Claim Limitation Not Disclosed by Any Reference but Disclosed by “Proposed Combination” of References Is Obvious

| Brianne M. KingeryHans L. Mayer


Before Lourie, Hughes, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: A claim is obvious where “the proposed combination of [the references]—rather than one of the individual references—discloses the disputed claim limitations.” A motion to amend under the Administrative Procedure Act may be denied where proposed amended claims lack written description support.

Cirrus petitioned for IPR of Fleming’s patent directed to an autopilot system that, upon receiving a parachute deployment request, positions an aircraft optimally for successful parachute deployment. During the proceeding, Mr. Fleming filed a motion to amend certain claims. The Board found the challenged claims obvious over 1) a Cirrus pilot operating handbook which disclosed that a pilot should (manually) put an aircraft in a certain optimal position before deploying the parachute, and 2) a patent relating to autopilot that initiates certain procedures in an emergency, including deploying a parachute. The Board also denied the motion to amend because the proposed claims lacked written description support. Fleming appealed.

The Federal Circuit affirmed. The Federal Circuit rejected Fleming’s argument that the Board improperly supplied a missing claim limitation. Rather, it held that even though neither prior art reference taught an autopilot that performs flight maneuvers to position the aircraft for effective parachute deployment, the claims were nonetheless obvious because one of ordinary skill would have been motivated to combine 1) manual pre-parachute-deployment flight maneuvers with 2) an autopilot system—to arrive at the claimed invention. The Federal Circuit also affirmed the denial of Fleming’s motion to amend because “Fleming pointed to no passage in the specification that supports the aircraft activation requirements of the proposed amended claims.”

Editor: Paul Stewart