In re Paulsen - 30 F.3d 1475 (Fed. Cir. 1994)

Rule:

Anticipation is a question of fact subject to review under the clearly erroneous standard. A rejection for anticipation under 35 U.S.C.S. § 102 requires that each and every limitation of the claimed invention be disclosed in a single prior art reference. In addition, the reference must be enabling and describe the applicant's claimed invention sufficiently to have placed it in possession of a person of ordinary skill in the field of the invention.

Facts:

The '456 patent, entitled "Portable Computer," was issued to David C. Paulsen et al., on February 18, 1986. The claims of the patent are directed to a portable computer contained within a compact metal case. A salient feature of the claimed invention is its "clam shell" configuration, in which the computer's display housing is connected to the computer at its midsection by a hinge assembly that enables the display to swing from a closed, latched position for portability and protection to an open, erect position for viewing and operation. Computers consistent with this design are commonly referred to as "laptop" computers. On April 27, 1990, and subsequently on June 12, 1990 and October 22, 1990, requests were filed in the PTO for reexamination of the '456 patent. The requests were consolidated into a single proceeding for the reexamination of claims 1 through 34. On August 9, 1991, the examiner issued a final office action in the reexamination rejecting claims 1-4, 6, 7, 9-12, and 18-34. Independent claims 1 and 18 were rejected under 35 U.S.C. § 102(b) (1988) as being anticipated by Japanese Application 47-14961 to Yokoyama. Additionally, claims 1-4, 6, 7, 9-12, and 18-34 were rejected under 35 U.S.C. § 103 (1988) as being obvious over the Yokoyama reference in view of other prior art. On appeal, the Board affirmed the examiner's rejections except as to claim 7. In sustaining the rejections of claims 1 and 18, the Board rejected the appellant's contention that Yokoyama is not a proper prior art reference under sections 102 or 103. The Board concluded that although Yokoyama discloses a calculator, a calculator is a type of computer. The Board also rejected the appellant's argument that Yokoyama is a non-enabling reference. Respecting the § 103 rejection of claims 2-4, 6, 9-12, and 19-34, the Board adopted the examiner's determination that the cited prior art would have suggested the claim subject matter to a person of ordinary skill in the art. AST, the present assignee of the '456 patent, now appeals from the Board's decision.

Issue:

Did the Board err in adopting the examiner's determination that the cited prior art would have suggested the claim subject matter to a person of ordinary skill in the art?

Answer:

No.

Conclusion:

The reviewing court affirmed, holding that since one of ordinary skill in the art was capable of providing the circuitry necessary to make the device operable for use as a computer, as a matter of law, the prior art was sufficiently enabling to serve as a reference. Given the nature of the problems confronted by the inventors, one of ordinary skill in the art would have consulted the mechanical arts, and thus, the cited references were reasonably pertinent and the finding that the references were analogous was not clearly erroneous. The claimed invention had to be considered as a whole, multiple cited prior art references had to suggest the desirability of being combined, and the references had to be viewed without the benefit of hindsight afforded by the disclosure. Having reviewed the prior art, the court concluded that there was no error in rejecting those claims for obviousness.