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Nexus Analysis May Be Based on Novel Combination of Known Elements Considered as a Whole

| Sean S. KimMark Kachner

HENNY PENNY CORPORATION v. FRYMASTER LLC

Before Lourie, Chen, and Stoll.  Appeal from the United States Patent and Trademark Office.

Summary: With respect to secondary considerations of nonobviousness, nexus may be satisfied by showing that objective evidence is tied to a novel combination of known elements.

Henny Penny petitioned for IPR of a patent owned by Frymaster, claiming a system for measuring degradation in cooking oil using a TPM sensor.  The petition asserted obviousness in view of two references.  The first reference discloses an apparatus for analyzing used oils in deep fryers, but does not mention monitoring TPMs.  The second reference discloses monitoring oil degradation in deep fryers by detecting TPMs, but only after cooling the oil. The Board found that a person of ordinary skill would not be motivated to integrate the second reference’s TPM sensor into the first reference’s system.  The second reference taught reducing temperature prior to measuring TPM to relieve heat stress on the TPM detector.  The first reference does not contemplate cooling before measurement.  The Board also found that Frymaster’s evidence of secondary considerations, including awards for its TPM sensor, supported nonobviousness.

The Federal Circuit affirmed.  Notably, the Federal Circuit rejected Frymaster’s argument of no nexus because the object of praise in the awards—a deep fryer with an integrated TPM sensor—was already taught by the second prior art reference.  But the novel combination of known individual elements claimed in Henny Penny’s patent was not known in the prior art.  And it was that claimed combination that had a nexus to the award.  The court recognized that a claimed combination as a whole (as opposed to a novel feature) can be the basis of nexus.

Editor: Paul Stewart