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ARTICLE · 10 JANUARY 2018

Inherent Obviousness Means Element Is Necessarily Present, Not Just Obvious

Jones Day
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In prior blog postings, we have commented on PTAB decisions regarding the standards for demonstrating inherent obviousness (here and here).

United StatesIntellectual Property
Emily M. Whitcher
Emily M. Whitcher
S. Christian Platt
S. Christian Platt
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In prior blog postings, we have commented on PTAB decisions regarding the standards for demonstrating inherent obviousness ( here and here). Practitioners should also be aware of a recent Federal Circuit decision clarifying the test is whether an element is necessarily present – not whether the element is obvious.

On September 8, 2017, the Federal Circuit issued a decision affirming the Patent Trial and Appeal Board's (the "Board") affirmance of an Examiner's finding of unpatentability of U.S. Patent No. 7,557,301 (the '301 patent) after inter partes reexamination (No. 2015-004315). Southwire Co. v. Cerro Wire LLC, 870 F.3d 1306 (Fed. Cir. 2017). The '301 patent is directed to a method of manufacturing an electric cable using a lubricant incorporated into the outer sheath, which results in a reduction of the pulling force required to install the cable by at least about 30%.

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