checklistObviousness can be an unpredictable ground for challenging the validity of a patent. Superficially, obviousness may appear to be somewhat subjective, but it must be based on objective facts that prove that the combined references really can operate together. The courts and PTAB continue to refine the obviousness standard, clarifying how to fall under an appropriate obviousness rationale. Two recent cases from the Federal Circuit and PTAB show how not to argue a proposed modification or substitution. The takeaway message from these cases is loud and clear: to establish obviousness, articulate good reasoning for why a person would have combined prior art elements to arrive at the claimed invention and show that the combination actually works.

Almost 10 years ago, the Supreme Court in KSR confirmed that whatever the rationale used in an obviousness analysis, mere conclusory statements cannot suffice. Instead, there must be some explicit, articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. The Court advised that it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the prior art elements in the way the claimed invention does. More than ever before, this guidance is relevant in establishing obviousness, as shown in the following two cases.

In In re: Jennifer Schweickert, 2016-1266 (Fed. Cir. January 26, 2017) (non-precedential), the applicant appealed the Board’s affirmance of an obviousness rejection in an ex parte reexamination. Previously, the Board had articulated a proposed modification of a primary reference, Birrell, with a secondary reference, Cunniff, by explaining that there was “no reason why Birrell would not have benefitted from the advantages of including Cunniff’s semaphore mechanism. . . . As such, modifying Birrell to include Cuniff’s semaphore mechanism would have been a predictable use of prior art elements according to their established functions.” Slip op. at 7.

The Federal Circuit held that this rationale was not good enough. Specifically, the Board never sufficiently justified why a proposed prior art modification would provide an obvious improvement. Id. at 8. The proposed substitution of a secondary reference was deemed illogical, leaving the primary reference void of the mechanism it relies on for a particular function. Id. at 8-9. This would defeat the purpose of the primary reference’s system. Id. at 9. In other words, the Board needed a better rationale for its obviousness holding to be sustained. The Federal Circuit, in effect, requires the challenger to build the invention claimed in the patent, using the prior art references, and to prove that it works.

In JTEKT Corp. v. GKN Automotive Ltd., IPR2016-00046 (PTAB January 23, 2017), JTEKT asserted an obviousness combination that involved modifying a primary reference, Tereoka, with a secondary reference, Watanabe. JTEKT’s specific rationale for this proposed modification was that “it would have been a simple substitution to replace the rear, secondary drive train of Tereoka with the rear, secondary drive train of Watanabe to yield the predictable result of reducing mass and rotating losses.” Slip op. at 22. However, the expert failed to substantiate that the proposed substitution would yield a predictable result. Id. at 23. Instead, the expert’s testimony merely mimicked the language in the Petition. Id. The court found that the expert’s testimony regarding yielding the predictable result was mere conclusory language—not the explicit articulated reasoning referred to in KSR.

The evidence was also deficient in another way. JTEKT’s expert merely testified that there may be a weight savings in the proposed substitution. Id. at 24. But JTEKT’s expert did not substantiate that the proposed modification would result in a decrease in vehicle weight. Not so fast, the court expressed. The fact that a proposed modification may reduce the vehicle weight does not mean that one skilled in the art would have been motivated to make that modification. Id. A possibility is not enough. In other words, JTEKT’s reasoning needed a better articulation. It is not enough to say that the combined reference “may” reduce weight—the expert or the petition must assert, or demonstrate, why the combination would reduce weight.

Articulating good, explicit reasoning to support obviousness is not always easy to do. It takes hard work, creativity, and motivation to articulate why prior art elements would have been combined or modified. But experience and recent case law show that there are rewards for the motivated.