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Board’s Factual Findings on Motivation to Combine Were Supported by Substantial Evidence

March 22, 2006

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Last Month at the Federal Circuit - April 2006

Judges: Michel, Linn (author), Prost

In In re Kahn, No. 04-1616 (Fed. Cir. Mar. 22, 2006), the Federal Circuit affirmed the final decision of the Board, concluding that claims 1-20 in patent application number 08/773,282 (“the ’282 application”) were unpatentable as obvious under 35 U.S.C. § 103. The Court affirmed the Board’s finding of obviousness because the factual findings underlying the Board’s analysis, including the findings on motivation to combine, were supported by substantial evidence.

Leonard Kahn filed the ’282 application, which involves a “reading machine” that may be used by the blind. The Board rejected the’282 application over a combination of several prior art references, including the Garwin reference, two Anderson references, and the Stanton reference.

“When the Board does not explain the motivation, or the suggestion or teaching, that would have led the skilled artisan at the time of the invention to the claimed combination as a whole, we infer that the Board used hindsight to conclude that the invention was obvious.” Slip op. at 12.

On appeal, Kahn did not dispute that each element of his claimed invention could be found in the Garwin reference, the Anderson references, or the Stanton reference. Nor did Kahn take issue with the Board’s finding that a person having ordinary skill in the art would have been motivated to modify the Anderson references in view of Garwin, or vice versa. Rather, Kahn challenged the sufficiency of the evidence supporting the Board’s finding of a motivation to apply the teachings of Stanton to achieve the claimed invention.

Upon review of the Board’s decision, the Federal Circuit found that the Board carefully examined the Anderson/Garwin combination and recognized that a skilled artisan confronted with the problem faced by Kahn would have been led by the teaching of Stanton to add features disclosed in Stanton to the Anderson/Garwin combination. Because the Board need only establish motivation to combine by a preponderance of the evidence to make its prima facie case, the Court concluded that substantial evidence supported the finding of a motivation to combine the teachings of Stanton to the Anderson/Garwin combination. The Court explained that “[a]lthough a reasonable person might reach the opposite conclusion, there is far more than a ‘mere scintilla’ of evidence present from which a reasonable mind could find a motivation to combine.” Slip op. at 18.

Kahn also relied on In re Lee, 277 F.3d 1338 (Fed. Cir. 2002), and In re Rouffet, 149 F.3d 1350 (Fed. Cir. 1998), in arguing that the Board overstated the knowledge of the person having ordinary skill in the art and employed improper hindsight. The Court disagreed because, unlike in Lee and Rouffet, the Board in this case articulated a motivation to combine and placed it on the record. Specifically, the Board identified the problem confronted by Kahn and statements in the Garwin and Stanton references that supported a motivation to combine.

The Court also noted that Kahn did not attempt to rebut the Board’s prima facie case by offering evidence of objective indicia of nonobviousness. Instead, Kahn invited the Federal Circuit to take judicial notice of the long-felt but unresolved need for a device that would help the blind read. Citing Fed. R. Evid. 201(b), the Court declined Kahn’s invitation because “‘long-felt but unresolved need’ is not the kind of undisputed fact to which courts are accustomed to taking ‘judicial notice’ because a finding either way can ‘reasonably be questioned.’” Slip op. at 20. Further, the Court explained that its precedent requires that the applicant submit actual evidence of long-felt need, as opposed to argument. This is because “absent a showing of long-felt need or the failure of others, the mere passage of time without the claimed invention is not evidence of nonobviousness.” Id.