Thank You For Submiting Feedback!
United States Court of Appeals for the Federal Circuit
April 16, 2021, Decided
[*1376] CHEN, Circuit Judge.
A typical 35 U.S.C. § 103 obviousness case often turns on whether an asserted prior art reference teaches a particular disputed claim limitation or whether a skilled artisan would have been motivated at the time of invention to combine the teachings of different references. There usually is no dispute about whether an asserted prior art reference is "self-enabling," i.e., whether a skilled artisan [**2] can make and use the subject matter disclosed in the reference. This appeal, however, requires us to consider when a reference needs to have a self-enabling disclosure for supporting an obviousness case. ] We have explained that there is no absolute requirement for a relied-upon reference to be self-enabling in the § 103 context, so long as the overall evidence of what was known at the [*1377] time of invention establishes that a skilled artisan could have made and used the claimed invention. We have also previously expounded the principle that if an obviousness case is based on a non-self-enabled reference, and no other prior art reference or evidence would have enabled a skilled artisan to make the claimed invention, then the invention cannot be said to have been obvious.
In the present case, Raytheon1 appeals a final inter partes review decision of the Patent Trial and Appeal Board (Board) finding claims 3 and 16 of U.S. Patent No. 9,695,751 ('751 patent) unpatentable as obvious in view of the Knip reference. In particular, the Board found that Knip discloses the claimed power density limitation for a geared gas turbine engine. During the proceeding, Raytheon submitted unrebutted evidence establishing that Knip's disclosure of highly [**3] aggressive performance parameters for a futuristic turbine engine was based on the use of nonexistent composite materials. In response, the petitioner, General Electric Company (GE), never put forth any evidence suggesting a skilled artisan could have made a turbine engine with the power density recited in the claims. Because the relied-upon prior art fails to enable a skilled artisan to make and use the claimed invention, we reverse.
Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.
993 F.3d 1374 *; 2021 U.S. App. LEXIS 10961 **; 2021 U.S.P.Q.2D (BNA) 434; 2021 WL 1432964
RAYTHEON TECHNOLOGIES CORPORATION, Appellant v. GENERAL ELECTRIC COMPANY, Appellee, ANDREW HIRSHFELD, PERFORMING THE FUNCTIONS AND DUTIES OF THE UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor
Prior History: [**1] Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2018-01442.
engine, skilled, turbine, artisan, density, prior art, enabling, invention, disclosure, parameters, fan, thrust, turbofan, volume, compressor, gas turbine engine, disclose, composite, recited, Patent, unpatentable, teaches, geared, stages, speed
Patent Law, Anticipation & Novelty, Description in Publications, Nonobviousness, Evidence, Prima Facie Obviousness, Elements & Tests, Prior Art, Predictability, Inferences & Presumptions, US Patent & Trademark Office Proceedings, Appeals, Jurisdiction & Review, Standards of Review, Substantial Evidence, De Novo Review, Fact & Law Issues, Ordinary Skill Standard, Specifications, Enablement Requirement, Standards & Tests