In Re Translogic Technology, Inc.
84 U.S.P.Q. 2d (BNA) 1929, 2007 U.S. App. LEXIS 23969, 504 F. 3d 1249 (2007)
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Rule of Law:
An invention is unpatentable as obvious under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art would have been obvious at the time of invention to a person of ordinary skill in the art, applying common sense and ordinary creativity, even if the prior art references were not designed to solve the same problem or provide explicit motivation for the specific combination.
Facts:
- U.S. Patent No. 5,162,666 ("the '666 patent"), titled "Transmission Gate Series Multiplexer," was issued to Translogic Technology, Inc. on November 10, 1992, from an application filed on March 15, 1991.
- The '666 patent describes a multiplexer circuit that connects multiple stages of 2:1 multiplexers in series, specifically using Transmission Gate Multiplexers (TGMs) for each 2:1 multiplexer stage.
- The Gorai reference, a technical article published in March 1990, discloses a three-stage multiplexer circuit with four inputs and three control inputs, utilizing serial connectivity of 2:1 multiplexers (referred to as M(1)s).
- The Weste reference, a textbook published in 1985, teaches and illustrates a 2:1 TGM circuit, showing the use of complementary switches to pass logic 0s and logic 1s.
Procedural Posture:
- U.S. Patent No. 5,162,666 ("the '666 patent") was issued to Translogic Technology, Inc. on November 10, 1992.
- From June 4, 1999, to September 27, 2002, Hitachi, Ltd. et al. ("Hitachi") filed five third-party requests for reexamination of the '666 patent with the U.S. Patent and Trademark Office (PTO).
- The PTO merged these requests into a single reexamination proceeding.
- On March 8, 2004, the merged reexamination resulted in the rejection of claims 16, 17, 39-45, 47, and 48 of the '666 patent under 35 U.S.C. § 103(a) by the examiner.
- Translogic appealed the examiner's rejection to the U.S. Patent and Trademark Office's Board of Patent Appeals and Interferences ("Board").
- On July 14, 2005, the Board affirmed the rejection of the claims.
- The Board denied Translogic's request for reconsideration.
- Translogic then appealed the Board's decision to the United States Court of Appeals for the Federal Circuit.
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Issue:
Does the Board of Patent Appeals and Interferences' determination that claims 16, 17, 39-45, 47, and 48 of U.S. Patent No. 5,162,666 are unpatentable as obvious under 35 U.S.C. § 103(a), based on a combination of the Gorai and Weste prior art references, stand given a flexible obviousness analysis?
Opinions:
Majority - Rader, Circuit Judge
Yes, the Board correctly determined that the claims of the '666 patent were unpatentable as obvious, because the differences between the subject matter sought to be patented and the prior art would have been obvious at the time of invention to a person having ordinary skill in the art. The court first affirmed the Board's construction of the term "coupled to receive" as meaning "capable of receiving," finding that the claim terms and specification for a structural circuit do not require a specific structural connection but rather the ability to accept external inputs. The court then applied the principles of obviousness as clarified by the Supreme Court in KSR Int'l Co. v. Teleflex Inc., emphasizing a flexible approach that considers common sense and ordinary creativity, not a rigid application of the teaching, suggestion, or motivation (TSM) test. The court found that the Gorai reference was relevant prior art because it predated the '666 patent and disclosed series 2-input multiplexer circuits, rejecting Translogic's argument that Gorai was irrelevant because it did not address the exact same problem or define all inputs. This argument, the court noted, reiterated the error corrected by KSR. Furthermore, the court determined that a person of ordinary skill in the art at the time of invention would have recognized the value of using a known element, specifically a 2:1 TGM as taught by Weste, for the 2:1 multiplexers in Gorai's series arrangement. TGMs were well-known multiplexer circuits, and an ordinary artisan would pursue such known options within their technical grasp to implement the individual multiplexers in the Gorai circuit. Thus, substantial evidence supported the Board's finding that combining Gorai and Weste would have been obvious.
Analysis:
This case is significant for its application of the Supreme Court's KSR decision, reinforcing a flexible approach to obviousness analysis in patent law. It clarifies that the relevance of prior art is not limited by whether it addresses the identical problem as the claimed invention, and that combining known elements, even without an explicit teaching, suggestion, or motivation, can lead to a finding of obviousness if an ordinary artisan would have seen the benefit or found it an obvious design choice. The decision underscores the importance of considering the common knowledge, common sense, and ordinary creativity of a person skilled in the art, rather than rigidly adhering to the TSM test, thereby broadening the scope under which inventions can be deemed obvious.
