IP Law Daily, PATENT—Fed. Cir.: Semiconductor patent fails on both anticipation and obviousness grounds, (May 16, 2023)

By Robert B. Barnett Jr., J.D.

The Federal Circuit agreed with the PTAB that a prior patent anticipated the claims made in the semiconductor patent and that others could have used prior art to reach the same conclusion.

After the Patent Trial and Appeal Board rejected 32 of the 34 claims under a semiconductor device patent, the Federal Circuit affirmed the Board’s ruling, finding that the Board had sufficient evidence to conclude that the patent claims should be denied on the grounds of anticipation and obviousness. The appellate court agreed with the Board that four of the claims were anticipated by a previous patent and that the remaining claims were obvious from prior art (In Re: Iman Rezanezhad Gatabi, May 16, 2023, Stark, L.).

Background. Iman Rezanezhad Gatabi sought a patent for a semiconductor device “with sharp gate edges.” This semiconductor device was worthy of the patent, he argued, because its electrical insulator had a gate edge angle of less than 88 degrees, which improved the read-and-write speed of the memory device.

The Patent & Trademark Office examiner rejected all 34 claims in the patent. Gatabi appealed the decision to the Patent Trial and Appeal Board, which reversed on claims 20 and 33, but affirmed on all of the other 32 claims on anticipation and obviousness grounds. Gatabi appealed the denial of the 32 claims to the Court of Appeals for the Federal Circuit.

Anticipation. A previous patent, referred to as the Anderson patent, had described a transistor that disclosed an angle on the gate conductors of between 5 and 85 degrees, more specifically between 30 and 60, and even more specifically 45 degrees. The Federal Circuit agreed with the Board that a claim of “between 5 and 85 degrees” would inform an ordinary artisan to use an “internal gate angle of less than 88 degrees,” as Gatabi’s claim had described. Thus, the Anderson patent anticipated the Gatabi patent. The appellate court also rejected Gatabi’s argument that his patent claim was distinguished from the Anderson patent because his claim disclosed only one flat surface. The appellate court agreed with the Board that the Anderson patent also disclosed one flat surface. Thus, the Federal Circuit affirmed the Board’s rejection of claims 1, 2, 22, and 23 on anticipation grounds.

Obviousness. Gatabi argued that obviousness did not apply to the remaining claims because his patent provided a solution to an unsolved problem. The appellate court disagreed. In an obviousness analysis, the court noted, “the law does not require that the references be combined for the reasons contemplated by the inventor.” A court can rule that the patent claim is obvious if it solves any known problem in the field of endeavor and is not limited to the problem that the inventor identifies.

Looking further at each remaining claim, the appellate court agreed with the Board that a person of ordinary skill would have been able to combine prior art references that the Board cited to reach the same result reached by Gatabi’s patent claims. The court also agreed with the Board’s conclusion that the Anderson patent disclosed all of Gatabi’s claims’ limitations. The appellate court thus ruled that substantial evidence supported the Board’s conclusion as to obviousness.

The Federal Circuit, therefore, affirmed the Board’s rejection of 32 of the 34 patent claims.

The Case is No. 22-1580.

Attorneys: Iman Rezanezhad Gatabi, pro se. William Lamarca, U.S. Patent and Trademark Office, for Katherine K. Vidal.

Cases: Patent FedCirNews GCNNews