before us”….?

      1. “As I reminded someone else recently (and as Atari Man here reminds us all): science fiction is not prior art for 103 purposes.

        And under any reasonable view, it should not be.”

        Under a reasonable view, it would be fact specific. When science finction depicts something which can be made and used by a PHOSITA, it should be prior art. Starwar’s lightsabers? Not enabled yet. Stranger in a Strange Land’s therapeutic waterbed? Probably enabled as of its 1961 publishing date.

        1. No Ben.

          Not at all.

          You seem to misunderstand the fiction part of science fiction.

          There may very well be elements in any science fiction story that are not themselves fiction. Such still is available as prior art (when properly presented).

          Please recognize this fundamental difference.

          1. You’re not articulating any fundamental difference. Heinlen described a bed that he never made, but which could have been made by a PHOSITA. Try explaining how the publishing context of that disclosure can preclude a PHOSITA from being taught anything.

            1. I have articulated a critical difference.

              Cite the right material for any non-fiction item that you want to refer to.

              That’s not a difficult concept.

              1. Do you have any caselaw supporting the limitations on prior art that YOU are asserting?

                1. I can’t find the citation which excludes FICTION per se as prior art. Please cut and paste it. It’ll take less than 10 seconds if you really cited it already.

                2. You have a difficult time understanding why fiction is not prior art?

                  Seriously?

                  Can fiction be enabled?

                  (If so, is it really fiction?)

                  Come Ben, T H I N K.

                3. Can fiction be enabled?

                  (If so, is it really fiction?)

                  Yes & yes. If I wrote a story about myself cleaning my gutters, that is fiction (I have never cleaned the gutters on my current house), but it totally enabled (I know how to do so, and have all the relevant tools). Something can be fiction and still be enabled.

                4. Points for pedanticism, you are granted, Greg.

                  However, the conversation has taken some shorthands while we are discussing science fiction and the object of the science fiction.

              2. Perhaps this should be a lesson in communication for you, anon, about assuming we all share your shorthands.

                Heinlen’s therapeutic waterbed was simply a waterbed with pump-based water level control, electrical thermoregulation, and some waterproofing of the various electronics. A ficticious device which Heinlen never built, but likely enabled to one of ordinary skill in the art when published. I specifically mentioned this device to illustrate that fictional ideas do not necessarily require undue experimentation. I figured you would take 30 seconds to google it before responding. My bad.

                1. Great – quote the actual non science fiction items in your Office Action. Why would you try a secondary source (and a fictional one at that) when you have a direct and better (time and tech) source being something else?

                  Then realize that I have already told you this (back at 1.2.1.1)

        2. Under a reasonable view, it would be fact specific. When science finction depicts something which can be made and used by a PHOSITA, it should be prior art. Starwar’s lightsabers? Not enabled yet. Stranger in a Strange Land’s therapeutic waterbed? Probably enabled as of its 1961 publishing date.

          This is exactly right. If the combination of references that you cite to make your obviousness argument does not enable the skilled artisan to practice the claimed invention (at the time of filing), then you have not made out a valid argument for obviousness. On the other hand, it is not fatal to the overall argument that one or more of those references are not enabling.

          Star Wars does not enable the light saber, but it still supplies a motivation to the ordinary worker to want to make a light saber. If some other prior art references can account for the individual components of a working light saber, the (admittedly non-enabled individual) art citation to Star Wars can still be part of a valid argument for the obviousness of a claimed light saber.

          1. Because of “The Phantom Menace”, one of ordinary skill in the art would have recognized that a handheld version of Reference X’s laser cutting blade would have been totally awesome.
            —-
            But that rejection would likely be reversed and remanded by the CAFC, because episodes I-III teach away from doing anything StarWars related.

      2. There’s a big difference between “Flash of Genius” and “Flash of Non-St00pidity”.

        It’s not surprising that “anon” has difficulty with this.

        1. Your comment means nothing Malcolm, but is merely a thinly veiled empty insult.

          Please reply with something on point.

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