Raytheon Technologies Corporation v. General Electric Company, No. 20-1755 (Fed. Cir. Apr. 16, 2021)
In Raytheon, the Federal Circuit reversed the decision of the Patent Trial and Appeal Board holding the Board had erred in not considering whether a prior art reference used in a single-reference obviousness combination was enabled, and that the obviousness rejection could not stand in view of the non-enablement of said reference.
General Electric Company petitioned for inter partes review of a patent owned by Raytheon Technologies Corporation, directed to gas turbine engines. To streamline the review process, Raytheon disclaimed all but two of the claims, which were challenged for obviousness based on a single reference by Knip. Knip, a 1987 NASA technical memorandum, discussed imaginary characteristics of a turbofan engine using materials that were unattainable at the time of its publication. GE argued that Knip disclosed performance parameters that would permit a person of skill in the art to derive the power density of their engines, where a “power density” range was identified as the key point of distinction in Raytheon’s patent. Raytheon countered that the disclosure of Knip did not enable a person of skill in the art to make the claimed invention. However, the Board was not convinced, and deemed the claims unpatentable in view of the Knip reference. Raytheon appealed the decision with respect to claims 3 and 16 to the Federal Circuit.
To render a claim obvious, the prior art as a whole must enable a person of skill in the art to make or use a claimed invention. If a non-enabling reference is used to present an obviousness argument, it must be combined with another reference or with background knowledge of a person of ordinary skill to arrive at the claimed invention.
The Federal Circuit held that the Board improperly focused on whether the Knip reference enabled a person of skill in the art to calculate power density of the imaginary engine of the Knip reference, rather than considering if Knip enabled a person of skill in the art to make the claimed invention. Because the obviousness rejection in this case was based on a single reference, the Federal Circuit determined that self-enablement of that reference was relevant to the obviousness argument. Further, the Federal Circuit determined that the Knip reference did not enable a person of skill in the art to make the claimed invention of Raytheon’s patent, and therefore the patent claims were not rendered obvious. The Federal Circuit reversed the decision of the Board.
A non-enabling reference may be used to support an obviousness challenge, but the non-enabled limitation must be supported by some other enabled disclosure, such as a secondary reference or background knowledge of a person of ordinary skill in the art.