Unraveling the Puzzle of Obviousness: Exploring the Raytheon Techs. Corp. v. General Electric Co. Case

By Babak Akhlaghi on September 1, 2023.

In a typical case involving obviousness rejection under 35 U.S.C. § 103, the key issue often revolves around whether a prior art reference teaches a specific claim limitation or if a skilled artisan would have been motivated to combine different references. Generally, there is no dispute regarding whether the prior art reference is enabling (e.g., capable of being implemented by a skilled artisan). However, in Raytheon Techs. Corp. v. General Electric Co., Case No. 20-1755 (Fed. Cir. Apr. 16, 2021) (Chen, J.), this was a central question on appeal.

Here, the Court explained that there is no absolute requirement for a relied-upon reference to be self-enabling under § 103, as long as the overall evidence demonstrates that a skilled artisan would have been able to make and use the claimed invention based on what was known at the time.

Raytheon is the owner of U.S. Patent Number 9,695,751 (“the ‘751 patent”). This patent relates to a geared gas turbine engine with specific features, such as the number of fan blades and turbine rotors and stages. One unique aspect of the patent is the inclusion of a “power density” range that exceeds previous designs. The ‘751 patent defines power density as the ratio of sea-level takeoff thrust to engine turbine volume. General Electric Company (GE) filed for inter partes review of the patent, challenging its claims.

The Board instituted the inter partes review of the challenged claim based on Knip reference.  In response, Raytheon argued that Knip did not enable a skilled artisan to make and use the claimed invention described in the ‘751 patent. Raytheon provided evidence showing that Knip’s proposed turbine engine relied on materials that did not exist at the time. In response, GE failed to provide any evidence suggesting that a skilled artisan could meet the power density requirements outlined in the patent. Instead, GE argued that Knip’s enablement was irrelevant to the question of whether a skilled artisan could create the engine described in the ‘751 patent using available materials.  The Board ultimately concluded that Knip was “enabling” because it provided enough information for a skilled artisan to determine and achieve the power density specified in the ‘751 patent. Based on this conclusion, the Board found the claims of the ‘751 patent to be obvious. Raytheon appealed.

The Federal Circuit agreed with Raytheon that the Board erred in its analysis of the prior art’s enablement. The Board failed to determine whether Knip enabled a skilled artisan to make and use the claimed invention, instead focusing solely on determining whether sufficient parameters were provided for a skilled artisan to determine the claimed power density without excessive experimentation. In contrast, Raytheon presented extensive evidence that the revolutionary composite material mentioned in Knip was not available, and that the exceptional temperature and pressure parameters could not be achieved using other means at the time of the patent’s priority date.

As GE did not provide any evidence to suggest that a skilled artisan could achieve the power density specified in the patent, the Court concluded that the relied-upon prior art does not enable a skilled artisan to make and use the claimed invention and therefore reversed the obviousness rejection.

A Practice Tip: This case serves as an important reminder for practitioners that a rejection under 103 must be backed by evidence. In this particular instance, GE failed to provide any evidence to support the claim that a skilled artisan could achieve the specified power density mentioned in the patent. Unfortunately, I have noticed similar instances where examiners rely on their personal knowledge to fill in missing elements in claims, without providing any evidence to support their conclusions. In these situations, it is crucial for practitioners to remind the examiner that the burden falls on the Office, and thus on the Examiner, to present clear factual evidence supporting all necessary elements of the prima facie case of obviousness. This includes factual findings regarding the knowledge in the relevant field as well as the reasoning behind combining or modifying existing art as proposed in the obviousness rejection. Ordinarily, there must be some form of evidence in the record to support a prima facie case of obviousness.  See, In re Lee, 277 F.3d at 1344-45, 61 USPQ2d at 1434 (Fed. Cir. 2002) (obviousness determination vacated for lack of evidentiary support for conclusory statements regarding obvious to select and combine); and In re Zurko, 258 F.3d at 1386 (deficiencies of the cited references cannot be remedied by general allegations of “basic knowledge” or common sense).

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