Federal Circuit Rules That Physical Combinability Does Not Drive an Obviousness Inquiry
In re Gorelik, No. 2016-1432 (Fed. Cir. June 14, 2016) (non-precedential). On appeal from P.T.A.B. Before Prost, Bryson, and Stoll, per curiam.
Procedural Posture: Appellant patentee appealed P.T.A.B.’s decision affirming patent examiner’s rejection of certain patent claims as obvious. CAFC affirmed.
Claim Construction: CAFC affirmed the Board’s construction that, under the “broadest reasonable interpretation” standard, the term “hollow cylindrical” is not limited to cylinders with flat ends but includes cylinders with conical ends.
Obviousness: Patentee failed to submit any evidence supporting its contention that the Board’s combination of references would result in an impractically large device. CAFC further noted that an obviousness determination is not based on whether references could be physically combined, but whether the claimed invention is rendered obvious by the teachings of the prior art as a whole. CAFC found that the Board’s decision was supported by substantial evidence.