Federal Circuit reiterates the principle that when a § 103 rejection is based on a single prior art reference, the reference must be self-enabling in order to render the claimed invention obviousApril 20, 2021

On April 16, 2021, in Raytheon Technologies Corp. v. General Electric Co., the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) reversed a decision by the Patent Trial and Appeal Board (“PTAB”) regarding unpatentability due to obviousness under 35 U.S.C. § 103. In its decision, the Federal Circuit made clear that when a single prior art reference is relied upon to form the basis of an obviousness rejection, the reference must be self-enabling.

Raytheon Technologies Corp. (“Raytheon”) appealed an inter partes review (“IPR”) decision made by the PTAB concluding that claims 3 and 16 of U.S. Patent No. 9,695,751 (“the ‘751 patent”) were obvious in view of a 1987 NASA technical memorandum titled Analysis of an Advanced Technology Subsonic Turbofan Incorporating Revolutionary Materials (“the Knip reference”), authored by G. Knip. The ‘751 patent is owned by Raytheon, and the IPR was instituted upon petition by General Electric Company (“GE”). Although GE challenged several claims of the ‘751 patent, Raytheon disclaimed all of the challenged claims except claims 3 and 16, which were challenged as obvious based only on the Knip reference.

The ‘751 patent is directed to gas turbine engines, and, specifically, the subject matter at issue is a power density range, which Raytheon argues is much higher than what is taught by the prior art. During the IPR, Raytheon argued, inter alia, that “Knip’s disclosure failed to enable a skilled artisan to make the claimed invention.” Raytheon argued that the Knip reference relied on “revolutionary” materials not available at the time of filing of the ‘751 patent. The Federal Circuit noted that during the IPR, GE failed to dispute Raytheon’s assertion that the revolutionary materials of Knip were unavailable at the time of filing of the ‘751 patent. Rather, GE argued that whether or not Knip’s disclosure enabled the advanced engine it described was irrelevant to the issue of whether a skilled artisan could make the ‘751 patent’s engine without undue experimentation upon review of Knip. The PTAB ultimately found Knip to be enabling, thus rendering claims 3 and 16 to be obvious. The PTAB reasoned that Knip provided enough information to enable a skilled artisan to determine a power density in the range specified by the claims at issue. Raytheon appealed the decision to the Federal Circuit.

On appeal Raytheon argued that nothing in the Knip reference enables a skilled artisan to make the claimed invention, and therefore, the claimed invention is not obvious. The Federal Circuit agreed with Raytheon and reversed the decision of the PTAB. The Federal Circuit noted that “[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.” While the Federal Circuit acknowledged that a non-enabling reference may be used in combination with other references to form a proper obviousness rejection under § 103, when a single prior art reference is the basis of a § 103 rejection it must itself be self-enabling meaning that it enables the portions of its own disclosure that are being relied on to make the § 103 rejection. The Federal Circuit found that Knip failed to enable a skilled artisan to physically make Knip’s engine, and therefore because Knip was not self-enabling it could not be considered enabling in terms of making the claimed invention. Because GE presented no other evidence or prior art references other than Knip to establish obviousness, the fact that Knip was not self-enabling was dispositive.

This decision by the Federal Circuit provides additional insight into obviousness rejections under § 103. When a single prior art reference is the basis for a § 103 rejection, it must be self-enabling in order to meet the standard of a proper §103 rejection in that the prior art must enable a skilled artisan to make and use the claimed invention.

Joseph M. Hallman is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Joseph directly via email at joseph.hallman@ipmvs.com