Distinguishing Colloquial Obviousness and Legal Obviousness

By Daniel Hanson
May 31, 2019

“To some lay inventors, [the person having ordinary skill in the art] standard sounds like patentability turns upon the opinion of a fantastical imaginary character, and invoking this character would be like asking, ‘What would Santa Claus think of my invention?'”

https://depositphotos.com/190589784/stock-photo-obvious-hello-name-tag-sticker.htmlHave you ever worked with a lay inventor who had a hard time dealing with obviousness under U.S. patent law? Many patent lawyers have.

It is one of the greatest ironies in patent law: obviousness is not obvious. Lay people struggle with the concept of patent-related obviousness all the time.

It is easy to understand their confusion. As lay people see it, an inventor can create and claim something that has never before been patented by anyone, has never been sold by anyone, has never been built by anyone, and has never even been publicly described by anyone; and can nevertheless be denied a patent “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” (This is a quotation from the post-AIA statute, 35 USC § 103(a), though language in the pre-AIA statute 35 USC § 103 is similar, obviously.)

Because of their confusion about obviousness, lay inventors often see obviousness where there is none, and fail to see obviousness where the courts and the United States Patent and Trademark Office (USPTO) say that they see it quite clearly.

Why? Obviously, it is because the way lay people use the term “obvious” (what I’ll call “colloquial obviousness”) and the way the term is used in patent law (what I’ll call “legal obviousness”) do not mean the same thing.

If you want to help your client understand the differences, you may explain that there are several ways in which “colloquial obviousness” differs from “legal obviousness.”

The Need for Proof

One principal difference is evidence. Legal obviousness needs it, colloquial obviousness typically does not.

Colloquial obviousness typically does not call for any proof of any kind. The end result itself is all that is needed. The very existence of the thing is self-evident as to its nature. There is no need to consult any literature or acquire the testimony of experts or evaluate any history of technological development. One only needs to slap one’s forehead and say, “Well, DUH!” When something is colloquially obvious, that means that nothing more need be said; or that if anything more were to be said, it would be redundant.

It is because of this colloquial meaning that some people shy away from using the word “obvious” and its variations in the colloquial sense, as they see such words as inherently unhelpful. Author Michael Crichton, for example, fondly quoted this dictum from his father, who had been a journalist and an editor: “If it’s really obvious, you don’t need to say it, and if it’s not obvious it’s insulting to say that it is.” Travels (1988) p. 71.

But in patent law, that is not how things work. (Or, to put it perhaps more correctly, that is not how things are supposed to work.) Legal obviousness is never assumed; it must be proven by evidence. In a proceeding before an examiner, the burden of proof is on the examiner to demonstrate obviousness. E.g., In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In an inter partes review proceeding, the burden of proof is on the petitioner challenging a claim. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016).

The purported inventor does not have to prove legal nonobviousness. This may make sense to those lay people who think that “you can’t prove a negative”; and yet, in the field of patents, you actually can do that very thing. There are several recognized types of evidence of legal nonobviousness (but that is a subject for a later essay).

Determining legal obviousness requires delving into the past, examining the technical publications to determine what the prior art disclosed and how close the claimed invention is to what was shown in the public record.

The Time Frame 

Another difference between colloquial obviousness and legal obviousness is this: whether a claimed invention is obvious today is not what matters. Rather, the inquiry is whether the claimed invention “would have been obvious before the effective filing date of the claimed invention” (or in pre-AIA days, “would have been obvious at the time the invention was made”).

Technology is always on the march, and some technological developments become adopted so widely and so quickly that it is easy to forget that there was a time when they didn’t exist at all. A legal obviousness analysis is not concerned with what is known or what is commonplace today; it’s what was known “before the effective filing date” that matters.

The Objective Standard

A further difference is that colloquial obviousness is highly subjective, while legal obviousness is supposed to be objective. The subjective/objective distinction is one with which many lay people have difficulty. Their confusion is totally understandable.

