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.

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.

How could the passing of Scalia affect patent owners?

The question many in the patent field are asking is how the recent passing of Justice Antonin Scalia may change the patent landscape. The short term answer is probably not a lot. The long term answer depends on who is eventually appointed to the Court.

During his thirty year tenure on the court since his appointment by Ronald Reagan, Scalia was known as an originalist and textualist. His opinions earned him varying degrees of praise and notoriety. Often seen as pro-business and a protector of property rights, Scalia admitted to not completely understanding patent law and, surprisingly, often turned to the liberal Justice Ginsberg for guidance on patent matters. 

While President Obama has nominated Merrick Garland (a move that patent owners should be skeptical of), it is unlikely that the Senate will confirm before the presidential election. This means that at least three patent cases (discussed below) will be decided by a Court that is ideologically split down the middle (4 conservatives and 4 liberals). While for many matters this would lead to 4-4 splits (and the decisions in the lower courts being affirmed), patent law is traditionally not an area decided along ideological lines (as indicated above Scalia often turned to Ginsberg for advice on patent matters).


It’s hopeful the Court (and Scalia’s replacement) will eventually see Scalia’s wisdom and help clarify the now uncertain patent landscape.

The three patent cases the Supreme Court has agreed to hear the session include Halo Electronics v. Pulse Electronics, Stryker Corporation v. Zimmer Inc, and Cuozzo Speed Technologies v. Michael K. Lee. The rulings on these cases will have impacts on damages and claim construction evaluation in inter partes reviews (IPR). Most legal scholars do not see the outcome of these cases changing with the passing of Scalia. However, in the unlikely event that Halo, Stryker, and/or Cuozzo ends in a 4-4 tie in, the Federal Circuit decision(s) will stand.

Despite openly admitting patent law was not his strong suit (Scalia said the hardest case he ever decided was a patent case) his legacy in patent law is likely to outlive his own expectations. Scalia was the first justice to use the term “patent troll” in an opinion. He also offered biting criticism of the tests that courts have adopted to try and make sense out of a highly abstract field (Scalia once referred to the court’s proposed test for non-obviousness as “gobbledygook”). Scalia also openly criticized the need to go beyond Bilski in Alice saying “Why isn’t doing it through a computer not enough? I mean, was the cotton gin not an invention because it just means you’re doing through a machine what people used to do by hand?”

It’s hopeful the Court (and Scalia’s replacement) will eventually see Scalia’s wisdom and help clarify the now uncertain patent landscape. Patent owners everywhere should hope for another justice who shares Scalia’s respect for property rights and recognizes that intellectual property should be provided that same respect.

Photo credit: Steve Petteway, photographer, Supreme Court of the United States - Collection of the Supreme Court of the United States (Public Domain)

Have Mayo and Alice gone too far?

For those of you following this blog, you will be familiar with our assessment of the recent decisions from the Supreme court in Mayo Collaborative Services v. Prometheus Laboratories and Alice Corp. v. CLS Bank International. These cases concerned what types of inventions qualify for patent protection under 35 U.S.C. 101, the statute governing patent eligibility. The cases were decided by the Supreme Court in 2012 and 2014, respectively, and both resulted in the invalidation of the patents involved. The first of these cases, Mayo, involved a method of administering a drug, gathering data on how the patient was responding to that drug, and deciding whether or not to alter dosage based on that information. This was determined to be a manipulation of natural laws using data and methods known to persons skilled in the art. Alice dealt with software for financial transactions, which the Court ruled to be an “abstract idea.”


Mayo and Alice ...interpretation, but too far?

So why is it that these cases have become points of contention in the field of patent law? Simply put, these Supreme Court decisions offer precedent which is at best unhelpful for attorneys and courts, and at worst seriously concerning for patent owners.

To illustrate this result, we’re going to briefly examine a recent decision by the Federal Circuit, Ariosa v. Sequenom. In June of 2015, the Federal Circuit issued a ruling invalidating the method claims of U.S. Patent No. 6,258,540, held by Sequenom Inc. The patent concerned a means for using cell-free fetal DNA, which they discovered could be found in the blood of a pregnant mother, to determine the fetus’ susceptibility to a panel of genetic defects. The tests could also establish paternity or gender of the fetus, among other characteristics. While other diagnostic tests are able to make these determinations, until the method of the ‘540 patent was discovered the DNA for such tests would have to be harvested from the placenta or fetus. The method of the ‘540 patent allowed these tests to be run in a manner that was less invasive and dangerous for the fetus and the mother by using a sample of the mother’s blood. When the patent was struck down under the precedents set by Mayo and Alice, Sequenom petitioned the Federal Circuit for en banc review (a process by which the entire court is urged to reconsider the decision of one of its 3-judge panels). On December 2, 2015, the en banc court denied the petition, letting stand the panel’s decision and maintaining that it was bound by the Supreme Court decisions in Alice and Mayo.

