Vaporize your Fingerprints: Toyota’s Invention Inherently Obvious

by Dennis Crouch

Toyota Motor Corp. v. Reactive Surfaces Ltd., LLP (Fed. Cir. 2020) (nonprecedential)

Toyota’s US8394618 covers a method of removing fingerprints using a lipase “capable of enzymatically degrading a component of the fingerprint” by vaporization.

Reactive had previously attempted to trigger an interference proceeding at the PTO and then unsuccessfully sued in Federal Court to have the patent rendered unenforceable (or to transfer ownership rights).  Those approaches failed.

This inter partes review is what worked.  After granting the IPR petition, the Board conducted a trial and then issued a Final Written Decision that the challenged claims were unpatentable as obvious. On appeal, the Federal Circuit affirmed with the following notes:

Analogous arts: The Board relied upon a scientific article titled “Chemical characterization of fingerprints from adults and children” in part of its obviousness analysis. On appeal, Toyota argued that the article should not have been available for obviousness because it was not “analogous art” to the invention.

Analogous prior art includes art from the same field as the invention at issue. But it also encompasses references from other fields if such reference is “reasonably pertinent to the particular problem with which the inventor is involved.”

Slip Op. Here, the court found substantial evidence to support the Board’s finding that the scientific article would be a “natural starting point” for an inventor looking to vaporize finger prints. (The test is for substantial evidence, because analogous art is a factual finding given deference on appeal).

What the combination inherently teaches:  The method claim at issue includes three steps:

  1. provide a substrate
  2. associate a lipase with the substrate (where the lipase is “capable of enzymatically degrading a component of a fingerprint”)
  3. facilitate “the removal of a fingerprint by vaporization from the lipase associated substrate … when contacted by a fingerprint.”

A combination of references provided by the Board taught the first two steps, but did not expressly teach the third step.  The Board concluded that step three is simply an inherent result of the first two steps: “any combination of prior art that teaches the first two limitations of the challenged claims inherently would teach the [facilitating step]. . . . [A] surface-associated lipase . . . capable of degrading lipids . . . inherently will facilitate the removal of lipid-containing stains, such as fingerprints, by vaporization from the surface.”

While prior art may include a variety of inherent teachings, the Federal Circuit requires evidence that “the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.”  PAR Pharm (Fed. Cir. 2014).  Because of this “exacting” standard, inherency is typically difficult for an Examiner to show during ex parte examination. However, during an IPR the patent challenger is able to marshal expert testimony that connects the dots.  Here, the petitioner’s expert explained the connection and inherent result.  That was enough for the Board and the Federal Circuit on appeal.

Obviousness affirmed.

5 thoughts on “Vaporize your Fingerprints: Toyota’s Invention Inherently Obvious

  1. 3

    When is the CAFC going to ‘fess up and admit there is no such thing as inherently obvious? The EPO understands this. And the CAFC *used* to understand this, until about 10 years ago. Inherently anticipated, ok. Inherently obvious? That’s a contradiction in terms.

  2. 2

    Is “a lipase” broad enough to encompass car wash detergents?

  3. 1

    This claim is written in this fashion:

    “A method of doing X, comprising:
    (i) doing Y;
    (ii) doing Z;
    (iii) doing X by doing Y and Z.”

    It should be pretty clear that step (iii) here doesn’t actually add anything, which is basically what Fed. Cir. found. I get Toyota’s problem, though, and why they claimed it like this.

    1. 1.1

      meh, no it is not.

      (i) doing Y: The “doing” is merely to provide a substrate.
      Ok, a substrate is provided (pre-solution activity that carries minimal patent weight.

      (ii) doing Z: The “doing” is associating something with the first item provided. In essence, this too is merely to ‘provide’ a second thing with a first thing. The problem here is that the “where” clause is not an active clause, and merely reflects the non-patent weight item of the second thing being provided. There is no ‘action’ being done in the ‘where’ clause.

      (iii) doing X by doing Y and Z: there has been NO independent doing of anything. X is already ‘present’ in the unadulterated property of Z. There was no change from “is capable of” to “to do.”

      Contrast this with a box of components. For example, three resistors. Now, this set of resistors “is capable of” being aligned in series and “is capable of” being aligned in parallel. Actually aligning in series though and actually aligning in parallel DO create vastly different things.

      I get Toyota’s problem, though, and why they claimed it like this.

      You are going to have explain this part.

      1. 1.1.1

        Hi Anon,
        The actual claims do not have a “where” or “wherein” clause as the summary here suggests.

        (Rather, the claims recite the lipase is associated in a way “such that” the lipase can degrade the fingerprint… generously interpreted this is actually a physical limitation on ‘how’ the lipase is physically associated or placed on the substrate. I dont think they needed the “capable of” language here, and could have rather claimed “arranging the lipase such that upon application of heat, the lipase facilitates degradation of the fingerprint.”… Although I agree with you that “is capable of” often leaves quite a bit of ambiguity).

        But what I suggest is that the preamble of the claim (“A method of facilitating the removal of a fingerprint…”) is basically the same as the last step (“facilitating the removal of a fingerprint…”), and the last step adds no action other than the result of the first two steps, and thus circular in a way that the makes the last step valueless

        Kind of like this:
        “A method of removing contaminants from water, the method comprising:
        (i) providing contaminated water;
        (ii) placing a filter in said container in such a way that the filter absorbs contaminants in the water;
        (iii) removing contaminants from the water by using the filter to absorb contaminants.”

        Step (iii) just refers back to the preamble, and adds nothing.

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