Obviousness II

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Obviousness II

• Class Notes February 11, 2003
• Law 677 Patent Law Spring 2003
• Professor Wagner

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Todays Agenda

1. Defining Prior Art for 103
2. Determining the Scope of the Prior Art
3. The PHOSITA
4. Secondary Considerations

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Review The Graham Framework

• The ultimate question of obviousness is one of
  law (for the court)
• The analysis requires three factual
  considerations
• Scope and content of the prior art
• Differences between the prior art and the
  invention
• The level of ordinary skill in the pertinent art
• Secondary Considerations are to be balanced
  against showings of obviousness from the
  references.

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Solving the Graham Framework

• The Key Problem for 103 Analysis Hindsight
• Ways to combat hindsight
• Carefully define appropriate prior art
• Restrict the combining of references
• Evaluate secondary considerations

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The Scope of the Prior Art

• What art is appropriate for 103?
• Basic point all prior art defined by 102
• 102(a) publications, known or used
• 102(b) publications, known or used, on sale
• 102(e) prior patent application by another
• 102(f) derivation from prior invention ?
• 102(g) prior invention by another
• 102(c) abandonment
• 102(d) overseas patenting
• 102(f) derivation

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The Scope of the Prior Art

• What art is appropriate for 103?
• Problem 1
• 103 allows references to be combined
• Concerns about scope of inquiry
• Analogous (or pertinent) Art requirement.
• Only art that is analogous to
• The field of invention
• The types of problems to be solved

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The Scope of the Prior Art

• What art is appropriate for 103?
• Problem 2
• The problem of organized research
• 103(c)
• Subject matter developed by another person,
  which qualifies as prior art only under
  subsection (f) or (g) of section 102 of this
  title, shall not preclude patentability under
  this section where the subject matter and the
  claimed invention were, at the time the invention
  was made, owned by the same person or subject to
  an obligation of assignment to the same person

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The Content of the Prior Art

• What does the prior art describe?
• Do you see a potential problem here
• 103 allows references to be combined at will to
  knock out the claims
• 103 presumes that all art related to the field
  or to the problems to be solved are fair game
• But we know that we stand on the shoulders of
  giants given (1) and (2), is there likely to
  be anything nonobvious?

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The Content of the Prior Art

• The Limitation on Combining References
• In re Dow Chemical (1988)
• Invention combine A B C to yield high
  strength and heat resistance
• Prior Art 1 (PA1) combine A B to yield high
  strength
• Prior Art 2 (PA2) combine B C to yield heat
  resistance
• Key question can you combine PA1 PA2?
• What test does the court offer for determining an
  appropriate combination?

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The Content of the Prior Art

• The Limitation on Combining References
• Pro-Mold Tool Company (1996)
• Invention card holder (transparent, rectangular,
  friction-fit), sized slightly larger than the
  card
• PA1 all elements except for the size
• PA2 sized slightly larger than the card
• Can you combine PA1 PA2? Why? (Is this
  fair?)
• Where does the court find the teaching or
  suggestion to combine?
• Note does Pro-Mold lose the patent?

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The Content of the Prior Art

• The Limitation on Combining References
• Basic rule must find a teaching or suggestion
  to combine references
• Sources of teaching or suggestion
• References themselves (explicit or implicit)
• Knowledge of POSITA
• Teachings of special references in the field
• From the nature of the problem to be solved
  (Pro-Mold)
• Notes
• Standard of teaching reasonable expectation of
  success
• Evidence of teaching away is important
• What if reference 1 provides a suggestion, but
  reference 2 provides a teaching
  away/discouragement?

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The PHOSITA

• Attributes of the PHOISTA
• Ordinary Skill
• Educational level of inventor
• Type of problems in the field
• Prior solutions to the problems
• Sophistication of the technology
• Educational level of workers in the field
• Knowledge (and recall) of all pertinent
  references
• The hypothetical workshop from Winslow
• Does this requirement make sense?

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Secondary Considerations

• Note the Federal Circuit in Stratoflex
• jurisprudentially inappropriate to exclude
  consideration of secondary factors
• The factors
• Commercial success
• Long-felt need / failure of others
• Evidence of copying
• Skepticism (prior to invention) / praise (after
  invention)
• Licensing/acquiescence to the patent

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Secondary Considerations

• Commercial Success
• Pentec v Graphic Controls (1985)
• GCs Series 39 pen commercially successful
• Pentec introduces an infringing (Series 390)
  unit
• Why does the court reject the commercial success
  as evidence of nonobviousness?
• What sort of evidence would be required?
• Is commercial success a relevant secondary
  consideration?

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Secondary Considerations

• Commercial Success
• The key showing in Commercial Success Nexus
• Windsurfing Intl nexus was achieved, despite
  some evidence to the contrary
• What is the standard? What should it be?
• Note a recent trend at the Federal Circuit
  tightening up the nexus requirement.

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Secondary Considerations

• Long-Felt Need / Failure of Others
• Why is this factor seen as especially pertinent?
• Do you agree?
• What is meant by the need?
• Where do you find the long-felt need?

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Secondary Considerations

• Copying
• How relevant is this factor?
• Skepticism/Praise
• How relevant is this factor?
• Where would one look to find it?
• Licensing/Acquiescence
• How relevant is this factor?

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Parting Shots

• Consider
• Is the Federal Circuit overusing secondary
  considerations?
• Trend tightening up the nexus requirement
• How does the obviousness standard relate to other
  objective standards in the patent law?

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• Next Class
• Obviousness III
• Class Exercise