Case: 20-1755 Document: 51 Page: 1 Filed: 04/16/2021
United States Court of Appeals
for the Federal Circuit
______________________
RAYTHEON TECHNOLOGIES CORPORATION,
Appellant
v.
GENERAL ELECTRIC COMPANY,
Appellee
ANDREW HIRSHFELD, PERFORMING THE
FUNCTIONS AND DUTIES OF THE UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE,
Intervenor
______________________
2020-1755
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
01442.
______________________
Decided: April 16, 2021
______________________
LAUREN ANN DEGNAN, Fish & Richardson P.C., Wash-
ington, DC, argued for appellant. Also represented by
CHRISTOPHER DRYER, WALTER KARL RENNER; KENNETH
WAYNE DARBY, Austin, TX; TIMOTHY RAWSON, San Diego,
Case: 20-1755 Document: 51 Page: 2 Filed: 04/16/2021
2 RAYTHEON TECHNOLOGIES CORP. v.
GENERAL ELECTRIC COMPANY
CA; MICHAEL VALAIK, Bartlit Beck Herman Palenchar &
Scott LLP, Chicago, IL.
BRIAN E. FERGUSON, Weil, Gotshal & Manges LLP,
Washington, DC, argued for appellee. Also represented by
DANIEL MUSHER, CHRISTOPHER PEPE; ANISH R. DESAI, New
York, NY.
ROBERT J. MCMANUS, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
intervenor. Also represented by THOMAS W. KRAUSE,
FRANCES LYNCH, FARHEENA YASMEEN RASHEED.
______________________
Before LOURIE, CHEN, and HUGHES, Circuit Judges.
CHEN, Circuit Judge.
A typical
35 U.S.C. § 103 obviousness case often turns
on whether an asserted prior art reference teaches a par-
ticular disputed claim limitation or whether a skilled arti-
san would have been motivated at the time of invention to
combine the teachings of different references. There usu-
ally is no dispute about whether an asserted prior art ref-
erence is “self-enabling,” i.e., whether a skilled artisan can
make and use the subject matter disclosed in the reference.
This appeal, however, requires us to consider when a refer-
ence needs to have a self-enabling disclosure for supporting
an obviousness case. We have explained that there is no
absolute requirement for a relied-upon reference to be self-
enabling in the § 103 context, so long as the overall evi-
dence of what was known at the time of invention estab-
lishes that a skilled artisan could have made and used the
claimed invention. We have also previously expounded the
principle that if an obviousness case is based on a non-self-
enabled reference, and no other prior art reference or evi-
dence would have enabled a skilled artisan to make the
claimed invention, then the invention cannot be said to
have been obvious.
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RAYTHEON TECHNOLOGIES CORP. v. 3
GENERAL ELECTRIC COMPANY
In the present case, Raytheon 1 appeals a final inter
partes review decision of the Patent Trial and Appeal
Board (Board) finding claims 3 and 16 of
U.S. Patent No.
9,695,751 (’751 patent) unpatentable as obvious in view of
the Knip reference. In particular, the Board found that
Knip discloses the claimed power density limitation for a
geared gas turbine engine. During the proceeding, Ray-
theon submitted unrebutted evidence establishing that
Knip’s disclosure of highly aggressive performance param-
eters for a futuristic turbine engine was based on the use
of nonexistent composite materials. In response, the peti-
tioner, General Electric Company (GE), never put forth any
evidence suggesting a skilled artisan could have made a
turbine engine with the power density recited in the
claims. Because the relied-upon prior art fails to enable a
skilled artisan to make and use the claimed invention, we
reverse.
BACKGROUND
A
Raytheon owns the ’751 patent, which is directed to gas
turbine engines. See ’751 patent at Abstract. Gas turbine
engines are commonly used for powering airplanes. At a
high level, a gas turbine engine generally consists of a fan
section, a compressor section, a combustor section, and a
turbine section. See
id. at col. 4 ll. 8–10. The compressor
section typically includes a low-pressure and high-pressure
compressor. See
id. at col. 4 ll. 33–59. Similarly, the tur-
bine section often consists of low- and high-pressure tur-
bines. See
id.
