Recent Case on Obviousness: Cutsforth, Inc. v. MotivePower, Inc.

DEREK FAHEY, ESQ.

A rejection under 35 U.S.C. § 103 allows the USPTO to combine prior-art references and argue that a claimed invention would have been obvious. In Cutsforth, Inc. v. MotivePower, Inc., the Federal Circuit emphasized that an obviousness conclusion must be supported by articulated reasoning rather than conclusory statements.

The PTAB’s Obviousness Findings

The patent involved a brush assembly used in electrical motors and generators. In an inter partes review, the Patent Trial and Appeal Board concluded that the challenged claims were obvious. Among other things, the Board characterized modifications as obvious, treated the placement of components as a design choice, and stated that a person of ordinary skill could relocate an element from the prior art.

The Federal Circuit Required More Explanation

On appeal, the Federal Circuit found the Board’s reasoning inadequate. A decision based on obviousness must explain why a person of ordinary skill would have made the proposed modification. Merely labeling a feature a “design choice,” without explaining the reason for that choice, is insufficient. Likewise, the decision must articulate why the skilled person would relocate or modify a prior-art element in the claimed manner.

Using The Decision in Patent Prosecution

The reasoning can assist applicants responding to § 103 rejections. Potential arguments may include that the examiner failed to identify a reason to combine references, that the prior art teaches away from the proposed combination, or that the possible solutions were not known or finite in a way that made the claimed result predictable.

Effective responses should address the examiner’s factual findings and require a reasoned connection between the cited references and the claimed invention.