The Patent Trial and Appeal Board has upheld a patent at the center of an infringement suit for a skin cancer detection system. Dr. Rhett Dragge and his company, Melanoscan, LLC, defeated Canfield Scientific (decision).

Despite presenting multiple ways that prior art could have been combined to make the Dragge invention “obvious,” the PTAB ruled that “the Petition [for invalidity] fails to provide any detail as to how [the prior art] could have been combined with a reasonable expectation of success.” The PTAB roundly scored Canfield for failing to identify, with particularity, the grounds on which the challenge to each claim was made, quoting a well know judicial decision that, an invention “is not proved obvious merely by demonstrating that each of tis elements was, independently, known in the prior art. KSR v. Teleflex (read here).

BUSINESS TAKE AWAY: Patent examiners often deny patents based on bold assertions that two pieces of prior art, which together disclose all the features of a claimed invention, “would” have been obvious to combine by one reasonably skilled in the art. These are among the hardest objections to overcome, because of the lack of objective standards, forcing the patent owner to essentially defend a negative – that it would not have been “obvious.” There are many ways to attack this problem, but over the last year. We’ve seen the courts revitalizing the “reasonable expectation of success” dogma. It isn’t sufficient that two pieces of prior art could be combined, the combination is not valid unless one would have made the combination in the reasonable expectation of success. Still not an objective standard, but one more tool for the inventors and patentees.