Patent Obviousness
Part II - Diving Further Into a Deep Subject

In part I of obviousness we discussed 35 USC 103 and talked about how subjective that determination seems to be.

Isn't everything obvious to a good engineer or scientist? Maybe.

So let's dive a little deeper. Again as a non professionally practicing patent person you do not have to have a deep understanding of these questions. But if you are going to protect your ideas with patents you need to know more than just dictionary definition.

That means we once again return to case law. And a good starting point is Graham v. John Deere Co (1959).In that case the Supreme Court ruled that some basic questions of fact should first be determined:

    1. The scope and content of the prior art;

    2. The differences between the claimed invention and the prior art; and

    3. The level of ordinary skill in the prior art.

These are now known among patent practitioners as the Graham Factors. They have been utilized by the Supreme Court as controlling inquires ever since. Recently, in a case now know as KSR the court reiterated the importance of the Graham factors but also broke some new ground in redefining the type of analysis to be used in 35 USC 103 determinations. We will return to KSR later.

At the same time the Court mentioned "secondary considerations" which might be used to argue non-obviousness.

These were:

    1. commercial success;

    2. long-felt but unsolved needs; and

    3. failure of others.

So - you might think of these considerations as follows. Even if a particular claim "seemed" obvious to an examiner - if the applicant can present evidence that the invention had achieved commercial success as a definite result of the invention, that suggests that it must not be obvious, or else someone else would have already done it since a need clearly seems to have existed. Similarly - if evidence (not just an assertion) can be presented that there was a long-felt and un-solved need then again it must not have been obvious. Finally - clear evidence that others have tried and failed to solve this problem can be compelling.

Where do people get this evidence?

From the marketplace and especially from earlier patents that might discuss this need and attempts to solve it.

So what does all this mean?

You are probably thinking - "this still all sounds pretty subjective?" And you are right - this question remains a fairly subjective sandbox - and this is a sandbox that patent practitioners earn their money in - because it sometimes takes concise and strong arguments to reverse a obviousness rejection.

We will expand on that a little more in part III - where we will also get into the KSR decision and its impact on these considerations.



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Mike Ervin
Mike Ervin - Cost Effective Small Business Patent Protection.

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