Detailed explanation for motivation to combine required for obviousness

Summary

A proper rejection on obviousness requires that the examiner show how one of ordinary skill in the art would have been motivated to combine two or more prior art references to make the claimed invention. In Personal Web Technologies v. Apple (Fed. Cir. 2/14/17), the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) failed to explain why a relevant skilled artisan would have had a motivation to combine the prior art references. At most, the explanation provided by the PTAB is that the prior art references would have allowed for the claimed function. The requisite explanation is not whether the prior art references could be or can be combined but rather why one of ordinary skill in the art would have been motivated to combine the references and also how the combination of the references was supposed to work. Also, even if the references could be combined, there must be a reasonable expectation that the combination would be successful.

Standard for obviousness rejection

A proper obviousness rejection requires that the examiner show that:

1) the prior art references disclose all of the elements recited in the claim;

2) one of ordinary skill in the art would have had a motivation to combine the prior art references to produce the claimed invention; and

3) a reasonable expectation that the combination would be successful.

More information on a proper obviousness rejection can be found in the Manual of Patent Examining Procedure § 2143.01-2143.03. The Personal Web Technology case focused in on the second and third aspects described above.

Facts of Personal Web Tech v. Apple

The claimed invention was directed to a method of locating data and controlling access to data by giving a data file a substantially unique name that depends on the files content – a so-called “True Name.” The True Name is compared with a plurality of other values in a network, a determination is made whether a user is authorized to access the data and access to the data is provided or denied based on that determination.

The two prior art references relied upon by the PTAB to reject the claimed invention were Woodhill and Stefik. Woodhill disclosed a system for using content-based identifiers in performing file management functions such as backing up files. Stefik disclosed an authentication system designed to control access to digital works stored in a repository. Each digital work is assigned a unique identifier. Each digital work also has associated usage rights to control access to the work. A user demonstrated authorization to access the digital work through a digital ticket, which identifies the ticket holder as having access to the digital file because the holder has paid for access or is otherwise entitled to access.

Rationale for reversing obviousness determination of PTAB

In rejecting the claimed invention being obvious, the PTAB merely explained that one of ordinary skill in the art reading Woodhill and Stefik would have understood that the combination of Woodhill and Stefik would have allowed for the selective access features of Stefik to be used with Woodhill’s content dependent identifiers feature. This explanation amounted to an understanding that one would have understood that those references could be combined. The PTAB failed to show how one would have been motivated to make the modification. The PTAB also failed to show how the combination of the two references was supposed to work.

Oftentimes, during patent prosecution, the examiner will make a similar brief statement in making an obviousness rejection. The examiner may state that the combination would motivated one of ordinary skill in the art to combine the references in order to [insert benefit such as to make something cleaner, simpler, more readily available, etc]. The examiner may insert any benefit including the benefit disclosed by and achieved by the instant invention. The examiner may make such assertions without explaining the details of how the combination was supposed to be combined.

Part of the reason that the Federal Circuit may have wanted more of an explanation may be because of the complexity of the subject matter.  In the instant case, the Federal Circuit explained that the amount of explanation needed to show obviousness is dependent upon the complexity or simplicity of the claimed invention. “A brief explanation may do all that is needed if, for example, the technology is simple and familiar and the prior art is clear in its language and easily understood. On the other hand, complexity or obscurity of the technology or prior-art descriptions may well make more detailed explanations necessary.”

For highly technical inventions, this case may be useful in citing to the examiner and asking for a more detailed response as to how the references would work together.

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