Written by Mark Terry   

Last week, the Board of Patent Appeals and Interferences (BPAI) of the U.S. Patent and Trademark Office reversed a Patent Examiner’s 35 U.S.C. 103(a) obviousness rejection of Datacard Corporation’s key industry patent. As a practicing Miami Patent Lawyer who encounters 35 U.S.C. 103(a) obviousness rejections frequently, this case is interesting as it illustrates a significant practice pointer.

The decision of the BPAI involved a vital Datacard Corp. patent that had been asserted defensively in multiple patent infringement lawsuits against rival Card Tech. Corp. In order to call the patent into question, Card Tech. Corp. instituted a reexam of Datacard’s patent, thereby staying the patent infringement litigation. Thus, a lot rested upon the outcome of the reexam of Datacard’s patent.

Datacard appealed a 35 U.S.C. 103(a) obviousness rejection during the reexam of the Datacard patent, which resulted in the BPAI decision we discuss here. At issue was whether Datacard had shown reversible error in the Patent Examiner’s assertion that one of ordinary skill in the art would have combined the two cited prior art references. The BPAI found that Datacard had shown reversible error. Of importance in this BPAI decision is the recitation of law that a prior art reference must be considered in its entirety, as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). In fact, the BPAI found that one prior art reference had explicitly taught away from combining with the second prior art reference, and therefore the combination was not proper since one of ordinary skill in the art would NOT have combined the two cited prior art references. Thus, the Patent Examiner’s 35 U.S.C. 103(a) obviousness rejection was reversed by the BPAI.

The practice pointer in this BPAI decision is that the savvy practitioner should always question the combination of two references in a 35 U.S.C. 103(a) obviousness rejection. Although there may be a subjective inclination to combine two prior art references, the presence of an explicit teaching away from a combination essentially kills the Patent Examiner’s ability to combine the two references.