## Facts

- S.C. Johnson & Son, Inc. owned a patent (Monson) claiming a “stable, post-foaming gel” shaving composition that dispenses as a gel and foams after application to skin.
- The asserted claims required, among other ingredients, a water-soluble gelling agent producing a gel with a yield value high enough to substantially restrain foaming for at least about 60 seconds under static ambient conditions.
- The specification identified water-soluble derivatives of naturally occurring substances (e.g., cellulose, sucrose, glucose) as examples of gelling agents.
- Johnson commercialized the patented composition as EDGE shaving gel.
- Johnson sued Gillette in the District of Massachusetts for patent infringement.
- The district court held several claims not invalid for obviousness under 35 U.S.C. § 103 and found infringement.
- On appeal, Gillette did not contest infringement and challenged only validity for obviousness, arguing the district court improperly required the prior art to “clearly suggest” the claimed combination.

## Issues

1. Whether the district court applied an incorrect legal standard for obviousness by purportedly requiring that the prior art “clearly suggest” the claimed combination.
2. Whether, under the correct § 103 analysis, the asserted claims were obvious in light of prior art disclosing the individual components of the composition.

## Decision

- The Federal Circuit affirmed the judgment that the asserted claims were not invalid for obviousness under § 103.
- The court held the district court did not impose an improper “clear suggestion” legal requirement; it used that phrasing to describe what the prior art did or did not indicate as a factual matter.
- Because infringement was not challenged on appeal, the infringement judgment remained undisturbed.

## Legal Principles

- Obviousness under 35 U.S.C. § 103 is a legal conclusion based on underlying factual determinations, including the scope and content of prior art and differences between the prior art and the claimed invention.
- A combination of individually known elements may be nonobvious when the prior art does not lead a person of ordinary skill to the specific arrangement and functional properties claimed.
- References to whether a claimed combination is “suggested” by the prior art are part of the evidentiary analysis of § 103, not a freestanding heightened requirement.
- On appeal, underlying factual findings supporting the obviousness determination are reviewed for clear error; absent legal error or clear error, the appellate court will defer to the trial court’s findings.

## Conclusion

The Federal Circuit affirmed that the claimed post-foaming shaving gel composition was not obvious where the prior art did not direct a skilled artisan to the specific combination and performance characteristics—particularly a gel yield value and delayed foaming behavior—and it rejected the argument that the district court applied a heightened “clear suggestion” standard instead of § 103.


Gillette Co. v. S.C. Johnson & Son, Inc., 919 F.2d 720 (Fed. Cir. 1990)