Objective Indicia of Non-Obviousness – Finding a Nexus Between Evidence and a Claimed Combination

Objective indicia (OI) of non-obviousness, sometimes called secondary considerations, can be powerful tools for addressing obviousness rejections during prosecution.

The Federal Circuit frequently reminds us that “evidence of secondary considerations may often be the most probative and cogent evidence in the record.”¹ But, for this evidence to be probative, there must be a nexus between the evidence and “the merits of the claimed invention.”² Thus, the OI must have a connection with an element of the claims, and this nexus cannot be with an element of the claim that was known in the prior art. ^3,4

A recent case from the Federal Circuit provides additional guidance on showing nexus between evidence of OI and a novel combination of claim elements: Henny Penny Corporation v. Frymaster LLC.⁵

Henny Penny is a decision on appeal from a PTAB decision finding that claims⁶ to a deep fryer having an oil quality sensor were not unpatentable as obvious in an inter partes review (IPR). The oil quality sensor measures the levels of total polar materials (TPMs). When the sensor detects that the level of TPMs is too high, the fryer signals that the oil needs to be changed.⁷ The claim elements at issue were: 1) the sensor position between the drain and return pipes that circulate the oil between the fryer and the sensor, and 2) that the sensor measures the levels of TPMs as the oil flows past.⁸

Petitioner Henny Penny cited two references in its obviousness argument: 1) Kauffman, which disclosed a device for analysis of used oils, including frying oils, but did not disclose monitoring TPMs; and 2) Iwaguchi, which disclosed an apparatus for measuring TPMs in a deep fryer, but required cooling the oil before it contacted the sensor to prevent stress on the sensor. Henny Penny argued that it would have been obvious to substitute Iwaguchi’s TPM sensor into Kauffman’s system.⁹

As part of its non-obviousness arguments, patent owner Frymaster provided two industry awards granted to its commercial fryer as evidence of industry praise. Both parties agreed that the evidence was commensurate with the scope of the claims, but Henny Penny argued that there could not be a nexus between the evidence and an element of the claim that was not in the prior art, because Iwaguchi taught a fryer having an oil quality sensor.¹⁰

The Federal Circuit rejected this argument, stating that Henny Penny’s argument omits the “principle: that ‘what was not known in the prior art … may well be the novel combination or arrangement of known individual elements.”¹¹ Along with finding a nexus between the evidence of industry praise and the combination of the claimed elements, the Federal Circuit also noted that “the industry praise is probative of nonobviousness even if it was not precisely limited to the point of novelty of the claimed combination.”¹²

Objective indicia can be helpful in overcoming close obviousness rejections. In cases where the examiner is using hindsight to combine elements from multiple references, arguing that the claimed combination of elements provides an advantage – such as an unexpected result or commercial success – can be a strong argument to counter this hindsight. Henny Penny is thus a useful citation when arguing that the claimed combination of elements leads to the advantages of the invention.