When a new case comes down from the Federal Circuit, some commentators rush to write about it and tell you the “important” part of a decision. As time goes by, however, later court and PTAB decisions sometimes use different aspects of the case much more prominantly than what commentators originally thought to be the key portions of the decision.
Consider Arctic Cat Inc. v. Bombardier Recreational Prod. Inc., appeal 2017-1475. Some commentators talked about the patent marking issues, while others discussed the damages issues. Indeed these were, and are, important issues in the case and there was much to learn. But the Federal Circuit also discussed the more mundane issues of obviousness, motivation to combine, and teaching away. The PTAB has cited Arctic Cat for these more mundane issues in some interesting ways that prosecutors should consider. Sometimes Arctic Cat can help the applicant, and sometimes it can help the examiner.
As one example, in a recent PTAB decision (SN 13/138,305), the issue was whether the examiner had properly combined the cited references. As is common, the examiner put forth a reason for combining the cited art that the applicant contended ignored other teachings the references that would lead away from the invention. The PTAB disagreed, nothing that
Appellants further contend that “Walton teaches away from the obviousness analysis" (App. Br. 18-19) but does not disclose where Walton criticizes, discredits or otherwise discourages investigation into the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); see also Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069-70 (Fed. Cir. 2018) (holding that even in the absence of a teaching away, general preferences as stated in the prior art are still relevant to determining whether a skilled artisan would be motivated to combine the prior art in the manner claimed).
Thus, even if the prior art does include some teachings that might discourage the combination (yet not rise to the level of teaching away), this can be overcome through general preferences that might still support motivation to combine.
Looking to the particular of this case, it relates to an invention that utilizes lubrication of a needle for multiple insertions.
1. A pen needle, comprising: a hub having an interior including an open proximal end; a needle fixedly connected to said hub, said needle having a patient end, formed for insertion into a patient, and a proximal end extending into said interior of said hub; a reusable outer cover for repeatedly receiving said hub and said needle between multiple injections of the pen needle; and a lubricant reservoir disposed in said outer cover such that at least a portion of said needle is disposed in said lubricant reservoir whenever said hub and said needle are received by said outer cover.
The appeal brief actually did cite to the third reference (Walton) at page 1, lines 9-11 where Walton discloses the risk of contracting viruses if the needle, once used, is reused in an un-sterilized form, whereas the examiner’s reason to combine the references was to “reapply lubricant to the needle in order to aid in the insertion of the needle through the skin in a subsequent injection procedure…”
Nevertheless, the PTAB was unconvinced, likely in part because the repeated injection aspect was held to be merely functional language that did not define a structural claimed feature. Even if the applicant has put forth more evidence, such as in a declaration, it seems it would likely have been insufficient in this particular case.
In other circumstances, a declaration and/or other evidence of why a skilled artisan would not have been motivated to make a combination can be powerful and, under Arctic Cat, counteract what would otherwise seem like sufficient motivation to combine. The trick here is that the applicant is not attempting to rebut a prima facia case, but instead discredit the prima facia case. In this way, the applicant can cite to Arctic Cat for the proposition that evidence suggesting reasons to combine cannot be viewed in a vacuum apart from evidence suggesting reasons not to combine. There are PTAB examples where such an approach is successful, and where Arctic Cat has aided the applicant in establishing patentability. So, beware of the double edged sword of Arctic Cat when arguing the mundane issue of obviousness.