Obviousness Can be Based Upon a Single Prior Art Reference, but…

Linda Chan, Paralegal

Recent decisions by the Federal Circuit have ruled that obviousness under 35 USC 103 can be based upon a single prior art reference. While anticipation rejections under 35 USC 102 have always been able to rely a single prior art reference that, within its four corners, discloses all of the elements recited in a patent claim, historically obviousness rejections usually required more than one reference. In fact, obviousness rejections were traditionally used when a single reference did not disclose all of the claim elements, and two or more prior art references must be combined to provide all of the elements, obviousness is the normal route to establishing unpatentability.

In some cases, obviousness has been found where only a single prior art reference, which didn’t disclose all of the claim elements, was cited, and “common sense” was cited to provide the missing element(s). In such cases, the Federal Circuit has ruled that the application of common sense requires explicit and objective support. In its decision in Arendi v. Apple, 832 F.3d 1355, 1363, 119 USPQ2d 1822, 1827 (Fed. Cir. 2016), the Federal Circuit stated: “[W]e conclude that while ‘common sense’ can be invoked, even potentially to supply a limitation missing from the prior art, it must still be supported by evidence and a reasoned explanation. In cases in which ‘common sense’ is used to supply a missing limitation, as distinct from a motivation to combine, moreover, our search for a reasoned basis for resort to common sense must be searching. And, this is particularly true where the missing limitation goes to the heart of an invention.”

In In re Stepan Co., 660 F.3d 1341 (Fed. Cir. 2011) the court stated that: “Absent some additional reasoning, the Board’s finding that a skilled artisan would have arrived at the claimed invention through routine optimization is insufficient to support a conclusion of obviousness.” In that case, the Patent Trial and Appeal Board failed to explain their reasoning for applying a single prior art reference how a person of ordinary skill in the art, applying common sense, could extend the teachings of that single reference to arrive at the claimed subject matter. According to the Federal Circuit in Stepan, “Under Title 35, examiners must explain obvious rejections with findings that includes facts as to how a person of ordinary skill would have understood prior art teachings.”

To sum up, obviousness of a patent claim can be established with only a single prior art reference being cited, but if common sense is cited to extend the teachings of that single reference, there must be an explanation, supported by explicit and objective evidence, provided. The burden of establishing obviousness, when a single reference is cited along with “common sense”, is on the one asserting that the patent claims are unpatentable for obviousness, and not on the applicant or patentee.

Chicago Patent Attorney: Free 20-minute Phone Consultation

Chicago Patent Attorney: Free 20-minute Phone Consultation

Chicago Patent Attorney: What you can expect from our free 20-minute Phone Consultation

The experienced intellectual property attorneys at Corridor Law Group are based in the Chicago area, but serve clients across the U.S. and in foreign countries. Our IP services and expertise cover a diverse range of businesses and technologies, with a focus on securing strong patents at a very reasonable cost.

“I’m almost always able to break away from what I’m doing to take a new client’s call. Technology developers are naturally cautious about sharing their information, but once I explain the process and costs to them, their initial wariness subsides and we can explore how the tools afforded by the patent laws can benefit their business.”

—Bob Fieseler, Attorney and Founder

We offer potential new clients a free 20-minute phone consultation, which allows us to answer clients’ questions about the patenting process without imposing on them any obligation to formally retain our firm. This initial consultation provides new clients with the information they need to determine whether they should entrust their valuable ideas to our attorneys. We also provide new clients with strategic options for protecting and building a business around their ideas. Corridor Law Group isn't in the business of writing and filing patent applications for every new client, because in some cases the patenting process won’t provide the level of protection that’s worth the costs.


Bob Fieseler, Corridor Law Group’s founder, reports that in a normal week he conducts between three and five free phone consultations. To schedule your free 20-minute phone consultation with an experienced patent attorney, visit this page.

USPTO’s Berkheimer Memo Provides Important Insights for Countering Subject Matter Ineligibility

The Federal Circuit’s Berkheimer v. HP decision has brought the patent eligibility statute, 35 U.S.C. § 101, back into the headlines. In October 2016, Ryan Truesdale wrote on this  blog that “the statute addresses the basic question of ‘is this invention the type that is patentable.’” The Federal Circuit’s decision in the Berkheimer case finally provides some degree of clarity and the USPTO, after several false starts, has finally set out clear directions for the examiners and the PTAB.

The USPTO’s Berkheimer memo states that a rejection under 35 U.S.C. § 101 requires an examiner to provide written support that the claimed subject matter is “well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination.” Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). One benefit of the ruling in the Berkheimer case is that facts will always matter. Examiners must use facts from citations to declare an application ineligible. Citations can be used from court decisions, publications, and/or an official notice statement(s). The memo describes “an appropriate” publication as a “book, manual, review article, or other source that describes the state of the art discusses what is well-known and common use in the relevant industry.” As a gift to applicants, the memo states that when an applicant responds to an ineligibility determination, the examiner must provide explicit support, citing books, manuals, review articles, or case decisions, thereby effectively negating ineligibility rejections based solely upon official notice.

The Berkheimer memo drew from the Federal Circuit Court’s decision in that case as to “whether the purported improvements were more than well-understood, routine, conventional activity previously known in the industry.” Id., at 1370-71. "The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional." Id., at 1369. Applicants following the directives in the Berkheimer memo will be more successful in overcoming ineligibility determinations than in the USPTO’s previous directives under the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). There, the Supreme Court invalidated patent claims because abstract ideas were declared unpatentable by the court without “something more”.

