Nonobviousness

1
Nonobviousness

• Intro to IP Prof Merges
• 1.27.09

2
Defining the Invention Threshold Ingenuity
wood
But this substitution can never be the subject
of a patent. . . . The difference between this
new manufacture and the prior art is destitute
of ingenuity or invention. It may afford
evidence of judgment and skill in the selection
and adaptation of the materials in the
manufacture of the instrument for the purposes
intended, but nothing more.
Unless more ingenuity and skill in applying the
old method of fastening the shank and the knob
were required in the application to it to the
clay or porcelain knob than were possessed by an
ordinary mechanic acquainted with the business,
there was an absence of the degree of skill and
ingenuity which constitute essential elements of
every invention. In other words, the improvement
is the work of the skilled mechanic, not that of
the inventor.
metal
Hotchkiss v. Greenwood, 2 U.S. 248 (1850)
3
Defining the Invention Threshold Ingenuity
Problem articulating an objective and
determinative standard otherwise subjective and
vague I know it when I see it.
Non-obviousness reqt made express
flash of genius
Cuno Engineering Corp. v. Automatic Devices
Corp., 314 U.S. 84, 91 (1941)
4
35 USC Sec 103

• 103. Conditions for patentability non-obvious
  subject matter
• (a) A patent may not be obtained though the
  invention is not identically disclosed or
  described as set forth in section 102 of this
  title, if the differences between the subject
  matter sought to be patented and the prior art
  are such that the subject matter as a whole would
  have been obvious at the time the invention was
  made to a person having ordinary skill in the art
  to which said subject matter pertains.
  Patentability shall not be negatived by the
  manner in which the invention was made.

5
35 USC Sec 103

• 103. Conditions for patentability non-obvious
  subject matter
• (a) Even if novel, no patent, if the
  differences between the subject matter sought to
  be patented and the prior art are such that the
  subject matter as a whole would have been obvious
  at the time the invention was made to a person
  having ordinary skill in the art to which said
  subject matter pertains.

6
35 USC Sec 103

• (a) Even if novel, no patent, if the
  differences between the subject matter sought to
  be patented and the prior art are such that the
  subject matter as a whole would have been obvious
  at the time the invention was made to a person
  having ordinary skill in the art to which said
  subject matter pertains.

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Level of Ordinary Skill in the Art

• Factors that may be considered
• Educational level of the inventor
• Type of problems encountered in the art
• Prior art solutions to the problems
• Rapidity with which innovations are made
• Sophistication of the technology
• Educational level of active workers in the field

But Extraordinary Knowledge A person of ordinary
skill is presumed to know of all relevant prior
art.
8
Comparison of Differences
Subject matter sought to be patented must be
considered as a whole
Strict identity not required
less precision than 102
9
Graham v. John Deere
Upper Plate
Prior Art
Hinge Plate
Is it obvious to move the hinge plate from under
the shank to above the shank?
Improved Design
Enhanced flexibility
10
Secondary Considerations

• Economic and motivational factors that may be
  considered
• Long-felt but unsolved need
• Commercial success
• Failed efforts of others
• Copying by others
• Praise for the invention
• Unexpected results
• Disbelief of experts

Nexus Requirement
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Invention Compared with Prior Art
Claim Chart
Rotating handle at end of bar
Cutting element attached to bar
Base, with passageway
U-shaped bar
Smith Article
X
X
X
Jones Patent
X
X
Adams Slicer
X
X
INVENTIONNOT ANTICIPATED BUT OBVIOUS?
12
Rotating handle at end of bar
Cutting element attached to bar
Claim Elements
Base, with passageway
U-shaped bar
September 1974
Cheese Industry Today
All elements are present when both Reference A
and Reference B are considered.
The Ultimate Cheese Slicer J. Smith
Reference A Smith Article
The popularity of wine and cheese parties
has raised interest in cheese slicers that can be
handled safely by people who are half-tanked.
One promising design is a cutting board featuring
a U-shaped bar that holds a tightened wire. A
passageway in the cutting board base would ensure
that the wire cut cleanly through the cheese.
Non-obviousness requirement not met
if suggestion, teaching, or motivation to combine
elements for multiple references
Tightening Handle
Reference B Jones, Cake Slicer Patent
Dental Floss
13
Grahams Spring Clamp

• Grahams second attempt at solution was more
  successful.
• He added a spring mounting so that the clamp
  would give way when the forces on the shank were
  too great.
• This invention successfully reduced bending and
  breaking of plow parts in rocky soil.
• This invention also produced vibratory action
  that created alternating pockets and ridges that
  were capable of storing moisture that could
  sustain crops during dry periods.

