The U.S. Court of Appeals for the Federal Circuit affirmed a decision by the Board of Patent Appeals and Interferences (the Board) finding patent claims directed to a reading machine to be obvious under §103. In re Kahn, Case No. 04-1616 (Mar. 22, 2006) (Linn, J.).
Khan’s application involves a reading machine that can read out words "looked at" by a blind user through tracking eye movement. The Board rejected the claims as obvious in view of four prior art references. Kahn did not dispute the Board’s finding that three of the references collectively teach a skilled artisan how to make a reading machine that can read out a word selected by the user through looking at the word on a screen. To make such a machine for a blind user, however, Kahn faced a problem of how to accomplish eye-tracking without using the user’s sense of sight. The Board found that the fourth reference, which discloses an acoustic imaging device for the blind, would have made it obvious to a skilled artisan how to solve this problem.
In affirming the Board’s decision, the Federal Circuit elaborated on its "motivation-suggestion-teaching" requirement for combining references. The Court emphasized that, to guard against use of hindsight, the Board must explain the reasons that would have motivated one of ordinary skill in the art to combine. The Court pointed out that explaining motivation "entails consideration of both the ‘scope and content of the prior art’ and ‘level of ordinary skill in the pertinent art’ aspects of the Graham test;" "the motivation-suggestion-teaching test picks up where the analogous art test leaves off and informs the Graham analysis;" and in considering motivation to combine, "the problem examined is not the specific problem solved by the invention but the general problem facing the inventor before the invention was made."
The Court upheld the rejection because the Board identified a motivation to combine based on statements in the references and the nature of the problem facing the inventor. Specifically, the Board identified express teachings in the fourth reference that two-dimensional sound can be used to substitute for the lost sense of sight, to locate a point in space and to create a "rudimentary reading device." Even though Kahn saw only a rudimentary reading device in the fourth reference and did not find the reference helpful in solving his problem, the Court reasoned that a skilled artisan need not be motivated for the same reason Kahn contemplated. Moreover, the Court found it irrelevant that combining the references may result in a reading machine less effective for the purpose disclosed in a reference, because a reference is not limited to the specific invention disclosed.
Practice Note
This case addresses an issue currently pending before they U.S. Supreme Court in the KSR International Company v. Teleflex Inc. case; i.e., whether a finding of obviousness under §103 even requires satisfaction of the Federal Circuit "motivation-suggestion-teaching test". In its non-precedential Teleflex opinion, the Federal Circuit stated: "[O]ur case law makes clear that the best defense against the subtle but powerful attraction of a hindsight-based obviousness analysis is rigorous application of the requirement for a showing of the teaching or motivation to combine prior art references." The last time that the Supreme Court heard a §103 obviousness case was the 1966 Graham v. John Deere Co. case.
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