  United States Court of Appeals
      for the Federal Circuit
                ______________________

     SCIENTIFIC PLASTIC PRODUCTS, INC.,
                  Appellant,

                           v.

                    BIOTAGE AB,
                       Appellee.
                ______________________

                2013-1219, -1220, -1221
                ______________________

    Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Reexami-
nation Nos. 95/000,495, 95/000,496, and 95/000,497.
                 ______________________

              Decided: September 10, 2014
                ______________________
     FREDERICK C. LANEY, Niro, Haller & Niro, of Chicago,
Illinois, argued for appellant. With him on the brief was
PAUL K. VICKREY. Of counsel on the brief was DAVID M.
QUINLAN, David M. Quinlan, P.C., of Princeton, New
Jersey.
    GEORGE C. BECK, Foley & Lardner, LLP, of Washing-
ton, DC, argued for appellee. With him on the brief were
MICHAEL R. HOUSTON, of Chicago, Illinois, and DEBRA D.
NYE, of San Diego, California.
                 ______________________
2                 SCIENTIFIC PLASTIC PRODUCTS   v. BIOTAGE AB



    Before NEWMAN, MOORE, and WALLACH, Circuit Judges.
    Opinion for the court filed by Circuit Judge NEWMAN.
     Dissenting opinion filed by Circuit Judge MOORE.
NEWMAN, Circuit Judge.
    Scientific Plastics Products, Inc. (SPP) is the owner of
the three United States Patents here at issue: No.
7,138,061 (the ’061 patent), No. 7,381,327 (the ’327 pa-
tent), and No. 7,410,571 (the ’571 patent), which relate to
a resealable cartridge for low pressure liquid chromatog-
raphy (LPLC). The ’061 patent claims a method of per-
forming LPLC using the cartridge, the ’571 patent claims
the cartridge, and the ’327 patent claims a modified
cartridge. After SPP filed suit against Biotage AG for
patent infringement, Biotage requested inter partes
reexamination of the three patents. The district court
then stayed the infringement litigation.
    The patent examiner rejected all claims of the three
patents on the ground of obviousness, and the Patent
Trial and Appeal Board affirmed the rejections and can-
celled all claims. 1 We affirm the Board’s decisions.
                       BACKGROUND
    The SPP patents discuss the need for a low cost re-
sealable cartridge for LPLC that provides a fluid tight
seal under pressure. The claimed cartridge, illustrated at
Figure 1 of the ’327 patent, comprises a tubular container



      1 Biotage AB v. Scientific Plastic Prods., Inc., No.
2012-007321, 2012 WL 6043584 (P.T.A.B. Nov. 30, 2012)
(’327 patent); No. 2012-007322, 2012 WL 6043585
(P.T.A.B. Nov. 30, 2012) (’061 patent); No. 2012-012468,
2012 WL 6043586 (’571 patent) (P.T.A.B. Nov. 30, 2012).
The opinion for each appeal is effectively identical; Board
Op. citations herein are to the ’061 patent decision.
SCIENTIFIC PLASTIC PRODUCTS   v. BIOTAGE AB              3



20 having a threaded polymer cap 28 and a sealing flange
40.




    Claim 1 of the ’327 patent is the broadest cartridge
claim:
   1. A low pressure liquid chromatographic car-
   tridge having a longitudinal axis, comprising:
       a tubular polymer container adapted to re-
   ceive a chromatographic packing material, the
   container having an outlet port located at a down-
   stream end of the container and configured for
   connecting to chromatographic equipment during
   use of the cartridge, the container having contain-
   er threads formed on an upstream end of the con-
   tainer and a lip defining an opening to the
4                 SCIENTIFIC PLASTIC PRODUCTS   v. BIOTAGE AB



