## Facts

- Thomas A. Gardner owned U.S. Patent No. 3,452,447 covering web-handling equipment used in printing high-gloss paper to move a wet-ink paper web without smearing.
- The patent described an “air bar” that supports and positions a moving web by a transverse zone of static air pressure between a suppression plate and the web, with partially opposed air jets forming side boundaries.
- The Patent Office initially rejected the claims over prior art, principally the Vits patent, which also used air bars for web handling.
- After the examiner rejected Gardner’s attempt to distinguish Vits based on “static” versus “dynamic” pressure, Gardner amended the claims to add specific dimensional constraints (distances/spacing) for the suppression plate/nozzles relative to the web, and the patent issued.
- Gardner sued TEC Systems, Inc. for infringement in the Eastern District of Wisconsin.
- TEC defended on invalidity, asserting obviousness under 35 U.S.C. § 103 based mainly on Vits; the district court held claims 1, 3, 4, and 8 invalid as obvious and dismissed the complaint.
- Gardner appealed, arguing the dimensional limitations were critical, the presumption of validity was mishandled, and secondary considerations (including commercial success) supported nonobviousness.

## Issues

1. Whether claims 1, 3, 4, and 8 were invalid as obvious under 35 U.S.C. § 103 in view of Vits and other prior art when the primary distinction was dimensional limitations.
2. Whether the district court erred in treating the dimensional limitations as noncritical and in finding obviousness proven by clear and convincing evidence despite the presumption of validity.
3. Whether the district court improperly weighed secondary considerations such as commercial success in the obviousness analysis.

## Decision

- The Federal Circuit affirmed the judgment that claims 1, 3, 4, and 8 were invalid for obviousness under § 103.
- The court agreed that Vits disclosed the claimed air-bar concept and that the only meaningful difference was the asserted dimensional ranges.
- The court upheld findings that the dimensional limitations were essentially arbitrary, did not change the principle of operation, and were consistent with routine selection/optimization by a person of ordinary skill.
- The court rejected the argument that the presumption of validity was ignored, concluding the district court applied the correct clear-and-convincing standard.
- The court held the district court permissibly gave limited weight to secondary considerations due to an insufficient nexus between asserted commercial success and the claimed dimensional limits.

## Legal Principles

- A claim that differs from close prior art only by quantitative/dimensional limits is obvious where the limits reflect routine selection or optimization and do not produce unexpected results or a materially different operation.
- The presumption of validity remains, but it is overcome when the challenger proves invalidity by clear and convincing evidence; appellate review respects trial-level factual findings absent clear error.
- Secondary considerations can support nonobviousness only when the evidence is credibly linked to the claimed invention; weak or conflicting nexus evidence may not outweigh a strong prima facie showing of obviousness.

## Conclusion

The Federal Circuit affirmed invalidity because the prior art disclosed the core air-bar structure and function, and the claimed dimensional constraints were not shown to be technically significant beyond ordinary engineering adjustment or to drive any proven secondary indicia of nonobviousness.


Gardner v. TEC Sys., Inc., 725 F.2d 1338 (Fed. Cir. 1984)