The claimed combination as a whole can serve as a nexus between the claimed invention and any objective indicia of non-obviousness. Here, for example, the nexus was found to be provided by the combination of a prior art automobile engine and cooling modifications for a marine environment even though the modifications by themselves would not have been sufficient. “Where the allegedly obvious patent claim is a combination of prior art elements, we have explained that the patent owner can show that it is the claimed combination as a whole that serves as a nexus for the objective evidence; proof of nexus is not limited to only when objective evidence is tied to the supposedly ‘new’ feature(s).” This would be a good case to consult and cite before asserting any objective indicia of non-obviousness for a claimed invention where each element was individually known in the prior art.
Background / Facts: The patent being asserted here is directed to marine engine exhaust systems that reduce the amount of carbon monoxide released in the exhaust. The claims recite a low-pollutant automobile engine modified with cooling equipment for a marine environment. A similar automobile engine is described in the primary prior art reference cited by the accused infringer and it is not disputed that the other elements existed in other prior art. In defense of the patent’s validity, the patentee presented various objective evidence of non-obviousness.
Issue(s): Whether the required nexus between the objective indicia and what is “novel in the claim” requires a showing that the specific elements absent from the primary reference are tied to the asserted objective evidence.
Holding(s): No. “Where the allegedly obvious patent claim is a combination of prior art elements, we have explained that the patent owner can show that it is the claimed combination as a whole that serves as a nexus for the objective evidence; proof of nexus is not limited to only when objective evidence is tied to the supposedly ‘new’ feature(s). [] In such a case, the fact that an isolated feature may be present in the prior art may not render irrelevant objective evidence of non-obviousness of that feature in the claimed combination. [The patentee] was entitled to the presumption of nexus for its objective evidence of non-obviousness because it established that the specific products … are embodiments of the invention in the asserted claims.”