Frequent Losing Argument at the PTAB Finds Rare Exception
A common losing argument at the PTAB is that a reference used in an obviousness combination is non-enabling. The reason this argument fails is that a reference is prior art for all that it teaches. But even this proposition has its exceptions. For example, one would not expect a Dick Tracy comic from the 1930s showing a communicating wristwatch to somehow preclude patents on today’s smartwatches.
But where is the line drawn as to aspirational disclosures and, fair, prior art teachings?
This question was recently considered by the Federal Circuit. In Raytheon Techs. Corp. v. Gen. Elec. Co., the Court held that prior art supporting an obviousness claim, while not absolutely requiring “self-enablement,” but that a record must include art sufficient to “enable a skilled artisan to make and use the claimed invention.”(here)
The patent at issue (U.S. No. 9,695,751 or “the ’751 patent”) was directed to a gas turbine engine, such as one found in an airplane. It distinguishes itself from the prior art with its power density limitation, defined as the “sea-level-takeoff thrust” divided by the turbine’s volume. In other words, the claimed invention has more bang for its buck—more power in a smaller engine. In the patent, this power density limitation is described as “much higher than in the prior art,” an improvement in efficiency. ’
General Electric filed an inter partes review claim, arguing that the Knip reference disclosed the power density limitation in turbine engines. The Knip reference is a 1987 NASA memorandum, “envision[ing] superior performance characteristics for an imagined ‘advanced [turbofan] engine’ ‘incorporating all composite materials.’” The Board agreed, and ordered cancellation of claims 3 and 6 of the ’751 patent.
But on appeal, the Court found that during this IPR, Raytheon established “unrebutted evidence” that Knip relied upon “nonexistent composite materials,” such that the turbine engine contemplated therein could not possibly actually be made (i.e., t was just imagined and envisioned). At the Board, Raytheon argued that given the lack of disclosure in the reference, no skilled artisan could actually make the claimed invention. GE’s response was that enablement was “irrelevant” to the “question whether a [skilled artisan] reviewing Knip could make the 751 Patent’s engine,” and therefore whether the ’751 patent had been rendered obvious.
The Court disagreed. Judge Chen ruled that “To render a claim obvious, the prior art, taken as a whole, must enable a skilled artisan to make and use the claimed invention” (citing In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005).) While the prior art reference does not have to “be ‘self-enabling’” such that a skilled artisan could make the prior art reference, “the evidence of record must still establish that a skilled artisan could have made the claimed invention.” Without other prior art references as supporting evidence for enablement, “a standalone § 103 reference must enable the portions of its disclosure being relied on.”
While, in my opinion, this case would seem to fall into the “Dick Tracy” category I referenced above given its predictive disclosure, I expect the PTAB will soon be seeing a number of enablement arguments seeking to leverage this case in 103 disputes.