CAFC Clarifies Section 103 Prior Art Enablement Requirement, Reverses PTAB Obviousness Finding

By Nancy Braman
April 20, 2021

“[I]n the absence of other supporting evidence to enable the claimed invention, a standalone Section 103 reference must enable the portions of its disclosure relied upon to support an obviousness finding.”

https://depositphotos.com/10042948/stock-illustration-red-boxing-glove-conceptual-vector.htmlLast week, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed an inter partes review (IPR) decision from the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB) in Raytheon Technologies Corporation (Raytheon) v. General Electric Company (GE). The PTAB found claims 3 and 16 of U.S. Patent No. 9,695,751 (the ‘751 patent) unpatentable under Section103 as obvious in view of a 1987 NASA technical memorandum (the “Knip” reference). Raytheon submitted evidence that the Knip reference relied on the use of nonexistent composite materials, and thus failed to enable one of ordinary skill in the art to make and use the claimed invention. The PTAB sided with GE, even though GE made no attempt to rebut the evidence presented by Raytheon. The CAFC disagreed.

Geared Gas Turbine Engines

The ‘751 patent is directed to gas turbine engines, more specifically geared turbofan engines, which are commonly used to power airplanes with great efficiency because of the higher rotational speed of the turbine and compressor. This higher speed allows a compressor or turbine to perform work in fewer stages, leading to reduced weight and volume of the turbine and the engine. The ‘751 patent claims a geared gas turbine engine with two turbines and a specific number of fan blades and turbine rotors and/or stages. Its key distinguishing feature in the claims is “a ‘power density’ range that the patent describes as being ‘much higher than in the prior art[,]’” with power density defined as the “‘sea-level-takeoff (SLTO) thrust’ divided by the engine turbine volume.”

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PTAB Finds ‘751 Patent Obvious, Sides in Favor of GE

GE challenged claims 104, 9-10, and 15-16 of the ‘751 patent as obvious in view of the Knip reference. GE also challenged claims 1-2 and 15 as anticipated by or obvious in view of Gliebe alone and claim 23 as obvious in view of Gliebe. Raytheon disclaimed claims 1-2, 4, 9-10, 15, and 23 to effectively moot all grounds of review relying on Gliebe, leaving dependent claims 3 and 16 to be challenged solely based on the Knip reference. GE argued that Knip disclosed performance parameters that would enable or make obvious to one of ordinary skill in the art to derive power density of their respective engines from the reference. GE also argued that even if Knip did not disclose turbine volume or SLTO thrust that resulted in power density in the same range, it would have been obvious to modify the turbine volume or thrust to optimize power density.

Despite disclaiming claims 1 and 15, Raytheon relied solely on the claim limitations of the claimed power density range to rebut GE’s argument and make two arguments in favor of the patentability of claims 3 and 16. First, it argued that GE’s expert’s methodology was flawed in deriving the power density of Knip’s advanced engine from the parameters disclosed by Knip. Second, it argued that the Knip reference lacked enablement of the claimed invention, because it relied on “‘revolutionary’” materials that were unavailable as of the filing date of the ‘751 patent. GE did not rebut either of these arguments, and instead argued that enablement was irrelevant to the question of whether a person of ordinary skill in the art reviewing Knip could make the ‘751 patent’s engine without undue experimentation. The PTAB concluded that Knip was “enabling” because it provided enough information to allow one of skill in the art to “‘determine a power density as defined in claim 1, and within the range proscribed in claim 1[,]’” rendering claims 3 and 16 of the ‘751 patent obvious.

CAFC: Standalone Section 103 References Must Be Enabling

Raytheon argued on appeal that the PTAB erred in focusing only on whether the Knip reference enables a person of skill in the art to calculate the power density of Knip’s futuristic engine, rather than on whether it enables a skilled artisan to make the claimed invention. Agreeing with Raytheon, the CAFC found that the Knip reference recites the superior performance characteristics of an “imagined ‘advanced turbofan engine’ ‘incorporating all composite materials[,]’” and that the turbofan engine in the reference was, and still is, “undisputedly unattainable.” Furthermore, the reference does not explicitly disclose power density, turbine volume, or SLTO thrust. According to the court, a prior art reference asserted under Section 103 does not necessarily have to be self-enabling to be used in determining obviousness. However, the record must still establish that a person of ordinary skill in the art could have made the claimed invention. Quoting the Sixth Circuit, the CAFC explained that in the absence of other supporting evidence to enable the claimed invention, a standalone Section 103 reference must enable the portions of its disclosure relied upon to support an obviousness finding. See Minn. Mining & Mfg. Co. v. Blume, 684 F.2d 1166, 1173 n.10 (6th Cir. 1982).

The only evidence GE relied on to establish that a skilled artisan would have been able to make a turbofan engine with the ‘751 patent’s claimed power density was the Knip reference, said the court; and instead of determining if the Knip reference enabled one of skill in the art to make and use a turbofan engine with the claimed power density range, the PTAB focused on if the Knip reference enabled one of skill in the art to make and use a turbofan engine with a power density generally. GE argued on appeal that whether Knip actually enables a skilled artisan to build the specific engine contemplated by Knip is irrelevant. The CAFC disagreed, finding that this inquiry was relevant because no other evidence was presented to establish enablement. GE argued that the PTAB found that Knip’s engine could be successfully constructed and thus enabled, but the CAFC was unpersuaded. The court found that GE’s expert only constructed a computer model simulation of Knip’s engine, and never suggested that a person of skill in the art could successfully build a physically working engine. This was the only evidence submitted by GE to rebut Raytheon’s argument that the Knip reference failed to enable a person of skill to physically make Knip’s engine. Therefore, the CAFC found that GE failed to provide evidence that the turbofan engine claimed in the ‘751 patent having a specific power density is enabled by the Knip reference. Furthermore, held the CAFC, GE’s argument that it would have been obvious to modify the turbine volume or thrust of the Knip reference to optimize power density is moot because “[i]f a skilled artisan cannot make Knip’s engine, a skilled artisan necessarily cannot optimize its power density.”