Alice is firm on the impermissibility of patenting an abstract idea.

Ariosa represents one of the first major cases in which Alice and Mayo were applied to their fullest extent, with predictably troubling results. For instance, Alice is firm on the impermissibility of patenting an abstract idea (as is the language of 35 U.S.C. 101). However, the opinion issued by the Federal Circuit failed to define what constitutes an abstract idea, or offer a test for determining if an idea was too abstract to be patentable. Mayo concluded that discovering something new in nature did not show an inventive step; however, the court there stated that they “need not determine here whether, from a policy perspective, increased protection for discoveries of diagnostic laws of nature is desirable”. Neither of these decisions made clear how their precedents should be applied in upcoming cases, yet both made clear that violations of these unknown standards would result in the invalidation of a patent.

Despite denying en banc review in the Sequenom case, the en banc review panel of judges expressed concerns about the rigid application of Alice and Mayo in these types of cases. Notably, Judge Dyk called the test of patentability outlined in Mayo “too restrictive" and stated that continued use of this standard may “discourage development and disclosure of new diagnostic and therapeutic methods in the life sciences.” He also noted that the discovery of natural laws is the basis of diagnostic methods, and further went on to say that an inventive concept is present in a novel discovery of “a specific application of [a] new law of nature discovered by the patent applicant and reduced to practice.”

While the denial of further review for Sequenom stands, opinions such as these issued by the Federal Circuit only serve to further highlight the need for clarification on what the Alice and Mayo decisions mean for those of us in the business of acquiring and enforcing patents. This certainly isn’t the end of what will be a difficult battle for patent owners in the fields of software and medical diagnostics. We’ll keep you posted on new developments on this topic as they emerge.

AIA “First-to-File” Patent Provision becomes Effective March 16, 2013; What it Means to Your Start-Up Business

AIA “First-to-File” Patent Provision becomes Effective March 16, 2013; What it Means to Your Start-Up Business

The new America Invents Act (AIA) was signed into law in September 2011. The longstanding “first-to-invent” patent system will soon be replaced by a new, “first-inventor-to-file” system for patent applications filed after March 15, 2013.

Technology developers and entrepreneurs can prosper under this new law by submitting well-researched, well-written, reasonably-priced provisional patent applications to quickly gain a first-inventor-to-file, “patent pending” status.

Once a provisional patent application is filed, the owner of the application has one year to decide whether to file a more complete non-provisional application. It is the non-provisional application that will be placed before a U.S. Patent Examiner and, once granted, issue as a U.S. patent.

In a startup company where every dollar counts, the costs associated with executing a comprehensive patent strategy might seem like a deterrent. But there’s some good news in the AIA for entrepreneurs on that front: The AIA introduced a new micro-entity status that will give qualifying companies a 75% discount on most patent fees. Of course, companies will still need to pay a patent attorney or agent to prepare applications, but even those costs are often very modest when compared to the value of the resulting patents.

For most small to medium-size businesses, the provisional route makes the most sense, since very often the technology has not yet been shown to be marketable. During the year the provisional application is pending, the technology can be disclosed to potential commercial partners and investors, with patent pending status protecting against others walking away with your concept. After one year, if you decide not to move forward with your invention, you won’t have spent more than necessary to get the patent pending protection you needed. And if you do decide to move forward, your provisional application will be the springboard for a non-provisional patent application that will have the best chance of being granted and respected by others in your industry.

The attorneys at Corridor Law Group are experts in researching, writing, illustrating and filing superior quality provisional patent applications for technology firms, investors and individual inventors. Many clients have taken advantage of our IP Fast Track Program to be “the first inventor to file” and receive “patent pending” status in a thoughtful, quick and reliable way.

Source and credit: John Villasenor, Contributor, Forbes.com read John's full article here.