The U.S. Court of Appeals for the Federal Circuit has upheld the rejection of a pending application and, in the process, considered anew the questions of when there is sufficient motivation to combine two references to sustain an obviousness rejection as well as what factors should be considered when making the determination. In re Johnston, Case No. 05-1321 (Fed. Cir. Jan. 30, 2006) (Newman, J.).

Johnston applied for a patent on a spiral pipe with a diameter in excess of 12 or 15 feet. The pipe is formed by bending a long sheet of metal or other ductile material into a helix and then joining the adjacent edges by welding. The U.S. Patent and Trademark Office examiner rejected the claims as obvious in view of several references describing silos, storage tanks and other cylindrical structures formed from strips of metal bent into a helical shape and joined at the edges. Johnston argued the examiner’s construction of "pipe" was too broad, and "pipe" in the construction trades is well understood to mean structures used to carry fluids or as electrical conduits.

The Court observed that Johnston himself, in his specification, gave "pipe" the same broad meaning when he stated that pipes may be used as overpasses, storage buildings, homes, silos and water tanks (and extolled the value of his invention in such large-diameter structures).

Johnston also objected to the examiner’s combination of various prior art references to support an obviousness rejection and argued the examiner had not identified an appropriate motivation to combine. Here too the Federal Circuit affirmed, observing "many factors are relevant to the motivation-to-combine aspect of the obviousness inquiry, such as the field of the specific invention, the subject matter of the references, the extent to which they are in the same or related fields of technology, the nature of the advance made by the applicant, and the maturity and congestion of the field." Observing that "[a]n explicit teaching that identifies and selects elements from different sources and states that they should be combined in the same way as the invention at issue, is rarely found in the prior art," the Court found it sufficient under the facts of this case that the teachings were in the same field of endeavor and dealt with related subject matter.

Practice Note
The Federal Circuit’s non-obviousness case law has been the subject of considerable criticism, most recently in a well-publicized petition for certification filed in the KSR Int’l case. That petition, and a supporting amicus brief filed by twenty-four law professors, argues the Federal Circuit’s obviousness standards are too low, and the KSR opinion is inconsistent with the Supreme Court’s decision in Sakraisa (a 1979 case and the Supreme Court’s most recent obviousness ruling). Sakraisa held that merely combining known elements with no change in functions fails for obviousness. Under the Sakraisa standard, the Teleflex patent—and countless others that take a known technology and implement it on the internet—would likely fail for obviousness.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.