    container with an inward facing inclined sealing
    surface adjacent the lip and facing the longitudi-
    nal axis;
         a polymer cap having an inlet port located on
    an upstream end of the container, the port being
    configured for connecting to chromatographic
    equipment during use of the cartridge, the cap
    having cap threads located on a skirt of the cap to
    threadingly engage the container threads;
         an annular sealing flange depending from the
    cap and located radially closer to the longitudinal
    axis than the skirt, the flange having an outward
    facing inclined sealing surface facing away from
    the axis with an upstream end of the flange being
    further from the axis than a downstream distal
    end of the flange; the outward facing inclined sur-
    face on the flange generally aligned with and lo-
    cated to abut the inward facing inclined surface
    on the container to form a resilient fluid tight seal
    between the cap and container suitable for use in
    low pressure liquid chromatography when the cap
    is screwed onto the container.
    The primary issue on reexamination concerned the
obviousness of combining the LPLC cartridge shown in
the Yamada reference with the King or Strassheimer
pressure-resistant caps. These references are:
U.S. Patent No. 5,693,223 (Yamada):
    Yamada shows an LPLC cartridge having a tubular
polymer container with an open upstream end and an
outflow at the downstream end. Yamada shows a thread-
ed polymer cap for the cartridge that is “detachably” fitted
to the corresponding threaded upstream end of the car-
tridge body. Yamada further shows an O-ring in the cap
to ensure liquid tightness. The examiner found that
Yamada discloses all of the features of the SPP cartridge
SCIENTIFIC PLASTIC PRODUCTS   v. BIOTAGE AB               5



except for the complementary inclined sealing surfaces of
the cap and the lip of the container.
PCT publication WO 2002/42171A1 (King):
     King relates to “improved seals for container closure
assemblies,” and is “especially applicable to the sealing of
containers in substantially gas-tight and liquid-tight
fashion, such as the sealing of . . . beverage containers.”
King shows a “container closure assembly” with a thread-
ed polymer cap that ensures a fluid tight seal. The exam-
iner found that King shows sealing surfaces that have
oppositely inclined surfaces with respect to the cap and lip
of the container, as in the SPP closure.
U.S. Patent No. 5,100,013 (Strassheimer):
     Strassheimer relates to plastic bottles and closures
therefor that are “especially useful for carbonated bever-
ages.” Strassheimer shows a plastic threaded cap that
ensures a fluid tight seal “even after repeated use.” The
examiner found that Strassheimer shows a taper on the
lip of the plastic container that corresponds to a taper on
the cap, as in the SPP closure.
    The examiner concluded that it would have been obvi-
ous to combine the cartridge of Yamada with the cap of
either King or Strassheimer. On appeal to the Board,
SPP challenged (1) the examiner’s determination that
King and Strassheimer were “analogous art” and (2) that
it would have been obvious to combine the LPLC cartridge
of Yamada with the pressure-resistant resealable cap of
either King or Strassheimer.
    To be deemed “analogous art,” a reference outside an
inventor’s field of endeavor must be “reasonably perti-
nent” to the particular problem with which the inventor is
involved, such that a person of ordinary skill would rea-
sonably have sought a solution to the problem in that
outside field. The Board stated that “[h]ere, Patent
Owner identifies one of the purposes of the ’061 Patent as
6                  SCIENTIFIC PLASTIC PRODUCTS   v. BIOTAGE AB



forming an LPLC cartridge that ‘would allow a user to
easily vary and access the cartridge’s contents without
destroying its ability to be sealed and function under the
LPLC pressures.’” Board Op. at *6 (quoting Appellant Br.
11). The Board found that King and Strassheimer were
relevant to SPP’s identified purpose, and therefore were
analogous art:
    Therefore, it was reasonable for the Examiner to
    find that one of ordinary skill in the art would
    have found the disclosures of King and Strass-
    heimer relevant in constructing a plastic contain-
    er that achieves a fluid tight seal at elevated
    pressure, while preserving access to the container
    in order to easily vary its contents.
Board Op. at *7.
    The Board also addressed SPP’s argument that the
examiner failed to provide adequate reasoning for combin-
ing Yamada with King or Strassheimer. The Board found
that the specification of the SPP patents identified a
leakage problem associated with threaded connections
between the polymer cap and polymer body in LPLC
cartridges, and that Yamada’s use of an O-ring in the
cartridge “implicitly acknowledges” potential leakage. Id.
The Board concluded that this known problem “provides a
reason for one of ordinary skill to have turned to King or
Strassheimer to improve the sealing arrangement set
forth in Yamada.” Id.
                        DISCUSSION
    Criteria for determining whether prior art is analo-
gous may be summarized as “(1) whether the art is from
the same field of endeavor, regardless of the problem
addressed, and (2) if the reference is not within the field
of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which
the inventor is involved.” In re Clay, 966 F.2d 656, 658–
SCIENTIFIC PLASTIC PRODUCTS    v. BIOTAGE AB                   7