Consider: Whether a claimed invention is legally obvious or not is supposed to be viewed from the standpoint of “a person having ordinary skill in the art to which said subject matter pertains.” This is a person who is totally fictitious. This is a person who has even fewer legal rights in the United States than do corporations. This is a person who has never invented anything or published a single work. This is a person who is assumed to have knowledge about technology and opinions about obviousness, yet has no brain with which to hold that knowledge or to form those opinions. This is a person who has no physical body, and therefore cannot answer questions, cannot sign an affidavit, cannot be deposed, and cannot be impeached. This is a person whose only attribute is ordinary skill in the art, and that skill changes radically depending upon the subject matter of the claim at issue.

Some have suggested that this fictional person has two additional rather remarkable attributes: this person understands every human language on Earth; and this person has personal access at no cost to every publicly available repository of technical information for every technical subject on the entire planet. In spite of these super-human capabilities, however, this person’s level of skill in the art is no more than “ordinary.”

To some lay inventors, this objective standard sounds like patentability turns upon the opinion of a fantastical imaginary character, and invoking this character would be like asking, “What would Santa Claus think of my invention?” (It may be worth noting that there is actually more evidence for the existence of Santa Claus than there is for the person having ordinary skill in the art. There is, for example, substantial eyewitness testimony about the existence of Mr. Claus, as well as widespread consensus as to his attributes.)

The way to resolve the confusion is to point out that this fictional person is never represented as an entity having any sort of physical existence. Rather, this fictional person is a yardstick against which obviousness is evaluated.

One way to give some insight to a lay inventor about the objective standard is to show how applying a subjective standard would not make much sense. It would be pretty easy to defeat an obviousness challenge, wouldn’t it, if all the inventor had to do was file an affidavit saying that, “When I invented the thing, it wasn’t obvious to me.” Wouldn’t every inventor say such a thing? So, whether a supposed invention was obvious to the inventor (a subjective analysis, in other words) cannot be the proper way to look at legal obviousness, can it?

Some lay inventors may also be familiar with other fictional persons used throughout the law as yardsticks. Anyone who has sat on a jury and heard a case involving fault would probably have heard that the defendant’s conduct has to be measured not in relation to what the defendant thought was the proper thing to do, but rather against what a “reasonable person” would do in such a situation.

No Hindsight

There are other differences between colloquial and legal obviousness, but one is worth a mention. Colloquial obviousness often involves plenty of hindsight. Legal obviousness is not supposed to involve hindsight.

When someone says that something is colloquially obvious, that often means, “Now that you’ve shown it to me, it’s readily apparent.” But when someone says that a claimed invention is legally obvious, that’s more akin to “Now that you’ve shown it to me, it’s readily apparent; and I can prove that I would have said so even if you hadn’t shown it to me in the first place.

Legal obviousness requires evidence (as has already been mentioned), and the hindsight restriction means (among other things) that the evidence cannot come from the claimed invention being evaluated.

The general rule (subject to some exceptions) is that it is not proper to use an inventor’s own disclosure against the inventor, in order to establish obviousness. In the case of In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999), the Federal Circuit opined that taking the inventor’s disclosure “as a blueprint for piecing together the prior art to defeat patentability [is] the essence of hindsight.” Similarly, in Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012), the Federal Circuit said, “The inventor’s own path itself never leads to a conclusion of obviousness; that is hindsight. What matters is the path that the person of ordinary skill in the art would have followed.”

The Obvious Conclusion

So, in the event you find your lay clients a bit befuddled by obviousness in the patent context, you can now outline for them some of the ways in which legal obviousness differs from colloquial obviousness. Legal obviousness cannot merely be declared to exist but must be shown by evidence. That evidence must be grounded in the prior art that existed and was available when the claims for the invention were first officially made. Whether the inventor knew or didn’t know about what the prior art disclosed is not determinative. What is determinative is whether the prior art includes information that would have suggested the claimed invention to a person having ordinary skill in the art.

 

 

The Author

Daniel Hanson

Daniel Hanson is an attorney who has worked with a number of law firms and corporations, including BlackBerry Ltd. in Canada. His practice focuses upon patent preparation and prosecution.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 8 Comments comments.

  1. Anon May 31, 2019 11:04 am

    Excellent Article (and I jump to comment here even before finishing my first read).