1 United Technologies Corporation (UTC) is the orig-
inal assignee of the ’751 patent. After the Board issued its
final written decision, UTC merged with Raytheon Com-
pany to form Raytheon Technologies Corporation (Ray-
theon), the current owner of the ’751 patent.
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4 RAYTHEON TECHNOLOGIES CORP. v.
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Gas turbine engines produce thrust by drawing air into
the front of the engine, mixing it with fuel and burning the
mixture, and ejecting exhaust gasses. See
id. at col. 4 ll.
12–17. Turbofan engines, a particular type of gas turbine
engine relevant here, utilize an air bypass duct to increase
thrust by ejecting some of the air through a bypass nozzle.
Turbofan engines can be “direct-drive” or “geared.” In a
direct-drive engine, the fan is directly connected to the low-
pressure compressor and turbine such that all three turn
at the same speed. Alternatively, “geared” engines include
a gearbox, allowing the turbine and compressor to rotate at
a different, i.e., higher, speed than the fan. See
id. at col. 1
ll. 37–46. When a compressor or turbine can spin at a
higher rotational speed, it can perform the same amount of
work in fewer stages. Fewer stages, in turn, leads to re-
duced volume and weight of the turbine and the engine,
resulting in greater efficiency.
The ’751 patent generally claims a geared gas turbine
engine with two turbines and a specific number of fan
blades and turbine rotors and/or stages. The key distin-
guishing feature of the claims is the recitation of a “power
density” range that the patent describes as being “much
higher than in the prior art.” See
id. at col. 10 ll. 54–55.
The ’751 patent defines power density as the “sea-level-
takeoff thrust” (SLTO thrust) divided by the engine turbine
volume. See
id. at col. 10 ll. 22–25 and claims 1, 15.
Claims 1–3 are reproduced in part below:
1. A gas turbine engine comprising:
a fan including a plurality of fan blades . . . ;
a compressor section;
a combustor in fluid communication with the com-
pressor section;
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RAYTHEON TECHNOLOGIES CORP. v. 5
GENERAL ELECTRIC COMPANY
a turbine section in fluid communication with the
combustor, the turbine section including a fan
drive turbine and a second turbine . . . ; and
a speed change system configured to be driven by
the fan drive turbine to rotate the fan about the
axis; and
a power density at Sea Level Takeoff greater than
or equal to 1.5 lbf/in3 and less than or equal to 5.5
lbf/in3 and defined as thrust in lbf measured by a
volume of the turbine section in in3 measured be-
tween an inlet of a first turbine vane in said second
turbine to an exit of a last rotating airfoil stage in
said fan drive turbine.
2. The gas turbine engine as recited in claim 1,
wherein the fan drive turbine has from three to six
stages.
3. The gas turbine engine as recited in claim 2,
wherein said number of fan blades is less than 18
and the second turbine has two stages.
Id. at claims 1–3.
Independent claim 15 is substantively identical to
claim 1 but requires the speed change system to have “a
gear reduction.” See
id. at claim 15. And claim 16, which
depends from claim 15, contains the same additional limi-
tation as claim 3. See
id. at claim 16.
B
GE petitioned for inter partes review of claims 1–4, 9–
10, 15–16, and 23 of the ’751 patent. See J.A. 102–89. GE’s
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6 RAYTHEON TECHNOLOGIES CORP. v.
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petition relied on either Knip 2 or Gliebe 3 as a primary ref-
erence for its asserted unpatentability grounds. See J.A.
124–25. GE challenged claims 1–4, 9–10, and 15–16 as ob-
vious in light of Knip alone and/or Knip in view of a second-
ary reference. See
id. GE also challenged claims 1–2 and
15 as anticipated by or rendered obvious by Gliebe, alone,
and claim 23 as rendered obvious by Gliebe and a second-
ary reference. See
id.
