The Nonobviousness Requirement

Obviousness is a critical element to patentability, and can be found in Title 35, Section 103. In essence, even if the applicant can demonstrate patentable subject matter, utility and novelty, the patent will not issue if the invention is trivial. In order to determine if an invention is trivial it is necessary to see if there was motivation in the prior art to do what the inventor has done. If the prior art does not explicitly, and with identity of elements, teach the invention, the patent applicant may still be thwarted if there are a number of references that, when combined, would produce the claimed invention.

A patent may not be obtained if it contains only obvious differences from prior art. An invention is obvious 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. The obviousness inquiry is highly fact specific and not susceptible to per se rules. Defendant cannot simply present evidence of anticipation and then say “ditto” to establish obviousness. Nevertheless, for a patent to be nonobvious it must display “ingenuity beyond the compass” of a person of ordinary skill in the art.

In a nutshell, an invention would be obvious when someone knowledgeable about the area would look at your invention and consider it to be already known; not exactly but known thanks to combining several references to yield your invention. The prototypical example is when you have invented A+B. A is known in the prior art, and B is known in the prior art. Upon looking at A and then looking at B, would someone of skill in the art consider A+B to be already known? If the answer is yes, then A+B is obvious. If the answer is no, then A+B is not obvious. Sometimes combining things is not readily apparent, sometimes it is. That is what makes obviousness a tricky inquiry. It is fact based and subjective. Hindsight is not permissible, so in order to demonstrate obviousness the patent examiner would need to establish that there existed some reason to anticipate that one could successfully combine A and B to result in A+B.

The obviousness determination is based on four factual inquiries: (1) the differences between the prior art and challenged claims; (2) the level of ordinary skill in the field of the pertinent art at the time of plaintiff’s invention; (3) what one possessing that level of skill would have deemed to be obvious from the prior art reference; and (4) objective evidence of obviousness or nonobviousness. Notwithstanding these factual inquiries, objective evidence of obviousness or nonobviousness MUST also be considered before reaching a conclusion on obviousness. Objective evidence includes: (1) the commercial success of the invention; (2) whether the invention satisfied a long felt need in the industry; (3) failure of others to find a solution to the problem at hand; and (4) unexpected results.

In determining what would have been obvious to a person of ordinary skill in the art, the decision maker may examine the following factors: (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; (5) educational level of the inventor; and (6) educational level of active workers in the field.

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