Nonobviousness Under 35 U.S.C. § 103

Michael D. SteinPrincipalStein IP LLC1400 Eye Street, NWSuite 300Washington, DC 20005(202) [email protected]

Nonobviousness Under35 U.S.C. § 103

The Requirement and How to Deal with the Same

June 2013

Table of Contents

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KSR Int’l Co. v. Teleflex Inc. .......................................................................................

Combating Obviousness …………..............................................................................

35 USC § 103 .............................................................................................................

Disqualifying Prior Art .................................................................................................

Rebutting Prima Facie Case ......................................................................................

Example Case ............................................................................................................

21318202540

KSR Int’l Co. v. Teleflex Inc.

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Teleflex sued KSR for alleged infringement of U.S. Patent No. 6,237,565, which claims a gas pedal/electronic sensor combination.

District Court granted summary judgment to KSR, saying the invention was obvious. 298 F.Supp2d 581 (E.D. Mich. 2003)

Federal Circuit overruled: no express teaching suggestion, or motivation to combine prior art references. 119 Fed. Appx. 282 (Fed. Cir. 2006)

Supreme Court reversed Federal Circuit

KSR Int’l Co. v. Teleflex Inc. (Cont.)

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Facts Background of Teleflex ‘565 patent:

- Conventional pedal assembly includes both an adjustment apparatus and an electronic throttle control

- However, these pedal assemblies can be complex with a great number of parts. In addition, these pedal assemblies can be expensive, time consuming to assemble, and require a significant amount of packaging space

Objective of Teleflex ‘565 patent: To design a smaller, less complex, and less expensive electronic pedal assembly


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Prior Art

Asano, U.S. Patent No. 5,010,782, discloses every element of the claim, except for electronic control Utilizes a mechanical throttle cable (instead of electronic control) Includes pivot point that remains constant during adjustment Not before the USPTO during prosecution

CTS 503 – “off-the-shelf” electronic control

Expert witness Evidence of Market trend in the 1990’s

Install computers in cars to control engine operation, including electronic-controlled throttles.

Strong incentive to convert mechanical pedals to electronic pedals.


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Additional Prior Art

Rixon, U.S. Patent No. 5,819,593, discloses: Electronic control (ETC) attached to the pedal of an adjustable pedal

system; Not a pedal support bracket As a result, ETC moves during pedal adjustment, which can be

undesirable due to the potential for electrical connector wire fatigue failure and/or insulation abrasion

Smith, U.S. Patent No. 5,063,811, discloses: ETC attached to the pedal support bracket housing in a regular

accelerator assembly As a result, electrical components are located outside of a travel path of

a pedal to avoid contamination; and wirings are prevented from chafing and wear since the bracket housing remains stationary during pedal operations

Not an adjustable pedal assembly


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District Court applied the suggestion test

Found that the nature of the problem (creating a smaller, less complex, cheaper pedal assembly), combined with the prior art, implicitly suggested this combination.

No finding that this suggestion was in prior art, merely an assertion that was in nature of problem.

Patent invalid for obviousness; granted summary judgment to defendant KSR.


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Federal Court vacated and remanded Reliance on the nature of the problem to “suggest” is not

the proper application of the test Still need to make factual finding that this suggestion is in the prior art

as opposed to conclusory statement

The suggestion test requires that the prior art contain specific references that must be cited and there must be factual findings of this suggestion.

Unpublished and informal decision Did not decide outcome of case


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Supreme Court granted Certiorari Petition for certiorari

Issue is whether there must be evidence in the prior art of a suggestion.

Amicus briefs from Solicitor General and law professors requesting that Supreme Court of the United States get rid of the “suggestion” test.


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Precise issue:

Whether the Federal Circuit has erred in holding that a claimed invention cannot be held “obvious”, and thus unpatentable under 35 U.S.C. § 103(a), in the absence of some proven “‘teaching, suggestion, or motivation’ that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.”


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No necessary inconsistency between the idea underlying the “TSM” test and the Graham analysis Federal Circuit’s “TSM” test as helpful insights to

determine obviousness. Endorsed a more flexible application of the “TSM” test, as

noted by the Federal Circuit in In re Kahn, Alza Corporation and DyStar.

Limited criticism to “rigid application” of the Federal Circuit’s “TSM” test in specific case.


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TSM should not be applied rigidly Prior art need not explicitly disclose reason to combine

references Any problem known in the art can provide motivation to

combine references, not just problem solved by inventor

Emphasized that need to look to all evidence


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KSR: Summary Must provide some reason to

combine prior art

Reason need not be expressly stated in the prior art

Some evidence must still be presented

Combating Obviousness

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Restated Tests for Common Sense and Obvious to try when there is a design need or market pressure to

solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.

Test has two parts requiring evidence 1. Evidence of design need or market pressure of

identified problem. 2. Finite number of solutions.

Pieces of puzzle: only so many ways to put together. Conversely, if large number of ways, not obvious to try

Combating Obviousness (Cont.)

