Datacard Corporation Patent Survives Reexamination

MARK TERRY, ESQ.

The Board of Patent Appeals and Interferences reversed an obviousness rejection of a Datacard Corporation patent during reexamination.

The patent had been asserted in infringement litigation, and a competitor initiated reexamination, placing substantial importance on whether the patent claims would survive.

The examiner combined two references under 35 U.S.C. § 103(a). Datacard argued that one reference taught away from the proposed combination, meaning that a person of ordinary skill would have been discouraged from following the examiner’s path.

The Board agreed that the reference had to be considered as a whole, including the portions that led away from the claimed invention. Because the evidence undermined the proposed combination, the Board reversed the rejection.

Practical takeaway: When an obviousness rejection combines multiple references, evaluate whether either reference discourages the combination. A clear teaching away can defeat the examiner’s rationale.