Motivation to combine two prior art references is not negated by a clash in inventive aspects that are inconsequential to the problem addressed by the proposed combination. Here, for example, differences in wire configurations (insulated vs. bare) was found to be inconsequential to the obviousness of combining core alignment techniques because the alignment problem and solution did not depend on whether the wires were insulated. “[A] reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect.” It may therefore be best to focus arguments against a proposed obviousness rationale on incompatibilities that are directly related to the problem or solution addressed by the examiner’s proposed combination.
Background / Facts: The patent on appeal here from rejection at the PTO during inter partes review proceedings is directed to methods of making a communications cable by passing a core and conducting wires through one or more dies, bunching the wires into grooves on the core, twisting the bunch to close the cable, and jacketing the entire assembly. It is undisputed that a first prior art reference discloses a helically twisted cable that needs to fit into the notches of (i.e., be aligned with) a separator, and that a second prior art reference teaches the importance of aligning conductors with a separator (core) and suggests doing so with a die to prevent twisting of the separator.
Issue(s): Whether a person of ordinary skill in the art seeking to manufacture cables disclosed in the first prior art reference—with four insulated twisted pairs and a separator—would have been motivated to use the method of the second prior art reference to solve the alignment issues common to manufacturing the cables in both prior-art sources.
Holding(s): Yes. Although it is true that the second prior art reference, unlike the first prior art reference, “shows only conductors that are not individually insulated,” the second prior art reference “plainly discloses the need to align the conducting wires with the core and how to do so. … The alignment problem and solution do not depend on whether the wires are insulated. The Board’s disregard of the insulation-independent alignment teaching of [the second prior art reference] violates the principle that ‘[a] reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect.’”