In Re Mouttet
686 F.3d 1322
| Fed. Cir. | 2012Background
- Mouttet appeals a Board decision affirming rejection of all pending claims under 35 U.S.C. § 103(a) as obvious over Falk, Das, and Terepin.
- The ’232 application discloses a crossbar array with intersecting wires and programmable crosspoints storing binary values, plus input, programming, and post-processing units.
- Falk teaches an optical crossbar-based arithmetic unit; Das teaches a nanoscale crossbar with molecular switches; Terepin teaches an analog-to-digital conversion component.
- The examiner combined Falk with Das and Terepin, finding substitutions to electrical circuitry and an A/D converter would yield the claimed device.
- The Board affirmed the § 103(a) rejection, concluding a skilled artisan would have combined the references to produce Mouttet’s device.
- Mouttet argues Falk’s operation would be destroyed by substituting electrical circuitry and that Falk teaches away from electrical implementations.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether substitution of electrical crossbar with optical Falk is obvious | Mouttet contends it would destroy Falk's principle/structure. | Board held electrical substitution would be predictable and within routine engineering tradeoffs. | Obviousness supported; substitution is predictable. |
| Whether Falk teaches away from electrical circuitry | Falk discourages electrical implementations by highlighting optical interconnects. | Gurley/Fulton concepts show disclosures of alternatives do not teach away. | Not taught away; Falk does not preclude electrical embodiment. |
| Whether combining Falk, Das, and Terepin would yield the claimed device | Das and Falk cannot be combined to achieve the claimed arrangement. | Das provides crossbar with programmable states; Falk/Das/Terepin collectively disclose the full claimed features. | Yes; combination would yield the claimed device – obvious under §103. |
Key Cases Cited
- KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) (flexible, common-sense approach to obviousness)
- In re Keller, 642 F.2d 413 (CCPA 1981) (test for obviousness not requiring actual substitution of structures)
- In re Gurley, 27 F.3d 553 (Fed. Cir. 1994) (mere disclosure of alternatives does not teach away)
- In re Fulton, 391 F.3d 1195 (Fed. Cir. 2004) (mere better alternatives do not preclude obviousness)
- Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085 (Fed. Cir. 1995) (test for obviousness considers the prior art as a whole)
- In re Sneed, 710 F.2d 1544 (Fed. Cir. 1983) (non-necessity of bodily substitution for obviousness analysis)
- In re Umbarger, 407 F.2d 425 (CCPA 1969) (supports evaluating operability beyond electrode-specific embodiment)