14
Figure 4 Graham 811 Spring Clamp. The spring
(66) at the front end of the clamp holds the plow
shank flat against the I-beam frame. The shank
is pivoting against the rear of the clamp and
the pivoting compresses the spring.
15
Graham v. John Deere
Is it obvious to move the hinge plate from
position A under the shank to position 1 above
the shank?
C
3
2
B
1
A
16
Grahams 811 Patent

• Graham began marketing the clamp in the late
  1940s or early 1950s, and continued producing it,
  with some modifications, for at least a decade
  and a half.
• Some flaws became apparent with the design over
  time
• The shank would rub against the fixed upper plate
  of the clamp and cause wear. This wear was
  troublesome because the plate was connected
  directly to the frame of the plow and was
  difficult to replace.
• The shank was held within the clamp only by the
  spring rod with a large hole. As it was pulled
  backwards, it would cause wear and damage in the
  spring rod.

17
Grahams 798 Patent

• Wear against upper plate and spring rod provided
  impetus for design of new clamp.
• This is the patent at issue in Grahams suit
  against John Deere.
• Changes in the clamp
• Hinge plate has been moved above the shank so
  that the shank does not come into contact with
  the fixed upper plate.
• The shank is secured to the hinge plate by a nut
  and bolt arrangement at the forward end and a
  stirrup at the rear.
• Graham conceived of the design in 1950 but did
  not file patent application until August 27, 1951.

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The Graham Test

• Scope and content of the prior art
• Difference between the prior art and the claims
  at issue
• Level of ordinary skill in the pertinent art

19
Graham points

• The 1952 patent law revision was not
  intended to change the general level of
  patentable invention.
• Ultimate question of patentability is one of law
  lends itself to several basic factual inquiries

20
KSR Intl v. Teleflex

• The claimed invention at issue in this case is a
  straightforward combination of (i) a pre-existing
  type of adjustable pedal, and (ii) a
  pre-existing type of electronic control that is
  commonly used on newer cars.

21
(No Transcript)
22
Claim 4

• A vehicle control pedal apparatus (12)
  comprising
• a support (18) adapted to be mounted to a vehicle
  
• structure (20)
• an adjustable pedal assembly (22) having a pedal
  arm (14)
• moveable in force sic and aft directions with
  respect to said support (18)

23

• a pivot (24) for pivotally supporting said
  adjustable pedal assembly (22) with respect to
  said support (18) and defining a pivot axis (26)
  and
• an electronic control (28) attached to said
  support (18) for
• controlling a vehicle system
• said apparatus (12) characterized by said
  electronic control (28) being responsive to said
  pivot (24) for providing a signal (32) that
  corresponds to pedal arm position as said pedal
  arm (14) pivots about said pivot axis (26)
  between rest and applied positions wherein the
  position of said pivot (24) remains constant
  while said pedal arm (14) moves in fore and aft
  directions with respect to said pivot (24).

24
(No Transcript)
25
Federal Circuit opinion

• The specification of the 565 patent indicates
  that prior-art pedal assemblies incorporating an
  electronic control suffered from being too bulky,
  complex, and expensive to manufacture. See 565
  patent, col. 1, ll. 48-53. It was this problem
  that the 565 patent set out to address. See id.
  col. 2, ll. 2-5.

26
Fed Cir.

• We agree with Teleflex that the district court
  did not apply the correct teaching-suggestion-moti
  vation test. We also agree that, under that test,
  genuine issues of material fact exist, so as to
  render summary judgment of obviousness improper.
• -- Fed Cir case no. 04-1152, slip op at 10.

