Determining what is obvious and, therefore, not patentable, is a difficult matter. Indeed, one of the most frustrating things I do as a patent attorney is advise inventors on whether their invention is obvious. It is frustrating not because of any failing or lack of knowledge on the part of the inventor, but it is frustrating because the legal determination about whether an invention is obvious seems completely subjective and sometimes even arbitrary.
The big problem I have with obviousness is that it is so unevenly applied. In some technology areas nothing ever seems to be obvious, in other areas virtually everything seems to be obvious. This requires a patent attorney or patent agent to have familiarity with how patent examiners interpret the law of obviousness in a particular innovative area. You might suspect that this would mean that for low-tech gadgets it is more difficult to describe an invention that is non-obvious; while in high tech areas it would be easier to describe an invention as non-obvious. That frequently isn’t the case though, which leads to even greater frustration for inventors.
If Irving Inventor could get a patent on that simple kitchen gadget how is it possible that my complex software program that has never existed before could be considered obvious? That is a good question, and one without a satisfactory answer in my opinion. There is little that seems fair when you compare the way obviousness is interpreted by different Art Units at the Patent Office, which suggest that obviousness has much to do with the way Supervisory Patent Examiners (SPEs) view the inquiry. Different SPEs have different philosophical views of the patent system, which is one reason why you get such disparate treatment of applicants. Regardless of the reasons, what seems clear is that the law of obviousness is often bizarre and has more to do with the personal perceptions of the decision maker than any enlightened or guiding principle.
The issue of obviousness is where the rubber meets the road when it comes to patentability. It has always been difficult to explain the law of obviousness to inventors, business executives and law students alike. Since the United States Supreme Court issued its decision in KSR v. Teleflex in 2007 it has become even more difficult to provide a simple, coherent articulation of the law of obviousness that is at all intellectually satisfying. That is in no small part due to the fact that the determination about whether an invention is obvious is now completely subjective.
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If you look at the Federal Circuit cases it seems that there is an awful lot of reasoning (if you can call it that) that justifies a conclusion already formed. The state of obviousness law allows a decision maker to make a determination about obviousness that seems appropriate from a subjective standpoint, and then weave the “reasoning” backwards to justify the conclusion already reached. The way that this used to be prevented was with what was called the teaching, suggestion or motivation (TSM) test. If there was no teaching, suggestion or motivation to combine references the invention could not be obvious, period. The Supreme Court thought that test, which was a great barrier against hindsight working into the calculus, was too permissive and lead to patents that on their face should clearly never have issued.
The question inventors want to know is whether they will likely be able to obtain a patent, which is a perfectly reasonable question. There is no point wasting good money chasing a patent that likely will never issue. Application of the law of obviousness seems to suggest that when in doubt an invention will be considered obvious. Therefore, it becomes essential to identify all of the possible differences between the invention and the prior art, both from a functional and structural standpoint, but now I’m getting ahead of myself. This article is but a first step in the journey to greater understanding of the law of obviousness.
Before we can understand the peculiar nuances that have turned obviousness determinations into a purely subjective inquiry we need to step back and start at the beginning.
Novelty vs. Obviousness
In assessing whether an invention is patentable there are primarily two questions that must be answered. First, is the invention new (i.e., novel) compared with the prior art? Second, is the invention non-obvious in light of the prior art? We engage in this two-fold inquiry to determine what, if anything, can reasonably be expected to be obtained in terms of patent claim scope.
The question about whether or not there is any single reference that is exactly identical to the invention being evaluated is merely a threshold inquiry. If a prior art reference is found that discloses all the elements of the invention, the inquiry ends because no patent can be obtained. If no single prior art reference identically describes each and every aspect of the invention this novelty hurdle has been cleared. As you can probably imagine, it is not at all uncommon for an invention to clear the novelty hurdle, or at least be capable of clearing the novelty hurdle because with the addition of enough characteristics and limitations eventually the invention will not be identical to the prior art.
Even if the invention is not identical to the prior art it is possible to be denied a patent because the invention is obvious. This is where many inventors become mystified, and some even extremely upset. When I do a patent search and offer an opinion the only time I ever get complaints is when I tell an inventor that I don’t think their invention is patentable, or that it may be patentable but the resulting claims will be quite narrow, perhaps so narrow that the patent claims will not be commercially viable. This opinion is almost always reached due to obviousness concerns. It is very difficult for an inventor to have something that is not identical to the prior art and yet still be told that their invention is likely not patentable because it will be determined to be obvious.
When approaching an obviousness determination it is essential to understand what makes the invention unique. It is also necessary to start to envision the arguments that can be made to distinguish the invention over the totality of the prior art. This is required because when a patent examiner deals with issues of obviousness they will look at a variety of references and pull one element from one reference and another element of the invention from another reference. Ultimately the patent examiner will see if they can find all the pieces, parts and functionality of the invention in the prior art as a whole, and conclude that a combination of the prior art references discloses your invention. This is a bit of an oversimplification because on some level all inventions are made up of known pieces, parts and functionality. The true inquiry is to determine whether the combination of the pieces, parts and functionality found within the applicable technology field of the invention would be considered to be within the “common sense” of one of skill in the art such that the invention is merely a trivial rearrangement of what is already known to exist.
