Understanding Obviousness: John Deere and the Basics

When attempting to determine whether an invention is patentable it is necessary to go through the patentability requirements in an effort to see whether patent claims can be drafted that will be usefully broad and that will be distinguishable over the prior art. I recently wrote about the patentability requirements, providing an overview of patentability.

Where the rubber meets the road when it comes to patentability is often with respect to determining whether an invention is non-obvious, which is one of the five patentability requirements. 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 five years ago 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 completely subjective.

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. Simply stated, the state of the law of obviousness allows a decision maker to make a determination about obviousness that seems appropriate from a subjective standpoint and then weave the “reasoning” to justify the conclusion already reached.

Indeed, there is no predictability with the law of obviousness, but prudence seems to dictate 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 tethered to virtually nothing we need to step back and start at the beginning.

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.

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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. Almost always due to obviousness. 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, and indicating that a combination of the prior art references discloses your invention. There is more to it than just finding every piece and part, 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.

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. This is one big criticism I have of where the law of obviousness is going. 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. More on that in the next article on obviousness.

From a purely legalistic standpoint, an invention that would have been obvious to a person of ordinary skill at the time of the invention is not patentable. The framework used for determining obviousness is stated in Graham v. John Deere Co. Obviousness is a question of law based on underlying factual inquiries. The factual inquiries 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.  More on that in the next segment of this series.

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.

Conclusion

Now everything is clear, right? Sadly, no. This is just the beginning, but an important step in the overall process of understanding obviousness.  In the next installment of Understanding Obviousness we will address the various rationales that can be used by patent examiners and Judges to find an invention obvious and, therefore, not patentable.