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In Re Scott E. JohnstonFebruary 2, 2006

The United States Court of Appeals for the Federal Circuit affirmed the decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences that affirmed the Examiner’s rejection of all the claims in patent application No. 09/312, 992 entitled ‘Large Diameter Spirally Formed Pipe’ as being anticipated or obvious.The Federal Circuit Court specifically addressed these questions: when there is sufficient motivation to combine two references to sustain an obviousness rejection, is it appropriate to do so? and what factors should considered when making the determination?The Federal Circuit Court began by highlighting the precedent required to find a combination obvious. The general rule being that ‘there must be some teaching, suggestion, or motivation in the prior art to select the teachings of separate references and combine them to produce the claimed combination.’ Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1385 (Fed. Cir. 2001). The court then went on to state:An explicit teaching that identifies and selects elements from different sources and states that they should be combined in the same way as the invention at issue, is rarely found in the prior art. As precedent illustrates, many factors are relevant to the motivation-to-combine aspect of the obviousness inquiry, such as the field of the specific invention, the subject matter of the references, the extent to which they are in the same or related fields of technology, the nature of the advance made by the applicant, and the maturity and congestion of the field. Objective indicia are also relevant, for the commercial response to an invention is a useful control upon hindsight evaluation of obviousness.The suggestion or motivation to combine references does not have to be stated expressly; rather it may be shown by reference to the prior art itself, to the nature of the problem solved by the claimed invention, or to the knowledge of one of ordinary skill in the art.The Federal Circuit then went on to apply this analysis to the two prior art references cited to render the claimed invention obvious and agreed with the Board of Patent Appeals and Interferences that it would have been obvious to combine the two references’ teachings to provide the claimed invention.To read the full text of the decision, log on to

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