Nonobviousness

1
Nonobviousness

• A 60 Minute Overview of Section 103

2
Tom Said New Wasnt Enough

• Tom did not believe patents should be given for
  every new invention
• Something more than absolute novelty was
  required But what?

3
Pre-Graham Inventiveness

• Arbitrary or subjective standards
• No uniform test (case-by-case formulation)
• Beyond an ordinary skill of technician
• Mere changes in material, proportion, or form
  over existing technology
• Mere combination of known elements
• No new result
• Aggregation of old elements
• Lack of the flash of creative genius

4
Learned Hand

• The question of whether there is a patentable
  invention is as fugitive, impalpable, wayward and
  vague a phantom as exists in the whole
  paraphernalia of legal concepts.

5
Modern Standard

• 103(b)

6
Impact of 1952 Act

• Congress intended to replace the vague
  "invention" standard with a more objective
  "nonbviousness standard.

7
Nonobviousness 4 Inquiries

• Determine the scope and content of the prior art
• Generally 102 determines what counts
• But this would be a great topic to speak on.
• Ascertain the differences between prior art and
  the claimed invention
• Determine the level of skill in the art
• c. Assess obviousness
• Technical factors
• ii. Secondary considerations (objective factors)

8
Technical Factors

• If all elements in analogous arts incentive to
  combine?
• If element missing suggestion in art?

9
Suggestion Test

• USPTO must show a suggestion or motivation to
  combine multiple references to find a combination
  of old element invention obvious

10
Degree of Suggestion

• USPTO must show reasons that the skilled artisan,
  confronted with the same problems as the inventor
  and with no knowledge of the claimed invention,
  would select the elements from the cited prior
  art references for combination in the manner

11
Sources of Suggestion

• Nature of the problem to be solved
• Teachings of the prior art
• Knowledge of persons of ordinary skill in the art

12
Secondary Considerations

• Court/PTO may consider objective factors in
  determining whether invention would have been
  obvious.
• Administrative
• Rejection for nonobvious
• Rule 132 Affidavit in response
• Litigation
• A fertile battlefield in every suit.

13
Secondary Considerations

• Objective factors
• Commercial Success Evidence that an invention
  has enjoyed commercial success may be used to
  establish that the invention was nonobvious
• Nexus between the success and the invention
• Copying
• Prior failure
• Simultaneous invention by others
• Licenses
• Long-felt need
• Unexpected results
• Skepticism

14
Summary

• Nonobvious allows a combination of references
  (limited to analogous art)
• Nonobvious allows missing of elements (provided
  motivation/suggestion test)
• Identity of invention not required.