United States: Reversing the discovery of the obvious because the state of the art did not allow itself
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Raytheon Technologies Corp. v General Electric Co., N ° 20-1755 (Fed. Cir. April 16, 2021)
The issue on appeal was whether a prior art reference used in a successful Section 103 obviousness challenge had a “self-empowering” disclosure. The issue arose because of the requirement that the evidence establishes that a skilled craftsman at the time could have made and used the claimed invention.
Here, the prior art reference has been relied on to show evidence of a claimed power density limitation for an engine. The evidence, however, established that the reference’s disclosure was based on the use of non-existent composite materials that could potentially be used for a futuristic engine. Thus, the Federal Circuit reversed the finding of obviousness, concluding that there was no evidence that a skilled craftsman could make and use the claimed invention.
Arguments to the contrary were rejected. It wasn’t a while since the patent challenger presented an expert analysis that a skilled craftsman could have successfully built a
computer model of the claimed engine, as the relevant question was whether the skilled craftsman could build the claimed engine engine. Likewise, it did not matter whether a skilled craftsman would have been motivated to optimize engine characteristics as claimed because, if a “skilled craftsman cannot do [the engine described in the
prior art reference], a skilled craftsman cannot necessarily optimize “the engine to meet the characteristics claimed.”
Read the full decision here.
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