Obviousness conclusion reversed as prior art was not enabled for claimed invention

Raytheon Techs. Corp. v. General Electric Co. (USPTO as Intervenor)

Docket No. 2020-1755 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1755.OPINION.4-16-2021_1764430.pdf)

LOURIE, CHEN, HUGHES

April 16, 2021

Brief Summary:  IPR obviousness decision reversed as prior art was not enabled.

Summary:  Raytheon appealed IPR final written decision (FWD) finding claims 3 and 16 (others were disclaimed) of US 9,695,751 directed to gas turbine engines unpatenable for obviousness in view of the Knip reference.  During the IPR proceeding, “Raytheon submitted unrebutted evidence establishing that Knip’s disclosure of highly aggressive performance parameters for a futuristic turbine engine was based on the use of nonexistent composite materials” and GE “never put forth any evidence suggesting a skilled artisan could have made a turbine engine with the power density recited in the claims.”  The ‘751 claims require particular The FC panel opinion explains that the Knip reference is “a 1987 NASA technical memorandum that envisions superior performance characteristics for an imagined ‘advanced [turbofan] engine’ ‘incorporating all composite materials.’”  Raytheon argued Knip was not enabled for such engines as it “relied on ‘revolutionary’ materials unavailable as of the priority date of the ’751 patent” and GE argued that issue “was ‘irrelevant’ to the ‘question whether a [skilled artisan] reviewing Knip could make the [’]751 Patent’s engine (using any already available materials) without undue experimentation.’”  In its FWD, the Board agreed with GE that Knip is enabling because it “provided enough information to allow a skilled artisan to ‘determine a power density as defined in claim 1, and within the range proscribed in claim 1’”.  The FC panel explained that obviousness requires that “the prior art, taken as a whole, must enable a skilled artisan to make and use the claimed invention” but “does not necessarily have to enable its own disclosure, i.e., be ‘self-enabling,’ to be relevant to the obviousness inquiry” (Symbol, FC 1991; Apple, FC 2013 (“a reference that does not provide an enabling disclosure for a particular claim limitation may nonetheless furnish the motivation to combine, and be combined with, another reference in which that limitation is enabled”); Comcast, N.D. Cal. 2008 (see FN5:  “reference that was not enabled at the time of the publication became enabled at a later date through advances in technology”); this opinion:  “a standalone § 103 reference must enable the portions of its disclosure being relied upon”, citing Ashland Oil, FC 1985; In re Antor, FC 2012 (“must necessarily enable the relied-upon portion of its own disclosure—the same standard applied to anticipatory references”))  The FC panel also explained that “even though a non-enabling reference can play a role in an obviousness analysis, the evidence of record must still establish that a skilled artisan could have made the claimed invention “even though a non-enabling reference can play a role in an obviousness analysis, the evidence of record must still establish that a skilled artisan could have made the claimed invention”.  The FC panel agreed with Raytheon “that the Board legally erred in its prior art enablement analysis” since GE did not provide any evidence “that a skilled artisan could have made the claimed turbofan engine” and Raytheon presented expert testimony of non-enablement.  The FC panel also rejected GE’s “result-effective variable” argument.  The Board decision was therefore reversed.

This entry was posted in Enablement, Inter Parties Review (IPR), IPR, Obviousness. Bookmark the permalink.

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