Suggestion to Combine References Flows from Ordinary Knowledge of those Skilled in the Art

In re Battiston (Fed. Cir. 2005) (NONPRECEDENTIAL)

by Cory Hojka

In Teleflex v. KSR, a case now awaiting a petition decision at the Supreme Court, the Federal Circuit ruled that the correct “teaching-suggestion-motivation test” for obviousness determination requires “a court to make specific findings showing a teaching, suggestion, or motivation to combine prior art teachings in the particular manner claimed by the patent at issue.”

Joseph Battiston, therefore, appealed a decision by the PTO Board – claiming that the board applied the wrong standard of obviousness. Particularly, Battiston argued that the PTO “used impermissible hindsight to combine the cited art and failed to make findings on a motivation to combine the cited art.” The appellate panel did not agree – rather the panel found substantial evidence supporting the Board’s finding that ordinary knowledge of one skilled in the art would suggest a combination of references. In further support of their position, the CAFC cited In Re Rouffet, noting that “the suggestion to combine references may flow from the nature of the problem . . . [or] the teachings of the pertinent references or from the ordinary knowledge of those skilled in the art that certain references are of special importance in a particular field[.]”

Battiston also failed to convince the court that the PTO improperly grouped his rejected claims. Citing In re McDaniel, the court reaffirmed its rule that "in the absence of a clear statement asserting separate patentability of the claims, the Board is free to select a single claim for each group of claims subject to a common ground of rejection as representative of all claims in that group and to decide the appeal of that rejection based solely on the selected representative claim."

Rejection Affirmed.

Note: Cory Hojka is a law clerk at McDonnell Boehnen Hulbert & Berghoff LLP and a law student at the University of Chicago Law School in Hyde Park.