Details Matter -- §112, a less obvious obviousness standard

Many seasoned patent prosecution attorneys are well familiar with the standards of enablement under Section 112 and nonobviousness under Section 103. However, a recent case out of the Court of Appeals illustrates a less obvious requirement of obviousness. Raytheon Technologies v. General Electric et al., Case No.: 2020-1755 (Fed. Cir. April 16, 2021). Raytheon teaches another detail of the obviousness doctrine: “[t]o render a claim obvious, the prior art, taken as a whole, must enable a skilled artisan to make and use the claimed invention.” p10 citing In re Kumar. This standard is less, well, obvious than the other stipulations of §103, like analogous art, predictable results, motivation to combine or teaching away.

Remember that Section 103 requires that

"A patent for a claimed invention may not be obtained… if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. …"

The plain language of §103 does not require that the prior art enable an ordinary artisan to make and use the invention. Enablement, contrastingly, is a standard that comes to mind when we think of authoring the specification for a patent application, i.e., something that we do to sufficiently describe the invention, not distinguish the prior art.

Paragraph (a) of §112 requires that

"The specification shall contain… the manner and process of making and using [the invention], in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same…"

Many attorneys are less familiar with the fact that the standards for §§102 and 103 require that any relied upon prior art be enabling as well. It cannot be taken for granted that the disclosure enables every claimed limitation just because it is shown or discussed in the reference.

For example, in Raytheon v. GE, the patent assignee (Raytheon) appealed an adverse final written decision in an inter partes review finding certain claims unpatentable as obvious in view of a single reference (Knip). US Patent 9,695,751 pertains to gas turbine engines typically used for powering airplanes. The claimed engines recite a performance of “power density” in a range significantly higher than the prior art and the specification describes power density as the sea-level take off thrust divided by engine volume. GE petitioned for IPR, in relevant part, based upon §103, relying on Knip alone. Knip is a 1987 NASA technical memo imagining the use of various composite materials to fuel turbine engines. Critical to the enablement analysis, the Knip memo did not include the following: (i) construction of a turbo fan engine that could use all the disclosed materials; (ii) a demonstration of the availability of the empowering composites as of the effective filing date; and (iii) a showing that the disclosed engines could achieve the assumed aggressive performance parameters related to pressure ratios and temperatures. On appeal, GE unsuccessfully argued that it would have been obvious to a POSITA to derive the claimed power density ratios which were enabled by Knip and that enablement of the engine itself was irrelevant to the obviousness inquiry.

The PTAB held that the Knip disclosure did enable the power densities limitation and rendered the subject claims obvious. The Court of Appeals, however, reversed the unpatentability finding of the PTAB, distinguishing whether the Knip disclosure enabled calculation of the claimed power densities from “making” (and “using”) the claimed engine capable of performing to the recited power densities. The panel explained that it is not that a single reference needs to be self-enabling but that the prior art taken as a whole needs to meet the enablement standard. Quoting a pre-CAFC, Sixth Circuit opinion the panel stated that

"The enabling disclosure concept [for a prior art reference] is a commonsense factor in making a determination of obviousness, for if neither any item of prior art, nor the background knowledge of one with ordinary skill in the art, would enable one to arrive at an invention, that invention would not be obvious. …"

Since Knip was the only reference being relied upon, the memo needed to be self-enabling. (“In this context the reference must necessarily enable the relied-upon portion of its own disclosure—the same standard applied to anticipatory references.”). Knip’s lacking disclosure coupled with Raytheon’s extensive, unrebutted evidence of non-enablement through expert testimony was enough to demonstrate that the PTAB’s decision lacked substantial support.

"Raytheon submitted and relied on a declaration from Dr. Williams, a professor of materials science, detailing the unavailability of the revolutionary composite material contemplated by Knip. []. Additionally, Raytheon submitted evidence that the exceptional temperature and pressure parameters cited in Knip had not been achieved through other means as of the priority date. [] Raytheon's unrebutted evidence that Knip fails to enable a skilled artisan to physically make Knip's advanced engine is conclusive, given that this was the only evidence GE presented for why a skilled artisan could achieve the claimed power density."

This case illustrates how details matter. The less obvious prior-art prerequisite of enablement cannot be overlooked in the §§102/103 analysis. Supervising attorneys should make sure that their prosecution counsel is aware of this caveat – an additional burden the Patent Office or any patent challenger needs to bear.