In sum, the USPTO’s Berkheimer memo provides avenues for overcoming abstract idea ineligibility determinations. Examiners will need to provide evidence to support their contentions. Finally, the USPTO has provided safeguards against arbitrary, anecdotally-based decision making by examiners and the PTAB.

Welcome Jenna Mazzoni

Corridor Law Group is delighted to welcome its new Patent Agent, Jenna Mazzoni. Originally from Chicago, Illinois, Jenna holds a Bachelor of Science in Molecular and Cellular Biology from University of Illinois at Urbana-Champaign and a Ph.D. in Developmental and Cellular Biology from University of California, Irvine. She also completed a Postdoctoral fellowship at Columbia University where she published her work in the journal Neuron. Jenna brings specialized knowledge in a variety of technical fields including molecular and cellular biology, neurovascular biology and animal models. She is passionate about delivering high quality services to our clients to assist them in protecting their valuable inventive concepts.

No, Judge Mayer Did Not Just Put an End to Software Patents

No, Judge Mayer Did Not Just Put an End to Software Patents

The last post on this blog ended optimistically, reading “[i]t’s likely that the Federal Circuit will continue to review cases requiring §101 analysis, and in each instance will hopefully continue to shed light on what is required to patent business methods and software”. It appears that the first half of that sentence is correct; the Federal Circuit, the court with exclusive jurisdiction over appeals from trial court judgments in patent cases, has gotten much more involved in conducting § 101 analyses. However, the hope that these cases would shed light on what is required to patent business methods and software appears to have been a longshot. For the past few months, the Federal Circuit’s opinion in Intellectual Ventures I LLC, v. Symantec Corp. has been making its way around the internet (even Reddit appears to have gotten a slice of this action), and at a glance it doesn’t look good for software patents.

Three decisions were mentioned in our last blog post, Enfish, Bascom, and McRO. Enfish was heard by Judges Moore, Taranto and Hughes; Bascom by Judges Newman, O’Malley and Chen; and McRO by Judges Reyna Taranto, and Stoll. Some of you may already see a problem forming here in that these three cases, which we’ve previously identified as being important recent cases for elaborating on the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International, were all heard by different three-judge panels, the only overlap being Judge Taranto’s involvement in McRO and Enfish. A split among judges on a panel can create confusing, and often contradictory, rulings issued by the Federal Circuit in matters of nuance such as patentable subject matter.

So what’s got the internet so flustered? A concurring opinion written by Senior Federal Circuit Judge Mayer in Intellectual Ventures I took the position that Alice was the death of software patents and that it’s time to recognize it as such. Judge Mayer made “two points: (1) patents constricting the essential channels of online communication run afoul of the First Amendment; and (2) claims directed to software implemented on a generic computer are categorically not eligible for patent”. A number of blogs and legal news websites have posted excerpts from Judge Mayer’s concurring opinion to highlight its finer points. But what is often not mentioned explicitly in the commentaries is that Judge Mayer’s concurring opinion is not binding precedent. The binding precedent in Intellectual Ventures I is the majority opinion written by Judge Dyk, which concluded that all three patents-in-suit were invalid under § 101 as claiming patent-ineligible subject matter. The third judge on the case, Judge Stoll, who also heard and joined the majority opinion in Enfish, issued a partial dissent arguing that one of the three patents-in-suit claimed patent-eligible subject matter under § 101. In the majority opinion in Intellectual Ventures I, The opinions of Judge Dyk and Judge Stoll relied on precedent from Bascom, although they reached remarkably different conclusions when it came to one of the patents. Only Judge Mayer’s opinion, which again is not binding precedent, contained this broad assertion that software patents in generally are patent-ineligible.

Why has this opinion in Intellectual Ventures I gained so much attention then, if no court actually has to follow it? The plainest reason is that software patents are a hot topic in IP law, and no judge on the Federal Circuit has expressed such a strong opinion against their patent eligibility. Judge Mayer has a long history on the Federal Circuit, and was even the court’s chief judge from 1997-2004. Coincidentally, this period is when the Federal Circuit first began to tackle software patents, and those patents were given broad support by the Federal Circuit. Judge Mayer’s opinion was also noteworthy because of its assertion that the First Amendment precludes the right to patent anything “constricting the essential channels of online communication”. This First Amendment assertion presents an entirely new aspect of the § 101 analysis.

Although Judge Mayer’s concurring opinion in Intellectual Ventures I is interesting on an academic level, it perhaps unintentionally highlights the problem with the Federal Circuit’s interpretation of the Alice decision to date, namely, the judges do not, and maybe cannot, agree on how Alice should be applied or even how to apply their own precedent to questions involving patent eligibility. So depending on which three-judge panel hear a case, the outcome is based more upon the judge’s individual inclinations regarding patent-eligibility under § 101 rather than the reliable application of the court’s precedents. This leaves the lower courts with two options: (1) struggle to follow the Federal Circuit’s inconsistent precedent and apply a loosely defined framework of the two-step Alice analysis, or (2) encourage the Supreme Court to explicitly define what constitutes an “abstract idea” and what constitutes the “something more” to establish patent eligibility, so that in future cases the Federal Circuit can actually do its job. We can only hope that the Supreme Court will agree to hear a § 101 case again soon and clarify how software and business method patents should be analyzed for patent-eligibility. For now, Judge Mayer’s opinion in Intellectual Ventures I should be considered a catalyst for resolving the confusion and inconsistencies brought about by the Supreme Court’s ruling in Alice.