    I would note that this “affliction” is even worse when it comes to discussions of patent eligibility! FAR too many people weigh in on eligibility without a grasp of the patent law terrain, upon which the topic rests. Others – who should know better – purposely confuse and conflate different principles in order to “promote” a philosophical agenda divorced from that which the terrain would provide (and not to get too preachy, but https://www.biblestudytools.com/topical-verses/bible-verses-about-false-teachers/ ).

    It is often difficult enough to enlighten clients to the nuances of patent law, but then to have to combat those who purposefully confuse and conflate….

  2. B May 31, 2019 2:56 pm

    For the most part you’re correct and EXCELLENT article, but some lay obviousness is legal obviousness. For example, if there are exactly three types of laser devices that are suitable for an application, then it is obvious to substitute one of the three laser devices for another. I’m probably the only pro-KSR person here, but that case did make some sense. Where the lower courts and USPTO went wrong was to assume that a particular limitation might be assumed to be obvious when KSR said no such thing. KSR only addressed motivations to modify references – an issue it took the CAFC the better part of a decade to realize.

  3. Ternary May 31, 2019 5:53 pm

    The term “lay inventor” was new to me. I looked it up and most of the results referred me to the Frito-Lay inventor. The “lay” aspect, I suspect, refers to the knowledge of Patent Law, not to the subject matter of the invention.

    I try to explain to inventors what to expect in “obviousness” rejections, which will almost certainly come in a first Office Action in an application. Usually, my explanation is met with blank stares and considered to be scientific nonsense by inventors. When the 103 rejection is issued, I get as comment: “this is not how it works.” That is: even one of extra-ordinary skill (which most of my inventors are) would never, ever combine references in the way that Examiners do.

    Even stronger: a person of ordinary (or even extra-ordinary) skills when confronted with the cited rejecting references, would be unable to arrive at the claimed invention in 99 of the 100 cases. Mostly, a 103 rejection is a “dictionary” type of rejection: find a reference related to the subject matter and try to find the term that is used in the claim.

    Many of the inventors I work with, have their invention published as a peer-reviewed article, which is filed as a provisional. These inventors are leaders in their fields and determine the overall direction of innovation in their field. To call them a “lay inventor” is an insult.

    My reaction to the term “lay inventor” is to label Examiners as “lay subject matter experts.” That is: in many cases they have no idea what they are talking/writing about and are under pressure to issue at least a first rejection. Case law allows Examiners so much discretion and the USPTO provides coverage so that any embarrassment to reject on unscientific arguments quickly evaporates.

    The way of 103 rejections has been overshadowed by 101/Alice, but much of the 103 rejection nonsense is still out there. Paul Feyerabend wrote his famous book “Against Method” promoting “anything goes” as inspiration for scientific progress. It appears that many Examiners use the “anything goes” principle to issue “obviousness rejections” against “lay inventors” who are the leading experts in their fields.

  4. Benny June 2, 2019 2:21 am

    Different examiners at the USPTO have completely different standards and subjective opinions on what is legally “obvious”, sometimes granting patents which are objectively obvious in view of relevant prior art, sometimes raising specious arguments based on wild imagination.

  5. Anon June 2, 2019 11:08 am

    Benny,

    What exactly is “objectively obvious” as that term is to be understood in its legal context?

    I ask, because you also use the term “subjective opinions,” and I am not sure that you even recognize that BOTH “subjective” and “objective” carry with them, legal implications as terms of art.

    You may well be mirroring a critical lament of the article here in confusing colloquial usage and legal usage of certain terms.

  6. Benny June 5, 2019 5:19 am

    Anon,
    “Objectively obvious” is analogous to the Australian patent law definition of “common general knowledge”. Look it up if you can’t figure it out for yourself.

  7. Anon June 5, 2019 8:33 am

    Benny,

    Thank you for supplying a hint of what I should look up.

    In the meantime, maybe you should take a hint from the thrust of the article here. Re-read the article, and then read my comment. See if you can connect the dots.

  8. Anon June 5, 2019 12:41 pm

    Benny,

    I followed up with some review of Australian patent law — enough to the point to comment that you should not be making ANY comments on US patent law based on ANY basis of Australian patent law.

    Feel free to talk all you want on Australian patent law on Australian patent law blogs, but here, please stick to US patent law and the understanding thereof.