59 (Fed. Cir. 1992). The question here is whether King or
Strassheimer meets the second criterion.       Precedent
provides guidance as to when a reference is reasonably
pertinent to the problem:

    “A reference is reasonably pertinent if . . . it is one
    which, because of the matter with which it deals,
    logically would have commended itself to an in-
    ventor’s attention in considering his problem. If a
    reference disclosure has the same purpose as the
    claimed invention, the reference relates to the
    same problem, and that fact supports use of that
    reference in an obviousness rejection.”
Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d
1314, 1321 (Fed. Cir. 2011) (quoting Clay, 966 F.2d at
659); see also In re Klein, 647 F.3d 1343, 1348 (Fed. Cir.
2011) (same standard). The pertinence of the reference as
a source of solution to the inventor’s problem must be
recognizable with the foresight of a person of ordinary
skill, not with the hindsight of the inventor’s successful
achievement. See In re Oetiker, 977 F.2d 1443, 1447 (Fed.
Cir. 1992) (“Patent examination is necessarily conducted
by hindsight, with complete knowledge of the applicant’s
invention . . . .”); see also KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2006) (“A factfinder should be aware, of
course, of the distortion caused by hindsight bias and
must be cautious of arguments reliant upon ex post rea-
soning.”).
    The Board found that the central purpose of the SPP
inventors was to form “an LPLC cartridge that ‘would
allow a user to easily vary and access the cartridge’s
contents without destroying its ability to be sealed and
function under LPLC pressures.’” Board Op. at *6 (quot-
ing Appellant Br. 11). The Board concluded that a person
of ordinary skill seeking such a cartridge would reasona-
bly look to sealing arrangements for other pressurized
systems. Thus the Board held that replacement of the
8                 SCIENTIFIC PLASTIC PRODUCTS   v. BIOTAGE AB



sealing arrangement of Yamada with the sealing ar-
rangement of King or Strassheimer was an obvious solu-
tion to the problem of providing a resealable cartridge
that achieves a fluid tight seal at elevated pressures.

     SPP disagrees with the Board’s characterization, and
states that the purpose of its invention is to “provide
chemists with a low cost disposable chromatography
cartridge that can function under LPLC pressures and
simplify the chemist’s ability to control the chromato-
graphic packing material and the introduction of fluids
into the cartridge under pressure.” Appellant Br. 25–26.
SPP argues that the needs identified in the specification
are specific to flash chromatography, and that chemists in
laboratories would not look to “soda-pop” bottle caps to
solve problems with flash chromatography cartridges.
However, the analogous art inquiry does not exclude
references “not within the field of the inventor’s endeav-
or,” if a person of ordinary skill would reasonably look to
that reference in order to solve the problem confronting
the inventor. In re Clay, 966 F.2d at 659.

    SPP states that the purposes of the invention and the
prior art must be considered as a whole, in contrast to
focusing on specific components. SPP argues that “[b]y
focusing just on sealing issues, the Board improperly
narrowed its focus to commonality for particular features
instead of answering the central question of whether the
reference’s field itself is even one a skilled artisan would
have reasonably looked to, which requires a focus on the
claimed invention.” Appellant Br. 33.
    The Board observed that when the problem an inven-
tion is designed to solve is not unique to the specific field
of the invention, it is not improper for the trier of fact to
consider whether a person of ordinary skill would consult
a different art in order to solve the problem. See In re
Paulsen, 30 F.3d 1475, 1481–82 (Fed. Cir. 1994) (affirm-
ing rejection of a laptop computer hinge as obvious over
SCIENTIFIC PLASTIC PRODUCTS   v. BIOTAGE AB              9



