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ARTICLE · 02 DECEMBER 2013

Background Information Can Be Critical To Obviousness Analysis

McDermott Will & Emery
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Addressing a decision of patentability by the U.S. Patent and Trademark Office (PTO) Patent Trial and Appeal Board (Board), the U.S. Court of Appeals for the Federal Circuit vacated the and remanded the case, finding that the Board failed to account for critical background information.

United StatesIntellectual Property
Sungyong In
Sungyong In
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Randall MFG. v. REA

Addressing a decision of patentability by the U.S. Patent and Trademark Office (PTO) Patent Trial and Appeal Board (Board), the U.S. Court of Appeals for the Federal Circuit vacated the and remanded the case, finding that the Board failed to account for critical background information.  Randall MFG. v. REA, Case No. 12-1611 (Fed. Cir., Oct. 30, 2013) (Taranto, J.).

This case arises out of an inter partes reexamination of a patent assigned to FG Products, Inc.  The validity of the patent was challenged by Randall Manufacturing based on prior art including patents to Aquino and Gibbs and advertisements by ROM.  During reexamination, the examiner determined certain new and amended claims are unpatentable for obviousness over a combination of prior art references including Aquino, Gibbs, and ROM.

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