This is another example of how attacking motivation to combine is difficult. Here, the court upheld a somewhat roundabout motivation where the claimed invention was reconstructed through the prior art for fairly ancillary purposes, and the combination then happened to have the same properties of the composition claimed. It seems that the question is becoming not “would” someone have “reasonably” thought of the claimed invention, but “could” someone have “rationally” thought of it.
Background / Facts: The application on appeal from the Board was directed to a “Flexible Reflective Composition,” which comprises a flexible vinyl film with fluorescent coloring that can withstand color degradation when exposed to sunlight. A purported key inventive concept was the elimination of a “plasticizer” as a necessary component of the formulation while maintaining the flexibility and color stability of the vinyl film. This was achieved using a disclosed terpolymer that remains “surprisingly flexible” for use in a variety of applications, without the need for plasticizers, which increase flexibility but speed color degradation when exposed to the outdoors. The specific terpolymer disclosed was found in the prior art, but for a different application.
Issue(s): Whether there was a motivation to combine the fluorescent dye(s) of one reference (“White”) with the terpolymer composition of another reference (“Backderf”) based on teachings in still other references (“Ibuki” and “Halbur”) regarding other advantages of fluorescent dyes.
Holding(s): Yes. “The Board found, for example, that Ibuki and Halbur demonstrate that UV light will degrade the vinyl chloride component of Backderf’s film, and that fluorescent dyes absorb UV light. Based on these references, the Board readily concluded that a person of ordinary skill would have been motivated to add fluorescent dyes to a plastic film to provide protection from UV light. The Board thus looked to Ibuki and Halbur as teaching references to highlight the knowledge a person of ordinary skill in the art would have had regarding plastics and dyes when reading White.”