Motivation to Combine Prior Art Found in The Problem to be Solved

The U.S. Court of Appeals for the Federal Circuit affirmed that a claimed "underpinning system" was invalid as obvious under 35 U.S.C. § 103 in view of two prior art references, finding the motivation to combine the references in the nature of the problem to be solved. Ruiz v. A.B. Chance, Case No. 03-1331 (Fed. Cir. Jan. 29, 2004).

The patent in issue covered the use of a screw anchor and a metal bracket to underpin and stabilize slumping building foundations. Ruiz asserted that the claimed invention was obvious and, therefore, invalid. The validity question focused on two prior art patents relating to underpinning and stabilizing foundations—the Rupiper reference that used a screw anchor and concrete haunch (not a metal bracket) and the Gregory reference that used a push pier (not a screw anchor) and a metal bracket. According to the district court, Rupiper and Gregory can be combined in "two ways" to reach the same result—by replacing the concrete haunch of Rupiper with the metal