Patent Non-Obviousness35 USC §103

Kristine H. JohnsonMacMillan, Sobanski & Todd, LLC

johnson@mstfirm.com

35 U.S.C. § 103 Non-Obviousness

“A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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 the subject matter pertains.”

35 U.S.C. § 103 Non-Obviousness

• Requires more than just minor and inconsequential differences between the invention and the prior art

• Most common, most arguable, and most controversial rejection basis

• Heavily dependent on case law interpretation

Pre-statutory Concept of Obviousness

• Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1850) Infringement suit over attaching a shank to a ceramic knob

• Suit started in Ohio, progressed to the US Supreme Court

– Held that the mere substitution of one known material for another

– Without some technical challenge beyond that “possessed by an ordinary mechanic acquainted with the business”

– Is not patentable

Supreme Court Interprets §103

• Graham v. Deere, 383 U.S. 1 (1966)– Infringement suit over a clamp for shank plows

The Graham clamp device vs. The Glencoe clamp device

The patents in suit The prior art

Graham v. Deere Test

• “The Graham Factors”

–Scope and content of the prior art

–Differences between the prior art and the claims at issue

–Level of ordinary skill in the pertinent art

–Secondary considerations

Graham v. Deere Test

• Secondary considerations– Commercial success– Long felt but unsolved needs– Failure of others– Movement of prior art in different direction– Skepticism of experts– Copying the invention in preference over the prior

art– Other events proved to have actually happened in

real world

And Then, Silence

• No Supreme Court comment on obviousness for forty years

• The Court of Appeals for the Federal Circuit created case law related to obviousness

• Eventually, a working test was solidified

The Federal Circuit’s “TSM” Test

• Prima facie case of obviousness:– Must be some teaching, suggestion, or

motivation in the prior art to modify a reference or combine reference teachings

– Prior art must indicate a reasonable expectation of success

– Reference(s) must disclose, teach, or suggest all claim limitations

The Federal Circuit’s “TSM” Test

• Fact that references can be modified or combined is not sufficient

• Fact that it would have been obvious to try the proposed modification or combination is not sufficient

Recent Supreme Court §103 Case

• KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)

– KSR held a patent on an adjustable pedal assembly for a mechanical throttle To secure business, KSR

added a modular sensor to the pedal for compatibility with computer controlled throttles

– Teleflex held a patent for an adjustable pedal assembly with and electronic position sensor attached to the support member

– Teleflex sued KSR for patent infringement

KSR v. Teleflex

• Reiterates the importance of “The Graham Factors”

• Reverses CAFC precedence– no rigid “teaching, suggestion, or motivation test” (TSM test)

no explicit showing of a teaching, suggestion or motivation to combine the prior art elements is required

just another factor to consider

• “Common sense” is a sufficient motivation to combine references– combining old elements according to their established

functions Regardless of solutions that are “obvious to try” may support a finding of obviousness

KSR International

KSR v. Teleflex

• Under Graham, court should also consider secondary considerations or objective indicia tending to show non-obviousness, such as:

– The commercial success of the invention;

– whether the invention satisfied a long-felt need in the industry;

– failure of others to find a solution to the problem at hand; and

– unexpected results.

What was the Fed Circuit doing wrong?

• Fed. Cir. applying TSM too narrowly by requiring that the prior art include TSM to combine/modify

• Instead of determining obviousness based on TSM, obviousness is based on:– Whether one of skill would have had a reason to

combine/modify the prior art to achieve the claimed invention; and

– Whether one skilled in the art would have had reasonable expectation of success to combine/modify the prior art.

Questions?

Please ask!

Thank you to Ms. Jenna Cogswell at MST who helped prepare these slides!

Contact us at johnson@mstfirm.com or 419.255.5900 for permission to use these slides, or to ask questions. We are happy to let others use these slides, but we would like to know who they helped.