Knip is a 1987 NASA technical memorandum that en-
visions superior performance characteristics for an imag-
ined “advanced [turbofan] engine” “incorporating all
composite materials.” See J.A. 902. Although the construc-
tion of a turbofan engine incorporating such composite ma-
terials was undisputedly unattainable at that time (and,
according to the record, continues to this day to be beyond
reality), an imagined application of these “revolutionary”
composite materials to a turbofan engine allowed the au-
thor of Knip to assume aggressive performance parameters
for an “advanced engine,” including then-unachievable
pressure ratios and turbine temperatures. See J.A. 906.
Knip predicts that the use of these composite materials
would permit the resulting advanced engine to achieve sig-
nificant reductions in engine volume and weight leading to
“improvement in engine performance and thrust-to-
weight-ratios.” See J.A. 903, 908. Although Knip discloses
numerous performance parameters associated with its fu-
turistic engine, it does not explicitly disclose SLTO thrust,
turbine volume, or power density.
In its petition, GE argued that both Knip and Gliebe
disclose performance parameters of a kind that would
2 G. Knip, Analysis of an Advanced Technology Sub-
sonic Turbofan Incorporating Revolutionary Materials
(May 1987). J.A. 901–25.
3 P. Gliebe, Ultra-High Bypass Engine Aeroacoustic
Study (Oct. 2003). J.A. 792–900.
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RAYTHEON TECHNOLOGIES CORP. v. 7
GENERAL ELECTRIC COMPANY
permit a skilled artisan to derive the power density of their
respective engines from those disclosed parameters. See
J.A. 140–45, 180–83. According to GE, those power densi-
ties render obvious or anticipate the claimed power density
range, proving the challenged claims unpatentable. In the
alternative, GE argued that because power density is a “re-
sult-effective variable,” see J.A. 145–53, “even if Knip did
not disclose a turbine section volume and/or SLTO thrust
that resulted in a power density within the claimed range,
it would have nevertheless been obvious to a [skilled arti-
san] to modify the thrust and/or turbine volume for Knip’s
engine to optimize the power density.” J.A. 726; see also
J.A. 709.
After the Board instituted the inter partes review of the
challenged claims, Raytheon disclaimed claims 1–2, 4, 9–
10, 15, and 23, to “streamline” the issues, see Oral Arg. at
1:28–50, 3:57–4:24. The disclaimer mooted all grounds re-
lying on Gliebe, leaving only dependent claims 3 and 16,
which were challenged exclusively on Knip-based grounds.
See J.A. 124–25. Despite its disclaimer, Raytheon relied
solely on limitations within claims 1 and 15—i.e., the
claimed power density range—to argue the patentability of
dependent claims 3 and 16 over Knip. 4 See, e.g., J.A. 4804.
Raytheon made two main arguments to the Board in
support of claims 3 and 16’s patentability. First, it argued
that GE’s expert employed a flawed methodology in deriv-
ing the power density of Knip’s advanced engine from the
parameters that Knip disclosed. See
id. Second, Raytheon
4 Disclaimed claims are treated as if they never ex-
isted, see Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labora-
tories, Inc.,
933 F.3d 1367, 1373 (Fed. Cir. 2019), and
disclaimer does not legally constitute “an admission that
the subject of the disclaimer appears in the prior art,” Na-
tional Fruit Products Co., v. C.H. Musselman Co.,
8 F.
Supp. 994, 995 (M.D. Pa. 1934).
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8 RAYTHEON TECHNOLOGIES CORP. v.
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argued that Knip’s disclosure failed to enable a skilled ar-
tisan to make the claimed invention. See J.A. 4847–68. Ac-
cording to Raytheon, the aggressive parameters disclosed
in Knip, and therefore, its power density, relied on “revolu-
tionary” materials unavailable as of the priority date of the
’751 patent. J.A. 4855–58.
