Background
Slingshot Printing LLC appealed two final written decisions of the Patent Trial and Appeal Board regarding U.S. Patent No. seven four eight four eight two three and U.S. Patent No. seven five nine four seven zero eight. The Board had found claims unpatentable under Section thirty five of Title thirty five of the United States Code as obvious in view of prior art references including U.S. Patent No. seven three eight four one one three and U.S. Patent No. six six one two six seven three. The patents concern the use of temperature sensors to monitor and regulate temperature on a per thermal region basis in an inkjet printer.
The court’s reasoning
The court reviewed factual findings under the substantial evidence standard and the legal conclusion of obviousness de novo. Slingshot argued the Board relied on hindsight, but the court found the Board used the patent’s background section only for admissions of what was known in the art. The court also rejected the argument that a prior reference taught away, noting the language did not rise to that level. Regarding motivation to combine, the court deferred to the Board’s finding that the benefit of accurate temperature measurement outweighed cost concerns. The court also affirmed the Board’s conclusion that the prior art taught the sensor to be substantially centrally disposed within the region.
What it means going forward
The decision reinforces the Patent Trial and Appeal Board’s authority to find claims obvious based on combinations of references and affirms that cost concerns do not automatically negate a motivation to combine when technical benefits are present.