In Re Construction Equipment Company

Determining either what a reference teaches, or whether a person having ordinary skill in the art would have reason to combine prior art references is a question of fact.

The United States Patent and Trademark Office (the "PTO") rejected numerous claims of Construction Equipment Company's ("CEC") patent during reexamination proceedings. CEC is the owner of U.S. Patent No. 5,234,564 (the "'564 patent") entitled "Mobile Screen Assembly for Rubble and Debris." The '564 patent was directed to a vehicle that screens rocks and debris, based on relative size, from soil. During ex parte reexamination proceedings, CEC both amended and added claims, however, all were "rejected by the Examiner as obvious under 35 U.S.C. §103." CEC appealed, but the Board of Patent Appeals and Interferences (the "Board") affirmed the Examiner's rejections. The Court of Appeals for the Federal Circuit found the "Board's opinion supported by substantial evidence and without legal error," and affirmed the 103 rejection. The Court reiterated that the "determination of what a reference teaches is one of fact." Further, the "existence of a reason for a person of ordinary skill to combine resources" is also a question of fact. The Court agreed with the Board that "every limitation of each claim on appeal [wa]s found in one or another of the available references," and that one of ordinary skill in the art would have been able, and had reason, to combine the available references to practice CEC's alleged invention. Thus, because the alleged invention consisted entirely of combining known elements into a machine that was obvious and unpatentable, the Court AFFIRMED the Board's opinion.