OBVIOUSNESS WAS A LEAD PIPE SINCH

Tokyo Keiso Company, Ltd. v. SMC Corporation, [2008-1045, -1112] (January 9, 2009) [LOURIE, Schall, Prost] NON-PRECEDENTIAL The Federal Circuit affirmed summary judgment of invalidity of claims 1, 2, and 5 of U.S. Patent 5,458,004 for obviousness.
DISCUSSION: The patent related to measuring the velocity of flow in pipes with sound, and in particular using plastic as opposed to metal pipes so that the higher speed of sound in metal did not affect the measurement. The Federal Circuit observed that applicant had admitted most of the elements of the claims in dispute were prior art, stating that [A] statement by an applicant during prosecution identifying certain matter not the work of the inventor as ‘prior art’ is an admission that the matter is prior art.” The Federal Circuit found that the art relied upon by the district court disclosed the claim elements that were not admitted as prior art. As for the specific choice of material, the Federal Circuit noted that the claimed material was in the same family as in the reference, and relied upon the lack of unexpected results in determining that specific material was obvious from the generic disclosure of the prior art.
In finding that no secondary reference was needed, the Federal Circuit quoted from KSR that “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”