When attempting to determine whether an invention can be patented it is necessary to go through the patentability requirements in an effort to see whether patent claims can likely be obtained. Ideally you want patent claims that are meaningfully broad and commercially relevant, but at a minimum you must have claims that embody patent eligible subject matter, demonstrate a useful invention, cover a novel invention and which are non-obvious in light of the prior art. Obviousness is typically the real hurdle to patentability, and unfortunately the law of obviousness can be quite subjective and difficult to understand. At times obviousness determinations almost seems arbitrary.
The basic obviousness inquiry was set forth by the United States Supreme Court in Graham v. John Deere nearly 50 years ago, and remains good law even today. In order to determine whether an invention is obvious one must work through this analytical framework: (1) Determine the scope and content of the prior art; (2) Ascertain the differences between the claimed invention and the prior art; (3) Resolve the level of ordinary skill in the pertinent art; and (4) Consider objective indicia of non-obviousness (i.e., are there secondary considerations of non-obviousness that suggest a patent should issue despite an invention seeming to be obvious). See Understanding Obviousness: John Deer and the Basics. While this seems easy enough, the application of these factors or considerations is exceptionally difficult.
Prior to the Supreme Court’s decision in KSR v. Teleflex obviousness was rather mechanical. With obviousness we are asking whether there is any combination of prior art references that when put together would be the invention in question. In other words, could an ordinary mechanic create your invention or was there some kind of non-obvious innovation. Defining the concept with using the concept is hardly illuminating, but that is the way the law of obviousness works. This is true because what is obvious to some large degree is in the eye of the beholder.
Prior to KSR v. Teleflex there were rules in place to prevent to the obviousness inquiry from being subjective to the greatest extent possible. The United States Court of Appeals for the Federal Circuit had employed a “teaching, suggestion or motivation test” for over 30 years. If there was no teaching, suggestion or motivation to combine the references then the invention could not be obvious. This prevented hindsight from creeping into the inquiry, which was critically important because on some level everything is obvious once you know about it.
Unfortunately, in KSR the Supreme Court said that the teaching, suggestion or motivation test was too restrictive. They also said that the question about whether an invention is obvious is one of “common sense.” Sadly, the Supreme Court didn’t really define “common sense,” presumably they thought it would be self evident. This caused great turmoil both in the courts and at the United States Patent and Trademark Office. See KSR the 5th Anniversary: One Supremely Obvious Mess.
The reality is that some uniform rule has to be created even if the Supreme Court refuses to accept bright line rules. There are over 7,500 patent examiners, hundreds of federal judges that should be able to repeatably and predictably apply obviousness case after case. This need for some stability and predictability has caused the Federal Circuit to salvage as many of its old cases as possible, and the USPTO to issue guidelines and guidance to help interpret cases. Still, ever since the Supreme Court’s decision in KSR there has been a great deal of subjectivity in the application of the law of obviousness, which is apparent if you look at the patents that issue, patents that are finally rejected and ultimately abandoned, and the patents the Federal Circuit ultimately finds to include obvious patent claims. There is little to no predictability at the edges.
In theory, obviousness today is about predictability of results. We used to be able to argue that an obviousness rejection was inappropriate where there was no teaching, suggestion or motivation to combine references. Today, however, even if there is no teaching, suggestion or motivation to combine references the patent examiner can reject the application based on one of six other so-called KSR rationales. The other rationales available to the examiner are:
- If the invention a product of combining prior art elements according to known methods to yield predictable results the invention is obvious.
- If the invention is created through a substitution of one known element for another to obtain predictable results the invention is obvious.
- If the invention is achieved by using a known technique to improve a similar device in the same way the invention is obvious.
- If the invention is created by applying a known improvement technique in a way that would yield predictable results the invention is obvious.
- If the invention is achieved from choosing a finite number of identifiable, predictable solutions that have a reasonable expectation to succeed the invention is obvious.
- If known work in one filed of endeavor prompts variations based on design incentives or market forces and the variations are predictable to one of skill in the art the invention is obvious.
As you can see, rationales 3 and 4 are virtually identical. All of these also focus on whether the resulting invention was achieved by combining known references in a way to produce predictable results. Thus, the way you must argue obviousness post-KSR is to say that there is no teaching, suggestion or motivation to combine the references and that the resulting combination of elements would not have been understood to produce predictable results by someone of skill in the art.
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That being said, the possibility that a utility patent could be obtained cannot be definitively ruled out even if an invention seems quite likely to be obvious, which is one of the biggest problems with the law of obviousness. Indeed, one of the more frustrating things about working with the Patent Office is that there is a real lack of uniformity in application of the law of obviousness. For example, on January 7, 2014, the Patent Office granted U.S. Patent No. 8,622,700, which for all intents and purposes granted rights to the inventor to a glow in the dark ceiling fan blade. Just take a look at claim 1 in its entirety:
1. A blade for a ceiling fan, said blade incorporating or constructed of phosphorescent materials, said ceiling fan being arranged for attachment to a ceiling.
Had I been asked if this was patentable I would have said no, and in fact I would have refused to undertake a patent search project in the first place based on the belief that there would be no way that a patent could ever issue on something so obvious. Yet, the Patent Examiner issued this patent. Still, I can tell you with great certainty that a comparably broad claim in Art Units that examine business methods and software would never issue.
If this claim to a glow-in-the-dark ceiling fan blade is ever challenged I see no way that it could survive, but the patent issued. I point this out to demonstrate how difficult it can be to definitively determine whether an invention is obvious. Whether a patent claim covers something that is obvious is almost entirely dependent on the Patent Examiner assigned, which seems to me to be an arbitrary way to handle such a fundamentally important issue.
The big problem I have is that obviousness, at least at the Patent Office, is so unevenly applied. Although I couldn’t see a claim as broad as a glow-in-the-dark ceiling fan blade being patented in most Art Units, even within Art Units that handle similar subject matter there can be a wide difference of opinion with respect to how to interpret the obviousness standard. In some areas of the Patent Office that handle software related inventions nothing is every obvious, for example if the software deals with any kind of GPS navigation system you simply will not get the same examination that you would receive if your software powered an e-commerce system.
If the software you seek to protect deals with some business objective it will have a substantial climb to overcome the obviousness rejections that are virtually guaranteed. Neither can be correct if you ask me, but there are Art Units that issue upwards of 90% of patents and there are Art Units that issue less than 10% of patents. But there is also disparate treatment of applications insofar as obviousness relate to gadgets. In some Art Units even the most modest change will be considered non-obvious, while in other Art Units with other examiners even counterintuitive manipulations of the prior art are declared obvious. Predictability at the Federal Circuit isn’t much better. See KSR Fears Realized.
If there is such random application of the law of obviousness between patent examiners within an Art Unit and between Art Units themselves, and if there is little to no predictability with respect to what will happen at the Federal Circuit, I think that clearly means that the current test is simply unworkable and arbitrary. Simply said, we don’t have a useful test for obviousness at the moment, which can make it exceptionally difficult to advise clients in cases where it could go one way or another depending on one’s particular point of view.
I can virtually guarantee that the overwhelming majority of patent applicants will encounter one or more 103 (obviousness) rejections the first time the patent examiner substantively treats the application filed. What this means is that the application you file must have solid support, which means the application needs to disclose the invention in its full grandeur together with as many nuances as possible. It also means that you really need to start thinking about how you want to position your invention. This requires a meaningful patent search and comprehensive analysis. Only by knowing what is in the prior art and working to tell the story of your invention in a light most favorable can you really have a meaningful chance to overcome the unnecessarily vague and arbitrary application of the law of obviousness.