hinged cabinets, piano lids, etc., because the “problem is
not unique to portable computers”); Pentec, Inc. v. Graphic
Controls Corp., 776 F.2d 309, 314 (Fed. Cir. 1985) (affirm-
ing invalidation of a patent for a hinged pen arm because
a person skilled in pen art would have looked to hinge and
fastener art for a way to attach a pen to a pen arm).
     Other cases have found that a particular reference
was not analogous art when the field was not an obvious
area to be consulted. In In re Oetiker, the court held that
a person of ordinary skill, seeking to solve the problem of
fastening a hose clamp, would not reasonably be expected
to look to the field of fasteners for women’s garments. See
977 F.2d at 1446–47 (“The Board apparently reasoned
that all hooking problems are analogous.”). The analo-
gous art inquiry is a factual one, requiring inquiry into
the similarities of the problems and the closeness of the
subject matter as viewed by a person of ordinary skill.
    Here, the King and Strassheimer references address
the problem of providing a fluid tight seal at elevated
pressures, between a container and a resealable cap. This
is sufficiently close to the problem addressed by the
claimed invention; substantial evidence supports the
Board’s finding that King and Strassheimer are available
as prior art.
    The question remains as to whether combining the
cartridge of Yamada with the pressure-resistant cap of
King or Strassheimer would have been obvious to a per-
son of ordinary skill in the field of liquid chromatography
devices. In KSR, the Court explained:
   [A] patent composed of several elements is not
   proved obvious merely by demonstrating that each
   of its elements was, independently, known in the
   prior art. Although common sense directs one to
   look with care at a patent application that claims
   as innovation the combination of two known de-
   vices according to their established functions, it
10                 SCIENTIFIC PLASTIC PRODUCTS   v. BIOTAGE AB



     can be important to identify a reason that would
     have prompted a person of ordinary skill in the
     relevant field to combine the elements in the way
     the claimed new invention does.
550 U.S. at 418.
    Applying these principles, the Board concluded that
the “known problem of leakage in threaded connections of
plastic LPLC cartridges under pressure identified in the
[patents] provides a reason for one of ordinary skill in the
art to have turned to King or Strassheimer to improve the
sealing arrangement set forth in Yamada.” Board Op. at
*8. The Board cited a statement in the SPP patents that
explained that because prior art LPLC cartridges “leak at
the seams[,] [t]hreaded connections are thus not used to
form the body of [LPLC cartridges] when the body is made
out of polymers.” Id. at *6. The Board noted SPP’s argu-
ment that Yamada, a polymer cartridge with threaded
connections, does not explicitly disclose a leakage prob-
lem. However, the Board found that “by providing for the
presence of an O-ring, Yamada implicitly acknowledges
that there is a potential leakage issue between the cap
and column body of the plastic cartridge.” Id. at *7.
     SPP argues that the Board improperly relied on the
inventors’ description of the problem solved in order to
find the solution obvious, an analytic procedure that relies
on hindsight by using the inventors’ own reasoning
against them. SPP points out that the statement in the
patents that threaded connections are not used with
plastic LPLC cartridges was actually incorrect, as evi-
denced by the Yamada reference, which shows a plastic
LPLC cartridge with threaded connections. SPP argues
that a person of ordinary skill would not have perceived
any need to improve such cartridges, and that only
through improper hindsight was the Board able to justify
its finding of a known leakage problem.
SCIENTIFIC PLASTIC PRODUCTS   v. BIOTAGE AB              11



    SPP is correct that obviousness is not determined by
hindsight. However, the issue here is not whether the
Yamada cartridge leaked, but whether there was a con-
cern with leakage in LPLC cartridges such that a person
of ordinary skill would have provided a known pressure-
resistant cap, as in King or Strassheimer, to the cartridge
of Yamada. Substantial evidence supports the Board’s
finding that there was such a concern.

     We conclude that the Board did not err in holding
that it would have been obvious for a person of ordinary
skill in the field of the invention to modify the chromatog-
raphy cartridge of Yamada with the resealable threaded
cap of King or Strassheimer. This applies to the three
patents whose reexamination decisions are here appealed.
The Board’s decisions are
                      AFFIRMED.
  United States Court of Appeals
      for the Federal Circuit
                 ______________________

     SCIENTIFIC PLASTIC PRODUCTS, INC.,
                  Appellant,

                            v.

