What are the chances of overcoming the obviousness rejection of a patent claim having all of its elements disclosed in the prior art, albeit by multiple references? In the wake of KSR v. Teleflex, the odds of succeeding with such an argument have unquestionably suffered. Certainly one cannot be surprised at the result in In re Mouttet, No. 2011-1451 (June 26, 2012), where the Federal Circuit affirmed the Board of Patent Appeals and Interferences, which in turn had affirmed a patent examiner’s rejections under 35 U.S.C. § 103.
Mouttet’s patent claims were directed to a “Crossbar Arithmetic Processor.” As the court described it:
Mouttet’s crossbar array consists of two intersecting sets of conductive parallel wires. At the wire junctions, or “crosspoints,” a thin film material or molecular component acts as a bridge between the wires. The resistance of the thin film material or molecular component between the intersecting wires may be altered by controlling the voltages applied to individual wires in the first and second sets. By altering the resistance, each crosspoint can be programmed to be in a high resistance (low conduction) state or low resistance (high conduction) state. The two states can represent the binary values “0” and “1” and thus store digital data.
The examiner’s citation of three prior art references was at issue in the appeal. Falk disclosed an optical crossbar circuit. Das disclosed “a nanoscale crossbar array with molecular switches.” Terepin taught “the use of analog-to-digital (“A/D”) converter capable of converting analog signals to digital bit patterns.” Falk allegedly taught everything in Mouttet’s claim “except for (1) a crossbar array implemented with electrical wires rather than optical light paths,” allegedly taught by Das, “(2) crosspoints with programmable states based on electrical conductivity rather than optical intensity,” also allegedly taught by Das, “and (3) conversion of analog signal outputs to digital output bit patterns in the post-processing unit,” allegedly taught by Terepin.
On appeal, Mouttet made two arguments, “first, that substituting electronic hardware for optical hardware would destroy the Falk device’s principle of operation and physical structure; and second, that Falk teaches away from the claimed invention.” Neither of these two mainstay Section 103 rebuttals were of any avail for Mouttet.
Mouttet argued that substituting electrical wires for Falk’s optical paths would destroy Falk’s “principle of operation.” The Board had determined that eliminating Falk’s optical paths would not change the operation of its circuitry. The court found that this determination was supported by substantial evidence. There was nothing in Falk’s operation that was “unique to its optical implementation.” Moreover, “[i]t is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”
Further, Falk did not teach away from use of electrical wires, even though Falk discussed the advantages of optical circuits over electronic circuits. Even if Falk discussed a more preferred embodiment, that did not rule out the possibility of other embodiments. No reference suggested that the claimed invention “would be unlikely to work with electrical circuitry, . . . only that it may be inferior for certain purposes.” Nor did Falk provide “any teaching—sufficient to overturn the contrary determination of the Board—that a crossbar arithmetic processor ‘should not’ or ‘cannot’ be implemented with electrical circuitry, or that ‘criticize[s], discredit[s], or otherwise discourage[s]’ a device like Mouttet’s.” (Citations omitted.)
Mouttet perhaps did not have the strongest argument, given that the references evidently fit very neatly together to meet all of the elements of his claim. Still, I would be interested in knowing of any recent court or BPAI decision overturning a Section 103 rejection where the only issue was whether the references could be combined. It has certainly been a few years since I have taken a case to appeal where an alleged inability to combine references was the central issue.