In response, GE did not dispute that Knip’s contem-
plated revolutionary materials were unavailable at the
time the ’751 patent was filed. See J.A. 6442. Nor did GE
argue that the aggressive parameters disclosed by Knip,
parameters GE used to calculate power density, were
achievable through some other means. See J.A. 6440–43.
Rather, GE argued that the issue of whether Knip enabled
its advanced engine was “irrelevant” to the “question
whether a [skilled artisan] reviewing Knip could make the
[’]751 Patent’s engine (using any already available materi-
als) without undue experimentation.” See J.A. 6442 (em-
phasis in original).
C
In its Final Written Decision, the Board determined
that GE had met its burden of proving that claims 3 and 16
are unpatentable as obvious. See General Elec. Co. v.
United Techs. Corp., IPR2018–01442,
2020 WL 859443, at
*1 (P.T.A.B. Feb. 20, 2020). The Board treated enablement
as a threshold issue, recognizing that it “could be disposi-
tive of any analysis based on Knip in this proceeding.”
Id.
at *6. The Board ultimately concluded that Knip was “en-
abling,” see
id. at *10, because it provided enough infor-
mation to allow a skilled artisan to “determine a power
density as defined in claim 1, and within the range pro-
scribed in claim 1,”
id. at *29.
Having found Knip “enabling,” the Board concluded
that Knip rendered claims 3 and 16 obvious to a skilled ar-
tisan. See
id. at *29–30. Like its enablement analysis, the
Board’s overall conclusion focused on the narrow question
of whether Knip provided enough disclosure to enable a
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GENERAL ELECTRIC COMPANY
skilled artisan to calculate what would be the power den-
sity of Knip’s advanced engine. See
id. at *29 (“We credit
[GE’s expert’s] analysis [], which showed persuasively that
[a skilled artisan] would have used the engine cycle and
turbine volume measurement parameters expressly pro-
vided in Knip, along with certain reasonable assumptions
and estimates as to missing parameters, and obtained
SLTO thrusts resulting in values within the claimed range
as set forth in claim 1.”). The Board further supported its
obviousness conclusion in view of Knip by concluding that,
even if Knip’s power density did not fall within the claimed
power density range, power density is a result-effective
variable. See
id. at *23–27.
Raytheon appealed to this court. We have jurisdiction
under
28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
Raytheon’s appeal presents a single issue: whether the
Board erred in finding Knip “enabling” of the claimed in-
vention. According to Raytheon, the Board improperly fo-
cused only on whether Knip enables a skilled artisan to
calculate the power density of Knip’s contemplated, futur-
istic engine, rather than also considering whether Knip en-
ables a skilled artisan to make the claimed invention.
Raytheon argues that, when viewed under the proper legal
standard, nothing in the record demonstrates that Knip en-
ables a skilled artisan to make the claimed invention. We
agree.
A
“Whether a prior art reference is enabling is a question
of law based upon underlying factual findings.” Minn. Min-
ing & Mfg. Co. v. Chemque, Inc.,
303 F.3d 1294, 1301 (Fed.
Cir. 2002). We review the Board’s legal conclusions de novo
and its underlying factual determinations for substantial
evidence. See In re Gartside,
203 F.3d 1305, 1316 (Fed. Cir.
2000).
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10 RAYTHEON TECHNOLOGIES CORP. v.
