In the recent decision Laboratory Corporation of America Holdings v. Ravgen, Inc., No. 2023-1342, 2023-1345 (Fed. Cir. Jan. 6, 2025) the Federal Circuit addressed an issue that commonly arises when challenging an Examiner’s determination of obviousness: is there sufficient motivation to combine the references?
In Ravgen the Board found themselves having to deal with references that were “neither fish nor fowl” in terms of their motivating factors; that is, references lacking clear, easily identifiable and direct statements that either encourage or discourage their combination. In affirming the Board, the Federal Circuit found that the Board had properly weighed the evidence both for and against motivation to combine and correctly found that patentee’s reasoning and evidence against combinability outweighed petitioner’s arguments in favor of combinability.
Critical to this finding was the court’s approval of the Board’s determination, made in view of the noted absence of clearly motivating statements in the references, that “the literature would have dissuaded a [person of ordinary skill in the art] from using formaldehyde or paraformaldehyde in the [Chiu] modified method.” In supporting this decision the Federal Circuit cited Arctic Cat Inc. v. Bombardier Recreational Products Inc., 876 F.3d 1350 (Fed. Cir. 2017) and noted that “[e]ven if evidence does not ‘rise to the level of teaching away,’ it is still proper for the Board to consider evidence that “suggests reasons that a skilled artisan would be discouraged from pursuing such a combination.”
Both Ravgen and Arctic Cat remind us that, in attacking an Examiner’s combination of references, the “gold standard” of a clear teaching away in one or more of the references is not always necessary, and anything in a reference that discourages its combination with another can be used to attack the Examiner’s motivation to combine.
by Richard Treanor
Richard (Rick) L. Treanor, Ph.D., is a founding partner of Element IP. Rick has more than three decades of experience in intellectual property in both the U.S. Patent and Trademark Office and private practice. Rick focuses his efforts on the creation, maintenance, and defense of IP rights in proceedings that take place inside the USPTO: patent prosecution, patent appeals, inter partes review, post-grant review, derivation proceedings, covered business method review, re-examination, interference, third party submissions, revival, foreign filing licenses, supplemental examination, etc.