Motivation to Combine Arose from Prior Art References in the Same Field of Endeavor and Related Subject Matter

Case: In re: Johnston, No. 05-1321 (Fed Cir. 1/30/06)

The One Sentence Summary: Claims for large diameter spiral pipe were anticipated or obvious in light of prior art involving cylindrical structures such as silos, and there was motivation to combine references in the same field of endeavor.


What They Were Fighting About: The applicant appealed the patent examiner's finding that his claims for spiral pipe were anticipated or obvious.

Federal Circuit Holdings:

• The patent examiner correctly looked to prior art involving silos in rejecting claims for pipes where the dictionary definition and the specification supported a broad interpretation of the word "pipe" to include cylindrical structures such as silos.
• A dependent claim introduced by the word "may" did not further narrow the claim because optional elements may be omitted.
• The examiner properly combined two references regarding large diameter pipe. "[M]any factors are relevant to the motivation-to-combine aspect of the obviousness inquiry, such as the field of the specific invention, the subject matter of the references, the extent to which they are in the same or related fields of technology, the nature of the advance made by the applicant, and the maturity and congestion of the field. Objective indicia are also relevant, see Graham v. John Deere Co., 383 U.S. 1 (1966), for the commercial response to an invention is a useful control upon hindsight evaluation of obviousness." Here, the references were in the same field of endeavor and deal with related subject matter.