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To render a claim obvious, the prior art, taken as a
whole, must enable a skilled artisan to make and use the
claimed invention. See In re Kumar,
418 F.3d 1361, 1368
(Fed. Cir. 2005). In general, a prior art reference asserted
under § 103 does not necessarily have to enable its own dis-
closure, i.e., be “self-enabling,” to be relevant to the obvi-
ousness inquiry. See Symbol Techs., Inc. v. Opticon, Inc.,
935 F.2d 1569, 1578 (Fed. Cir. 1991) (“While a reference
must enable someone to practice the invention in order to
anticipate under § 102(b), a non-enabling reference may
qualify as prior art for the purpose of determining obvious-
ness under § 103.”); Beckman Instruments Inc. v. LKB
Produkter AB,
892 F.2d 1547, 1551 (Fed. Cir. 1989) (“Even
if a reference discloses an inoperative device, it is prior art
for all that it teaches.”). For example, a reference that does
not provide an enabling disclosure for a particular claim
limitation may nonetheless furnish the motivation to com-
bine, and be combined with, another reference in which
that limitation is enabled. See Apple Inc. v. Int’l Trade
Comm’n,
725 F.3d 1356, 1365–66 (Fed. Cir. 2013). Alter-
natively, such a reference may be used to supply claim ele-
ments enabled by other prior art or evidence of record. See
Comcast Cable Commc’ns Corp. v. Finisar Corp.,
571 F.
Supp. 2d 1137, 1145 (N.D. Cal. 2008), aff’d sub nom. Com-
cast Cable Commc’ns, LLC v. Finisar Corp., 319 F. App’x
916 (Fed. Cir. 2009). 5
But even though a non-enabling reference can play a
role in an obviousness analysis, the evidence of record must
still establish that a skilled artisan could have made the
claimed invention. As the Sixth Circuit aptly explained:
5 Comcast presents an example where a prior art ref-
erence that was not enabled at the time of the publication
became enabled at a later date through advances in tech-
nology. See
id.
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GENERAL ELECTRIC COMPANY
The enabling disclosure concept [for a prior art ref-
erence] is a commonsense factor in making a deter-
mination of obviousness, for if neither any item of
prior art, nor the background knowledge of one
with ordinary skill in the art, would enable one to
arrive at an invention, that invention would not be
obvious. But to argue, as does [the patentee], that
the sufficiency of each prior art teaching must be
tested under the strict standard requiring an ena-
bling disclosure is to shift the emphasis from obvi-
ousness in light of the prior art, taken as a whole,
to the sufficiency of each prior art teaching sepa-
rately considered.
Minn. Mining & Mfg. Co. v. Blume,
684 F.2d 1166, 1173
n.10 (6th Cir. 1982); see also Beckman,
892 F.2d at 1551
(citing Minn. Mining with approval).
In the absence of such other supporting evidence to en-
able a skilled artisan to make the claimed invention, a
standalone § 103 reference must enable the portions of its
disclosure being relied upon. See Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc.,
776 F.2d 281, 297 (Fed. Cir.
1985) (“The test of whether a particular compound de-
scribed in the prior art may have been relied upon to show
that the claimed subject matter at issue would have been
obvious is whether the prior art provided an enabling dis-
closure with respect to the disclosed prior art compound.”);
In re Hoeksema,
399 F.2d 269, 274 (CCPA 1968) (“[I]f the
prior art of record fails to disclose or render obvious a
method for making a claimed compound . . . it may not be
legally concluded that the compound itself is in the posses-
sion of the public [or obvious].”). In this context the refer-
ence must necessarily enable the relied-upon portion of its
own disclosure—the same standard applied to anticipatory
references. In re Antor Media Corp.,
689 F.3d 1282, 1290
(Fed. Cir. 2012) (“[A] prior art reference need not enable its
full disclosure; it only needs to enable the portions of its
disclosure alleged to anticipate the claimed invention.”).
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12 RAYTHEON TECHNOLOGIES CORP. v.
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B
We agree with Raytheon that the Board legally erred
in its prior art enablement analysis. Here, the only prior
art or other evidence GE relied on to establish that one of
skill in the art would have been able to make a turbofan
engine with the claimed power density was the Knip refer-
ence. But rather than determining whether Knip enabled
a skilled artisan to make and use the claimed invention,
see Kumar,
418 F.3d at 1368, the Board focused only on
“whether [a skilled artisan] is provided with sufficient pa-
rameters in Knip to determine, without undue experimen-
tation, a power density . . . .” See Gen. Elec.,
2020 WL
859443, at *7. This error propagates throughout the
Board’s enablement analysis, see
id. at *7–10, which fails
to address whether Knip enables the claimed invention.
