Characterization of Reference as Primary or Secondary Has No Effect on the Obviousness Analysis

In Schwendimann v. Neenah, Inc., No. 22-1333 (Fed. Cir. Oct. 6, 2023), the Federal Circuit affirmed the Patent Trial and Appeal Board’s (“Board”) holding that all claims of U.S. Patent Nos. RE41,623, 7,754,042, and 7,766,475 and claims 1–6, 8–21, and 24–31 of U.S. Patent No. 7,749,581 are unpatentable for obviousness in view of two prior-art references.

The Federal Circuit addressed three issues on appeal. First, the Court affirmed the Board’s finding that a skilled artisan would have been motivated to combine the references based on their express teachings and expert testimony that the references are “complementary and compatible.” The Court found that the references’ express teachings protected against hindsight bias in finding a motivation to combine. Second, the Court held that expert testimony and scientific literature in the record supported the Board’s finding that a skilled artisan would have had a reasonable expectation of success in combining the references. In particular, the Court agreed with the Board’s reasoning that a skilled artisan would have had ordinary creativity and used common sense when evaluating the proposed combination’s likelihood of success. Third, the Court affirmed the Board’s finding that Ms. Schwendimann had forfeited her argument that Neenah and the Board failed to explain why a skilled artisan would have chosen Kronzer as the primary reference. Even had Ms. Schwendimann not forfeited the argument, the Court noted that her primary-reference argument has no basis in its case law and that, where relevant factual inquiries are clear, characterizing a reference as primary or secondary has no legal significance.