                     BIOTAGE AB,
                        Appellee.
                 ______________________

                 2013-1219, -1220, -1221
                 ______________________

    Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Reexami-
nation Nos. 95/000,495, 95/000,496, 95/000,497.
                 ______________________

MOORE, Circuit Judge, dissenting.
    I would find for the patentee. This is a two-reference
obviousness rejection (Yamada and King or Yamada and
Strassheimer), which I would reverse. The Board failed to
provide substantial evidence that it would have been
obvious to modify Yamada and it failed to determine the
level of ordinary skill in the art.
    The claims at issue are directed to a flash chromatog-
raphy cartridge to be used in low pressure liquid chroma-
tography (LPLC). The primary reference, Yamada, is
directed to a column device for use in LPLC. The Board
determined that Yamada disclosed all the elements of the
2                 SCIENTIFIC PLASTIC PRODUCTS   v. BIOTAGE AB



claims at issue except the inclined abutting surfaces of
the cap and the lip of the container. The Board concluded
that one of skill in the art would have been motivated to
modify the Yamada structure by using the sealing struc-
ture disclosed in King or Strassheimer, both of which are
directed to container closures for soda pop bottles. I
dissent from the majority because this record does not
contain substantial evidence that one of skill in the rele-
vant art would have modified the chromatography car-
tridge in Yamada by replacing its sealing configuration
with that of a soda pop bottle.
    The Board concluded that “known problem of leakage
in threaded connections of plastic LPLC cartridges . . .
provides a reason for one of ordinary skill in the art to
have turned to King or Strassheimer to improve the
sealing arrangement [of] Yamada.” Board Op. at *8. The
majority cites two factual findings in support of this
conclusion—that Yamada’s use of an O-ring “implicitly
acknowledges” a “potential leakage issue,” and that the
inventors’ statements in the patents allegedly identify a
prior art leakage problem. Maj. Op. at 6; see also Board
Op. at *7. Neither factual finding is supported by sub-
stantial evidence. These were contested inter partes
reexaminations with experts on both sides, yet there is no
testimony or other evidence of a known leakage problem
in prior art cartridges that would have motivated one of
skill in the art to modify Yamada.
    The Board’s finding regarding Yamada’s O-ring,
Board Op. at *7, ignores the reality of the situation, which
is that Yamada did not have a leakage problem. Yamada
does not disclose leakage problems. Id. Even Biotage’s
expert admitted that Yamada’s configuration did not have
leakage problems at the pressures identified by the pa-
tents-at-issue. J.A. 501 ¶ 9, 613 ¶ 9, 713 ¶ 9. In fact, the
Board found that Yamada’s configuration “ensure[s]
liquid tightness.” Board Op. at *5. The time delay be-
SCIENTIFIC PLASTIC PRODUCTS   v. BIOTAGE AB              3



tween the Yamada configuration and the inventions at
issue also supports the fact that one of skill in the art
would not have modified Yamada because it did not have
a leakage problem. Yamada’s earliest priority date is
more than ten years before the earliest filing date of the
patents-at-issue. There is absolutely no evidence even
suggesting that one skilled in the art was aware of a
leakage problem in Yamada’s design during those ten
years. The Board’s conclusion that Yamada’s O-ring
“implicitly” acknowledges a “potential” leakage problem
such that one of skill in the art would have been motivat-
ed to modify Yamada is pure conjecture. We cannot rely
on the Board’s speculation about a “potential” problem
that, according to all of the evidence on record, never
actually existed, to support a finding of obviousness. One
of skill in the art would not have modified Yamada to fix a
leakage problem that never existed in the first place. You
wouldn’t seek to “improve [a] sealing arrangement” that
doesn’t leak.
    The patents at issue do say: “This operating pressure
is sufficiently high that these cartridges, which have
relatively large diameter bodies, leak at the seams.
Threaded connections are thus not used to form the body
when the body is made of polymer.” ’061 patent col. 1 ll.
16–19. As a preliminary matter, the statement, as the
parties acknowledge, is inaccurate. Yamada, for example,
uses threaded connections. This statement, in the pa-
tents, is not a recognition of a known prior art problem
that would have motivated one of skill in the art to want
to modify the Yamada design. It was a problem identi-
fied, not in the prior art, but by these inventors.
    It is troubling that the majority and the Board rely on
the inventors’ disclosure of the problem their inventions
solve as the primary basis for modifying the prior art.
This is hindsight of the worst kind, “wherein that which
only the invention taught is used against its teacher.”
4                 SCIENTIFIC PLASTIC PRODUCTS   v. BIOTAGE AB