What is and is not “common sense” makes an objective inquiry extremely difficult to say the least. The Patent Office has attempted to interpret KSR in a way that focuses on predictability of results and expectations of success. With the test focusing on “common sense” an awful lot is left to the decision maker in the subjective realm.
One highly effective way to combat an obviousness rejection is to point out that not all of the pieces, parts and functionality that make up an invention can be found within the relevant prior art. But even this is not a guarantee that a patent examiner or reviewing Judge must find that the invention is non-obvious. Nevertheless, it is still a good place to start.
The way I approach obviousness is to identify the closest references and work to articulate what is unique in an invention, searching for a core uniqueness that exists so that a unique invention can be articulated (if possible). We focus on anything not shown in the prior art, both from a structural and functional level. The more differences the better. It is better if the prior art is missing elements. It is best if the combination of elements that makes up the invention produce a synergy that leads to something unexpected.
From a purely legalistic standpoint, an invention is legally obvious, and therefore not patentable, if it would have been obvious to a person of ordinary skill at the time the patent application is filed. In the past this critical time for determining obviousness was at the time the invention was made, but since the U.S. became a first to file system the critical time for determining obviousness is no longer at the time of conception, but rather at the time of filing.
The framework used for determining obviousness is stated in Graham v. John Deere Co. While KSR is the most recent articulation of obviousness from the Supreme Court, it did not disturb the underlying Graham inquiry. Thus, every obviousness determination must first start with the Graham factors as the analytical tool. KSR is overlaid into the inquiry to provide the reasoning for reaching a particular decision based on consideration of the Graham factors.
Obviousness is a question of law based on underlying factual inquiries. The factual inquiries – the Graham factors – that make up the initial obviousness inquiry are as follows:
(1) Determining the scope and content of the prior art.
In determining the scope and content of the prior art, it is necessary to achieve a thorough understanding of the invention to understand what the inventor has invented. The scope of the claimed invention will be determined by giving the patent claims submitted the broadest reasonable interpretation consistent with the overall articulation of the invention.
(2) Ascertaining the differences between the claimed invention and the prior art.
Ascertaining the differences between the claimed invention and the prior art requires interpreting the claim language, and considering both the invention and the prior art as a whole.
(3) Resolving the level of ordinary skill in the pertinent art.
The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. It is necessary to determine who this hypothetical person is because the law requires that the invention not because the law – 35 USC 103 – seeks to determine whether “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…” So this hypothetical person of ordinary skill in the art is central to the inquiry.
Factors that may be considered in determining the level of ordinary skill in the art may include: (1) Type of problems encountered in the art; (2) prior art solutions to those problems; (3) rapidity with which innovations are made; (4) sophistication of the technology; and (5) educational level of active workers in the field. In a given case, every factor may not be present, and one or more factors may predominate.
A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton. In many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.
(4) Secondary considerations of non-obviousness.
In addition to the aforementioned factual inquiries, evidence that is sometimes referred to as ‘‘secondary considerations’’ or “objective indicia of non-obviousness,” must be considered. Essentially, secondary considerations are a reality check on the determination reached through the first 3 factual inquiries. In other words, the invention may appear on paper to be obvious, but if reality does not match theory then the invention can be established as being non-obvious.
Evidence of secondary considerations may include evidence of commercial success, long-felt but unsolved needs, failure of others, copying by the industry and unexpected results. If you are paying attention you notice that I mentioned unexpected results above. This is an important linchpin because unexpected results comes up as a secondary consideration and whether the combination of elements produces an predicted result or outcome plays a central role in the post-KSR obviousness determination.
It is important to understand that not all secondary considerations are created equally. For example, there are many possible reasons why a particular product may enjoy commercial success, such as a great marketing campaign or superior access to distribution channels. In those situations the invention itself is not responsible for the commercial success, rather there is something else at play. In order for commercial success to be useful there needs to be something typing commercial success to the innovation.
One particularly strong secondary consideration is long-felt but unresolved need. If there has been a well documented need or desire in an industry that has gone unanswered or unmet how is it intellectually honest to say that that a resulting solution is obvious? It wouldn’t be at all intellectually honest. That is why a long felt, well-documented need that becomes met is excellent evidence to demonstrate that an invention is non-obvious.
The evidence of secondary considerations may be included in the specification as filed, accompany the application on filing, or be provided to the patent examiner at some other point during the prosecution, which is probably the most common way to submit such evidence.
Before leaving the topic of secondary considerations it is worth noting, however, that just because your invention has never existed in the past does not in and of itself mean that it would be considered non-obvious. What makes a long felt, well-documented need so powerful is that the invention has never existed even as the industry has been searching for solutions. The key is not that it hasn’t existed, but that the invention hasn’t existed despite efforts to find a solution.
Now everything is clear, right? Sadly, no. This is just the beginning, but an important step in the overall process of understanding obviousness. The next step in the journey to understand obviousness needs to be When is an Invention Obvious? This article discusses the so-called KSR rationales, which we have only briefly touched upon in this article.