TAKEAWAY: While it can be frustrating dealing with the gray area surrounding the obviousness doctrine, the Federal Circuit reminds us that an obviousness rejection is improper if the proposed modification in some way violates one or more aspects of the reference being modified.
In a non-precedential decision, the Federal Circuit in University of Maryland Biotechnology Institute v. Presens Precision Sensing GmbH affirmed the Patent Trial and Appeal Board’s holding that claims of the university’s patent are invalid due to obviousness. The Court nevertheless provided clarity on the boundaries of the obviousness doctrine. In particular, the Court expressed that caution should be exercised before holding a claimed invention obvious by combining references, and that the obviousness doctrine does not extend to cover situations where, for example, a proposed modification taught by a modifying reference: contradicts the basic teachings of a modified reference, renders the modified reference inoperable for its intended purpose, changes the principle of operation of the modified reference, and/or requires a substantial reconstruction and redesign of the modified reference.
This decision sheds light on the contours of the line between proper and improper obviousness-type rejections. Applicants would do well to have a firm understanding of these contours, as recent data from the Patent Office show that around 80 percent of all Office Actions issued in the last several years have included an obviousness rejection of some kind.