 

The Author

Nancy Braman

Nancy Braman is a U.S. Registered Patent Agent. She is also a 3L at UNH Franklin Pierce School of Law, where she serves as Senior Editor of IDEA: The Law Review of the Franklin Pierce Center for IP. She has been contributing to IPWatchdog since 2019.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 9 Comments comments.

  1. AAA JJ April 20, 2021 11:38 am

    As the grounds of invalidity was single reference 103 wouldn’t the relevant factual inquiry be whether one of ordinary skill in the art had a reasonable expectation of success in modifying the Knip disclosure to arrive at the claimed inventions? And not whether the Knip disclosure anticipated, and enabled, the claimed inventions?

  2. Anon April 20, 2021 1:57 pm

    AAA JJ,

    No.

    While certainly “reasonable expectation of success” is one avenue, you appear to fall back to “anticipation” (oddly) and there is no reason to NOT address the fact of lacking enablement is itself dooming the explicit teaching so attempted to have been reached.

    This is nothing more than the adage of Science Fiction is fiction.

    Certainly, items in a book of science fiction may be ‘real’ and thus be prior art (of course, the fact that a writer of science fiction understand some things are real, includes those things to lessen the need to suspend reality, and thus make the fiction part more accessible is not likely to make the work of fiction the best source to cite).

    But items that are recognized AS fiction simply have no place in a prior art analysis (FOR the element so recognized).

    The fact here that this was a single source obviousness case does not change it into an anticipation case.

  3. MaxDrei April 21, 2021 5:34 am

    Suppose that a claim is attacked under 103, the attacker relying on a single prior art reference, D1. Never mind the date of publication of D1. If, one day before the date of the claim, the PHOSITA is still not enabled to reduce to actual practice the disclosure in D1 which is relied upon by the attacker, well then the obviousness attack fails, does it not?

    This, at least in chem/bio, is trite law since forever and a day, is it not?

  4. Anon April 21, 2021 6:07 am

    Never mind the date of publication of D1

    Non-starter.

  5. AAA JJ April 21, 2021 8:47 am

    “The fact here that this was a single source obviousness case does not change it into an anticipation case.”

    Huh?

    If GE had alleged in their petition that the Knip reference anticipated the patented claims, and Raytheon had defended on the grounds that the Knip reference didn’t enable the claims, then the burden would have been on Raytheon to prove that the Knip reference didn’t enable the claims. That is the same as when an examiner rejects an application claims as anticipated. If the applicant wants to traverse on the grounds that the reference doesn’t enable the claim(s), the burden is on the applicant to prove that.

    On the other hand, GE alleged in their petition that the Knip reference, alone, rendered obvious the claims. The burden should have been on GE to prove that one of ordinary skill in the art had a reasonable expectation to modify the Knip disclosure to arrive at the patented claims. That is the same as when an examiner issues a single reference 103 rejection. The burden is on the examiner to prove a reasonable expectation of success.

    “Enablement” is not a requirement of an obviousness rejection. Reasonable expectation of success is a requirement of an obviousness rejection. And it matters because who has the burden.

  6. Anon April 21, 2021 12:08 pm

    AAA JJ,

    You respond with a “Huh?,” but I merely reflected YOUR use of the word “anticipate” in your post at post 1.

    You now also want to use the word ‘enablement,’ but in quotes in your phrase of:

    ”Enablement” is not a requirement for an obviousness rejection.” – which is clearly wrong.

    I “get” that you would rather lean (heavily) on the words “reasonable expectation of success,” but you are only being pedantic.

    The meaning of enablement is the point of the discussion, and attempting to dress this up in different words is just not helpful.

    Science fiction is not proper prior art — for either of anticipation or obviousness.

  7. AAA JJ April 21, 2021 2:54 pm

    ““”Enablement” is not a requirement for an obviousness rejection.” – which is clearly wrong.”

    No, it’s not.

  8. ipguy April 21, 2021 6:51 pm

    “PTAB concluded that Knip was “enabling” because it provided enough information to allow one of skill in the art to “‘determine a power density as defined in claim 1, and within the range proscribed in claim 1[,]’” rendering claims 3 and 16 of the ‘751 patent obvious.”

    What a joke! The PTAB didn’t independently determine skill level! The members of that PTAB panel most likely don’t even have a clue as to how to determine the level of skill in the art! Instead, they did their typical PTAB BS. GE asserted what they believed to be the level of skill. Raytheon didn’t provide their own explicit determination or traverse GE’s conclusion as to skill level. So, the PTAB made a generic statement that based on their review of the evidence, prior art, etc., they found GE’s skill level determination to be consistent with theirs…..as if.
    If the USPTO was so proud of the APJs background and experience, they’d post bios of all the APJs on the USPTO website. I think Gene posted an article or two some time back with regard to the background and experience of USPTO APJs.

  9. Anon April 21, 2021 7:19 pm

    Please explain how you ever get close to (your desired words of) expectation of success if you have no requirement of enablement?

    Be sure to note the meaning of the words enablement in your pointing out how you get to where you think you are.