The U.S. Court of Appeals for the Federal Circuit has held that obviousness can be shown where the prior art contains a motivation to combine, even if the motivation comes in the form of a somewhat half-hearted suggestion. In re Fulton, Case No. 04-1267 (Fed. Cir., Dec. 2, 2004) (Michel, J.).
In a case involving multiple decisions, appeals and other procedural wrangling, the Board of Patent Appeals and Interferences (Board) finally rejected an application for a patent on hexagonal projections on the sole of a shoe designed to increase traction. The Board based the rejection on one prior art patent that disclosed a shoe with a sole having square, triangular or rectangular projections arranged like those of the applicant and a second patent describing a shoe with hexagonal projections like those claimed by the applicant, but in a significantly different layout. The motivation to combine cited by the Board was found in a third reference that "clearly suggests that cylindrical polygon shaped studs or projections other than those expressly described (square, rectangular or triangular) may be employed to provide sharp edges which bite into artificial turf for good traction."
The Federal Circuit upheld the obviousness rejection, reasoning that, given these disclosures in the prior art, a person of ordinary skill would have "readily appreciated" the known hexagonal shaped projecting surfaces disclosed in the second patent as being well suited for using in the arrangement disclosed by the first patent. "This appreciation," the Court held, "would have furnished the artisan with ample suggestion or motivation to combine [the two references] in the manner proposed."
The applicant argued that the motivation cited by the Board was inadequate because it failed to suggest that the resulting combination was "the preferred" configuration. The Court rejected the argument, stating that the case law does not require that a particular combination must be the preferred or the most desirable combination described in the prior art in order to provide motivation for the current invention. It is sufficient that the prior art point to the proposed combination as one possible solution.
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