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Mere Similarity Between References is Insufficient Rationale for Obviousness, PTAB Litigation Blog

July 2019

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On May 8, 2019, the Patent Trial and Appeal Board denied institution of inter partes review in William Wesley Carnes, Sr., Inc. v. Seaboard Int’l Inc., No. IPR2019-00133, holding that the mere fact that prior art references are in the same field of endeavor is insufficient rationale for combining the references in an obviousness challenge. The Board’s decision turned on the principle of law set forth by the Supreme Court in KSR Int’l Co. v. Teleflex, Inc., that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Board reasoned that petitioner’s assertion of similarity in the technical field, without more, constituted a conclusory statement without sufficiently articulated reasoning and thus denied institution of petitioner’s obviousness challenge.

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