Implicit Acknowledgement of A Problem in the Prior Art and Inventors' Incorrect Statements About The Problem Being Solved Supported Obviousness Finding

Scientific Plastic Products, Inc. v. Biotage, __ F.3d __ (Fed. Cir. Sept. 10, 2014) (NEWMAN, Moore, Wallach) (Nos. 2013-1219, -1220, -1221, PTAB)

Federal Circuit affirms PTAB's rejection and cancellation of all claims relating to a resealable cartridge for low pressure liquid chromatograph based on obviousness during inter partes reexamination.

The Federal Circuit concluded that a skilled artisan would have been motivated to modify the column device disclosed in Yamada by using the sealing structure disclosed in two prior art references directed to soda pop bottles. Substantial evidence supported the finding that those references were analogous prior art because they addressed the problem of providing a fluid tight seal between a container and a resealable cap at elevated pressures, which was sufficiently close to the problem that the claimed invention addressed. "The pertinence of the reference as a source of solution to the inventor's problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor's successful achievement." Slip op. at 7.

Substantial evidence further supported the finding that a skilled artisan would have been motivated to combine the pressure-resistant cap of the prior art with the cartridge of Yamada reference. There was a concern in the prior art regarding leakage problems as shown by: 1) the presence of an O-ring in Yamada, which implicitly acknowledged a potential leakage problem, and 2) the inventors' statements in the patent (albeit incorrect statements) about the problem being solved by the invention. A skilled artisan would have combined the known pressure-resistant cap in the primary reference with the cartridge of Yamada because of the concern regarding leakage.

Dissent (Moore, J.): Judge Moore would have reversed the obviousness rejection because there is no supporting substantial evidence to modify Yamada and because the PTAB failed to determine the level of ordinary skill in the art.