ARTICLE · 23 OCTOBER 2023
Characterization Of Reference As Primary Or Secondary Has No Effect On The Obviousness Analysis
In Schwendimann v. Neenah, Inc., No. 22-1333 (Fed. Cir. Oct. 6, 2023), the Federal Circuit affirmed the Patent Trial and Appeal Board's ("Board") holding that all claims of U.S. Patent Nos. RE41,623, 7,754,042, and 7,766,475 and claims 1–6, 8–21, and 24–31 of U.S. Patent No. 7,749,581.
United StatesIntellectual Property
In Schwendimann v. Neenah, Inc., No. 22-1333 (Fed. Cir.
Oct. 6, 2023), the Federal Circuit affirmed the Patent Trial and
Appeal Board's ("Board") holding that all claims of
U.S. Patent Nos. RE41,623, 7,754,042, and 7,766,475 and claims
1–6, 8–21, and 24–31 of U.S. Patent No. 7,749,581
are unpatentable for obviousness in view of two prior-art
references.
The Federal Circuit addressed three issues on appeal. First, the
Court affirmed the Board's finding that a skilled artisan would
have been motivated to combine the references based on their
express teachings and expert testimony that the references are
"complementary and compatible." The Court found that the
references' express teachings protected against hindsight bias
in finding a motivation to combine. Second, the Court held that
expert testimony and scientific literature in the record supported
the Board's finding that a skilled artisan would have had a
reasonable expectation of success in combining the
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