Obviousness

1
Obviousness

• Federal Court of Appeal SeminarOrford, September
  27, 2007

Donald M. Cameron

2
Whats a patentable invention need to be?

• New
• Useful
• Inventive
• Judge made
• Now in the Patent Act

3
Whats that something more?

• proper subject matter
• A scintilla of invention
• Product of an inventive mind
• The Converse Something a non-inventive mind
  wouldnt have come up with

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The Inventive Step
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New Inventive

• Its been done/taught before,
• in one place

• Hasnt been done before but
• anyone could have done it
• Can mosiac

Explaining the difference How many coins?
6
The Scientific Method Experiments
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Experiments

• Two kinds of experiments
• Ones where you already know the answer
• Ones where you dont know the answer

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Experiments where you already know the answer

• Its been done before
• Youve done it before
• good experiments are repeatable
• Youve learned from others
• good experiments are repeatable
• AND
• Its highly likely to happen again
• The sun will rise tomorrow
• Apples fall from trees

9
Experiments where you already know the answer

• confirmatory experiments
• Should not be entitled to a patent.
• You havent really contributed anything new
• The solution is obvious.

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Experiments where you dont know the answer

• If you dont know, you do research to find out
  the answer.
• Trial and error
• If you have errors, you went the wrong way
• Therefore the right way wasnt obvious or you
  would have done that first
• Long recognized to be a legitimate route to a
  patentable invention
• Hoescht once penicillin discovered, try other
  microorganisms. That begat chloromycetin and
  tetracyclin patentable
• American Cyanamid a patient searcher is as much
  entitled to the benefits of a monopoly as someone
  who hits upon an invention by some lucky chance
  or inspriation

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Experiments where you dont know the answer

• How well can you predict the outcome?
• Theyll tend to polarize to either end of the
  spectrum

Guessing.Likely.Highly Certain
Coin TossPen at Reception DeskSunrise
tomorrow
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Obvious to Try or Worth a Try

• Obvious to try
• The microorganisms after penicillin discovered
• Not determinative May be obvious, but may not.
• Worth a try but if uncertain of result, it
  cant be obvious

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Experiments when you know an answers there

• Where are my glasses?
• Where did you leave them?
• Where were you last?
• Keep looking until you find them

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An expected result

• Which is the sharpest knife in the drawer?
• One is.
• Measure by routine testing
• Should the identification of the sharpest knife
  be patentable? Probably not youre confirming
  whats is a given
• What if its really sharp? Surprisingly sharper
  than the rest?

15
An expected result

• What is its melting point?
• Merely measuring a physical characteristic
• Youre just observing thats science
• Find me an application and that might be
  patentable.

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A bump in the road
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Would require undue experimentation

• IKEA furniture
• It can be done, but its not always easy
• To implement an invention after reading a patent,
  you may have to play around with it a bit
• Patent is supposed to be enabling disclose
  what you need to know to make it work
• If it took undue experimentation to implement,
  the disclosure is lacking
• Converse adopted if there wasnt undue
  experimentation to make it, its obvious.

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The easy ones
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An unexpected result

• Surprise, surprise

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Going the wrong way

• Doing things backwards resulted in a patented
  process.

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Led Directly and Without Difficulty

• Reality check How hard was it for the inventor?
• If circuitous, it wasnt obvious to the inventor
• If easy, may or may not be inventive

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Mere application of Mechanical Skill

• Corn flakes case
• Q. Is the first person to do it an inventor?
• A. Not if he was just working the machine.
• Transmogrified into If its merely an exercise of
  mechanical skills, theres no invention.

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Other indicia of inventiveness

• If its wow its probably an invention
• If creative people say, I was there and I never
  thought of it its inventive

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Summary

• If you can put 2 and 2 together and come up with
  4, its obvious
• If you dont know the answer/solution and have to
  do research (even if by pedestrian means), its
  not obvious

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News from the South KSR
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KSR US Supreme Court

• Adjustable car pedal for drivers of different
  heights
• Sensor that controlled throttle, etc.
• Sensor attached to a fixed pivot point
• Prior art
• AB
• AC
• BC
• Invention ABC

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KSR

• TSM
• Teaching
• Suggestion
• Motivation
• a patent claim is only proved obvious if some
  motivation or suggestion to combine the prior art
  teachings can be found in the prior art, the
  nature of the problem, or the knowledge of a
  person having ordinary skill in the art.

28
KSR

• TSM is not a rigid rule your dont have to have
  it in every case in order to find obviousness
• Instead, you start with where things were and ask
  if it was obvious to go to the invention
• The Court of Appeals considered the issue too
  narrowly by, in effect, asking whether a pedal
  designer writing on a blank slate would have
  chosen
• The consequent legal question, then, is whether
  a pedal designer of ordinary skill starting with
  Asano would have found it obvious to put the
  sensor on a fixed pivot point.

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KSR Predictable results

• The combination of familiar elements according
  to known methods is likely to be obvious when it
  does no more than yield predictable results.
• when a patent claims a structure already known
  in the prior art that is altered by the mere
  substitution of one element for another known in
  the field, the combination must do more than
  yield a predictable result.
• If a person of ordinary skill can implement a
  predictable variation, 103 likely bars its
  patentability.

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KSR Predictable solutions

• a court must ask whether the improvement is
  more than the predictable use of prior art
  elements according to their established
  functions.
• Where there is a design need or market pressure
  to solve a problem and there are a finite number
  of identified, predictable solutions, a person of
  ordinary skill has good reason to pursue the
  known options within his or her technical grasp.
  If this leads to the anticipated success, it is
  likely the product not of innovation but of
  ordinary skill and common sense.

31
KSR some weird stuff

• A person of ordinary skill is also a person of
  ordinary creativity.
• And as progress beginning from higher levels of
  achievement is expected in the normal course, the
  result of ordinary innovation are not the subject
  of exclusive rights under the patent law.
• What the heck is ordinary ceativity or
  ordinary innovation?
• OK if Creating something new but non-inventive?

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KSR weird stuff

• The proper question to have asked was whether a
  pedal designer of ordinary skill, facing the wide
  range of needs created by developments in the
  field of endeavor, would have seen a benefit to
  upgrading Asano with a sensor.
• What triggers the vision?
• Surely doesnt mean you ask the notional person,
  Would you see a benefit doing this upgrade?
• Thats a leading question inventors are never
  asked.
• OK if Where were we? Where was obvious to go
  from there?

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KSR weird stuff

• Synergy the whole is greater than the sum of its
  parts.
• THERES NO SUCH THING!!!!!
• a patent for a combination which only unites old
  elements with no change in their respective
  functions obviously withdraws what is already
  known into the fiield of its monopoly and
  dimishes the resources available to skillful men
• Stuff just does what it does but you can have a
  new result example the sailboard