## Facts

- A patent issued in 1986 claimed a “portable computer” in a compact “clam shell” case with a hinged display housing that opens from a closed, latched position to an erected viewing position.
- Three reexamination requests were filed in 1990, consolidated into a single proceeding covering claims 1–34.
- The examiner finally rejected claims 1 and 18 as anticipated under 35 U.S.C. § 102(b) by a Japanese application to Yokoyama, and rejected numerous other claims as obvious under 35 U.S.C. § 103 over Yokoyama combined with additional prior art.
- The Board of Patent Appeals and Interferences affirmed the examiner’s rejections for all challenged claims except claim 7.
- The patent owner’s assignee appealed, arguing that (i) Yokoyama disclosed a “calculator,” not a “computer,” so it was not proper prior art for the claimed invention, and (ii) Yokoyama was non-enabling and therefore could not support anticipation or obviousness.

## Issues

1. Whether the Yokoyama reference was properly considered pertinent prior art under §§ 102(b) and 103 despite describing a “calculator.”
2. Whether Yokoyama was enabling for purposes of anticipation and for use in an obviousness analysis.
3. Whether substantial evidence supported the Board’s determinations of anticipation of claims 1 and 18 and obviousness of the remaining rejected claims.

## Decision

- The Federal Circuit affirmed the Board’s decision sustaining the rejections (with claim 7 already not rejected by the Board).
- The court upheld the Board’s conclusion that a calculator could be treated as a type of computer for purposes of assessing prior art relevance.
- The court rejected the argument that Yokoyama was non-enabling and upheld the Board’s finding that it enabled the subject matter it disclosed.
- The court held that substantial evidence supported anticipation of claims 1 and 18 by Yokoyama and supported obviousness of the other rejected claims based on Yokoyama in combination with additional references.

## Legal Principles

- A reference is not excluded from consideration as prior art merely because it uses a different label; the substance of the disclosed technology controls, including whether it is within or reasonably pertinent to the claimed field.
- An anticipatory reference must be enabling, but the enablement inquiry focuses on whether the reference enables a person of ordinary skill to make and use what the reference discloses without undue experimentation.
- On appeal from the PTO, the Federal Circuit reviews the Board’s factual findings (including what the prior art teaches and whether it is enabling) for substantial evidence.

## Conclusion

The Federal Circuit left intact the reexamination outcome sustaining anticipation and obviousness rejections for the challenged claims, holding that the Japanese “calculator” reference could be treated as relevant computer prior art and that the Board’s enablement, anticipation, and obviousness findings were supported by substantial evidence.


In re Paulsen, 30 F.3d 1475 (Fed. Cir. 1994)