The Board defended its overly cramped inquiry by not-
ing that the claims at issue do not require the advanced
materials recited by Knip. See
id. at *7. Thus, according
to the Board, whether Knip’s advanced engine had been or
could be implemented “is not the proper consideration.”
See
id. (rejecting Raytheon’s argument that Knip’s ad-
vanced engine must be “physically achievable based on the
reference’s disclosure itself”);
id. at *9 (“[E]nablement does
not require that Knip’s advanced engine was actually im-
plemented.” (citing Beckman,
892 F.2d at 1551)). On ap-
peal, GE echoes the Board’s statements and goes further,
claiming that “it is irrelevant whether Knip actually ena-
bles a [skilled artisan] to build the specific engine contem-
plated by Knip.” See Appellee’s Br. at 45. That position
may have carried the day if GE had presented other evi-
dence to establish that a skilled artisan could have made
the claimed turbofan engine with the recited power den-
sity. But no such other evidence was presented.
Thus, Knip’s self-enablement (or lack thereof) is not
only relevant to the enablement analysis, in this case it is
dispositive. GE does not contend that the ’751 patent’s
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turbofan engine is enabled by other prior art or evidence of
record. Instead, GE relies solely on Knip’s disclosure. See,
e.g., Appellee’s Br. at 48, 51. At oral argument, counsel for
GE asserted that the Board determined, based on GE’s ex-
pert’s analysis, that Knip’s engine could have been in fact
“successfully constructed, and therefore is enabled with re-
spect to the claimed invention.” See Oral Arg. at 27:19–
29:00 (citing J.A. 42–44, 781). We disagree that the Board
made such a finding. Moreover, GE neglected to mention
that what its expert “constructed” was a computer model
simulation of Knip’s imagined engine, see J.A. 781, not a
physical working engine. GE’s expert never suggested that
a skilled artisan could have actually built such an engine.
In contrast, Raytheon presented extensive, unrebutted
evidence of non-enablement. Raytheon submitted and re-
lied on a declaration from Dr. Williams, a professor of ma-
terials science, detailing the unavailability of the
revolutionary composite material contemplated by Knip.
See J.A. 4853–68, 6291–311. Additionally, Raytheon sub-
mitted evidence that the exceptional temperature and
pressure parameters cited in Knip had not been achieved
through other means as of the priority date. See J.A. 4856–
58 (citing the supplemental declaration of Dr. Spakovsky
(J.A. 4913–22)). Raytheon’s unrebutted evidence that Knip
fails to enable a skilled artisan to physically make Knip’s
advanced engine is conclusive, given that this was the only
evidence GE presented for why a skilled artisan could
achieve the claimed power density.
In sum, we conclude that GE failed to provide an evi-
dence-based case for how the turbofan engine claimed in
the ’751 patent having a particular power density is ena-
bled by Knip’s disclosure. Thus, the Board’s finding that
Knip is “enabling” is legal error.
C
GE’s back-up argument that the Board’s decision can
be affirmed on the basis of its result-effective variable
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14 RAYTHEON TECHNOLOGIES CORP. v.
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finding suffers from the same enablement-based flaw.
Even if the Board were correct that power density and
other performance characteristics are variables a skilled
artisan would want to optimize, GE’s argument is predi-
cated on a skilled artisan “modify[ing] the thrust and/or
turbine volume for Knip’s engine to optimize the power
density.” See J.A. 726. If a skilled artisan cannot make
Knip’s engine, a skilled artisan necessarily cannot optimize
its power density.
CONCLUSION
We have considered GE’s remaining arguments and
find them unpersuasive. For the reasons set forth above,
we reverse the Board’s decision finding claims 3 and 16 of
the ’751 patent unpatentable as obvious.
REVERSED