27

• Under our case law, whether based on the nature
  of the problem to be solved, the express
  teachings of the prior art, or the knowledge of
  one of ordinary skill in the art, the district
  court was required to make specific findings as
  to whether there was a suggestion or motivation
  to combine the teachings of Asano with an
  electronic control in the particular manner
  claimed by claim 4 of the 565 patent. See
  Kotzab, 217 F.3d at 1371 Rouffet, 149 F.3d at
  1357. That is, the district court was required to
  make specific findings as to a suggestion or
  motivation to attach an electronic control to the
  support bracket of the Asano assembly.

28

• KSR INTERNATIONAL CO. v. TELEFLEX INC.
• 127 S.Ct. 1727 (April 30, 2007)

29

• The Federal Circuit has employed an approach
  referred to by the parties as the teaching,
  suggestion, or motivation test (TSM test), under
  which a patent claim is only proved obvious if
  some motivation or suggestion to com bine 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.

30
Asano Pedal
31
Sensor prior art

• Integrated and freestanding pedal sensors,
  described and claimed in various prior art patents

32

• Engelgau had not included Asano among the prior
  art references, and Asano was not mentioned in
  the patents prosecution. Thus, the PTO did not
  have before it an adjustable pedal with a fixed
  pivot point.

33
(No Transcript)
34
Supreme Ct. holding

• We begin by rejecting the rigid approach of the
  Court of Appeals. Throughout this Courts
  engagement with the question of obviousness, our
  cases have set forth an expansive and flexible
  approach inconsistent with the way the Court of
  Appeals applied its TSM test here.

35
Highlights from opinion

• US v Adams and teaching away

36

• When a work is available in one field of
  endeavor, design incentives and other market
  forces can prompt variations of it, either in the
  same field or a different one. If a person of
  ordinary skill can implement a predictable
  variation, 103 likely bars its patentability.

37

• Often, it will be necessary for a court to look
  to interrelated teachings of multiple patents
  the effects of demands known to the design
  community or present in the marketplace and the
  background knowledge possessed by a person having
  ordinary skill in the art, all in order to
  determine whether there was an apparent reason to
  combine the known elements in the fashion claimed
  by the patent at issue. To facilitate review,
  this analysis should be made explicit.

38

• A court can take account of the inferences and
  creative steps that a person of ordinary skill in
  the art would employ.

39

• In many fields it may be that there is little
  discussion of obvious techniques or combinations,
  and it often may be the case that market demand,
  rather than scientific literature, will drive
  design trends. Granting patent protection to
  advances that would occur in the ordinary course
  without real innovation retards progress and may,
  in the case of patents combining previously known
  elements, deprive prior inventions of their value
  or utility.

40

• When 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. In that instance
  the fact that a combination was obvious to try
  might show that it was obvious under 103.

41

• A person having ordinary skill in the art could
  have combined Asano with a pedal position sensor
  in a fashion encompassed by claim 4, and would
  have seen the benefits of doing so.

42
Graham v. John Deere
Is it obvious to move the hinge plate from
position A under the shank to position 1 above
the shank?
C
3
2
B
1
A
43
Ortho-McNeil v Mylan

• 520 F.3d 1358, 86 U.S.P.Q.2d 1196 (Fed Cir 2008)
• Enablement issue
• Nonobviousness

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http//www.topamax.com/topamax/index.html
45

• Claims for patent relating to anticonvulsive drug
  topiramate were not obvious challenges of
  inventive process would have prevented one of
  ordinary skill in the art from traversing the
  multiple obstacles to easily produce the
  invention in light of the evidence available at
  the time of invention.

46

• This invention, contrary to Mylan's
  characterization, does not present a finite (and
  small in the context of the art) number of
  options easily traversed to show obviousness. The
  passage above in KSR posits a situation with a
  finite, and in the context of the art, small or
  easily traversed, number of options that would
  convince an ordinarily skilled artisan of
  obviousness. In this case, the record shows that
  a person of ordinary skill would not even be
  likely to start with 2,34,5 di-isopropylidene
  fructose (DPF), as Dr. Maryanoff did.

47

• Merges, Uncertainty and the Standard of
  Patentability, 7 Berkeley High Tech. L.J. 1
  (1993).