W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540,
1553 (Fed. Cir. 1983). The patents do not indicate that
leakage was a problem identified in the prior art or a
problem known to those of skill in the art. Rather they
indicate that the claimed design will avoid leakage.
These inventors identified a design problem, articulated
it, and solved it. There is absolutely no evidence of the
existence of a known leakage problem that would have
motivated skilled artisans to modify Yamada. The Board
is taking the ingenuity of these inventors and, without
any record basis, attributing that knowledge to all skilled
artisans as the motivation to make the inventions at
issue. Hindsight, hindsight, hindsight.
    These were inter partes reexamination proceedings
between sophisticated parties. Both parties put on expert
testimony regarding obviousness. Yet there is no evi-
dence that the chromatography cartridges in Yamada had
a leakage problem that skilled artisans would have been
motivated to address. There is simply no evidence that
one of skill in the art would have modified the Yamada
cartridge using the soda pop bottle sealing mechanisms of
King or Strassheimer to prevent a leakage problem that
the Yamada cartridge did not have.
     I dissent for a second, independent reason. The Board
found the claims obvious without resolving the level of
skill in the art. Oral Argument at 24:59–25:31, available
at http://oralarguments.cafc.uscourts.gov/default.aspx?fl=
2013-1219.mp3. It is axiomatic that this is a “basic factu-
al inquir[y]” required of any obviousness determination.
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). In most
cases, there is no dispute over the level of the skilled
artisan. But in this case, the parties contested this factu-
al issue throughout the proceedings, and inexplicably the
Board never resolved it. Oral Argument at 19:57–20:32,
23:21–23:56, 24:59–25:31. The parties still dispute this
issue on appeal. Compare Appellant’s Br. 21 (“A chemist
SCIENTIFIC PLASTIC PRODUCTS   v. BIOTAGE AB                  5



analyzing organic compounds would not look to soda-pop
bottles to solve problems with flash chromatography
cartridges.”) (emphasis added), with Appellee’s Br. 28–29
(“SPP[] mischaracterizes the relevant person of ordinary
skill to whom knowledge of analogous art would be at-
tributable . . . . [T]he relevant person of ordinary skill in
the art . . . would include a designer . . . skilled in mechan-
ical engineering.”) (emphasis added).
    The Board’s failure to make this determination is es-
pecially pernicious where the analogous art question is far
from clear. Soda pop bottles and methods for using chro-
matography cartridges are clearly not in the same field of
endeavor. Instead, the dispute on appeal is whether the
soda pop bottle references are both reasonably pertinent
to the inventors’ problem. Maj. Op. at 6–7; see also In re
Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). “Reasona-
bly pertinent” means “which fields a person of ordinary
skill would reasonably be expected to look for a solution to
the problem facing the inventor.” Oetiker, 977 F.2d at
1447 (emphasis added). An ordinarily skilled chemist
would have likely looked to a different body of prior art
than an ordinarily skilled mechanical engineer with
industrial design experience. Even Biotage recognizes
that the determination of the person of ordinary skill is
inextricably linked to what art would have been analo-
gous. Oral Argument at 25:31–25:43. We cannot answer
the analogous art question without knowing who the
person of ordinary skill is.
    I would reverse because I conclude that the Board’s
cancellation of the claims at issue was based entirely on
hindsight reconstruction—there is no record evidence that
one of skill in the art would have been motivated to
modify Yamada with soda pop bottle sealing closures.
And the Board cannot transfer the inventors’ identifica-
tion of the motivation for their patented design to the
skilled artisan when there is no record evidence that the
6                 SCIENTIFIC PLASTIC PRODUCTS   v. BIOTAGE AB



skilled artisan possessed that knowledge. Finally, where
the level of ordinary skill, as here, is hotly contested and
would affect the scope of the analogous art, the Board
must decide that factual issue. I respectfully dissent.