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Patent Examiners or judges will likely resort to “common sense” since is easy and conclusory Problem is lack of evidence to sustain conclusion. “Common sense” or “common knowledge” can only be applied to

analyze the evidence in the record, and cannot substitute hard evidence. In re Sang Su Lee, 277 F.3d 1338 (Fed. Cir. 2002)

“[c]ommon knowledge and common sense,” even if assumed to derive from the agency's expertise, do not substitute for authority when the law requires authority; and

In re Zurko, 258 F.3d 1379 (Fed. Cir. 2001) “[T]he Board must point to some concrete evidence in the record in

support of these [obviousness] findings [based upon common sense]. To hold otherwise would render the process of appellate review for substantial evidence on the record a meaningless exercise.”

Supreme Court acknowledged this and cited In re Kahn for this proposition.

Patent owners will need to be aware of need to file evidence and require evidence from Examiners/defendants.


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Examiner must first provide evidence Not conclusive, just enough to establish prima

facie case

What is a prima facie case? Evidence that each element exists in the prior

art Evidence as to why the elements would be

combined into the recited invention Must articulate evidence as to obviousness


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Primary fight is prima facie case Why: Applicant does not have to submit evidence

of nonobviousness Want to show that the Examiner did not make

prima facie case Example:

Prior art does not show one claim element Prior Art would not be combined to meet claimed

invention Conflicting prior art teachings

No evidence of reason to make the combination


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Must be ready to rebut prima facie case Require evidence of or detailed reasoning of

Problem, A design need or market pressure to solve a problem, and There are a finite number of identified, predictable solutions.

Applicants must be ready to supply contradictory evidence Skepticism and specific criticism of combination

Usually found in Background of Invention sections in applied prior art Market force not to make combination

Bulky, expensive. Evidence of teaching away from combination.

Combination becomes unworkable. Need to ensure that the record as a whole explains why it would not let one market

force override other considerations. Evidence that are not small number of variations, but large numbers of variations

Applicants need to understand KSR is not really a change to the law Only change is use of existing doctrines.

35 USC 103 (for pre-AIA applications)

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35 U.S.C. 103 (pre-AIA) Conditions for patentability; non-obvious subject matter. (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 , 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. Patentability shall not be negatived by the manner in which the invention was made. (b) …………………………… (c) (1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person. (2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if — (A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made; (B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement. (3) For purposes of paragraph (2), the term “joint research agreement ” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

35 USC 103 (post-AIA)

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35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 , 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. Patentability shall not be negated by the manner in which the invention was made.

Disqualifying Prior Art (Mostly Pre-AIA Methods)

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Eliminate portion of combination without making arguments

Most Common Disqualifier (for Pre-AIA) 35 U.S.C. § 103(c) Some prior art is not considered in the

obviousness inquiry

Disqualifying Prior Art (Pre-AIA)

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35 U.S.C. § 103(c): Prior art will not be considered if Prior art under 35 U.S.C. §§ 102(e),(f),(g) At the time the invention was made, the prior art and the

invention owned by, or subject to an obligation to assign to, the same person (entity)

Does not apply to other prior art 35 U.S.C. §§ 102(a),(b)

Very powerful since most obviousness rejections involve applicant’s prior invention Also rebuts prima facie basis of rejection, so no evidence

needs to be submitted by applicant Allows applicants not to construe or criticize own prior art


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Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) Purpose: Exempt Subject Matter Common To Joint

Researchers

CREATE Act Splits 35 U.S.C. § 103(c) into two subparts U.S.C. §(c)(1) is same as old U.S.C. § 103(c)

Commonly owned prior art not eligible unless reference is 35 USC 102(b) (essentially)

U.S.C. §(c)(2) is new Allows multiple patent application owners to be treated as a

common owner


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Summarization of Qualification for CREATE Exemption

Three Basic Requirements

1. Needs there to be joint research agreement in effect when application filed Needs to be a written agreement

2. Claimed invention resulted from joint research3. Application amended to name agreement

Allows applicants not to construe or criticize own prior art


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Use Declaration under 37 CFR 1.131

Used to disqualify a U.S. patent or U.S. patent application publication as prior art in an obviousness rejection under 35 USC 103 (see MPEP 718).

Antedate one of the references Evidence of prior conception Evidence of diligence Evidence of reduction to practice

Rebutting Prima Facie Case

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Two ways to present evidence to rebut

1. Evidence of record Applied prior art Prior art submitted in IDS

2. Expert testimony Introduced by 37 CFR 1.132 Declaration

Rebutting Prima Facie Case (Cont.)

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37 CFR 1.132 Declaration

Used to submit many different kinds of evidence to remove reference as prior art or support patentability (see MPEP 716)

Subject matter of reference is attributable to inventors, shown by declaration by authors of reference evidence of communications between authors and

inventors prior to publication


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What evidence to submit in Declaration under Rule 132 Any indicia of nonobviousness for Graham v. John

Deere evaluation Comparative test results State of prior art Response to invention What is obvious to try in art Unexpected Results


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The more potential solutions, the less likely the attempt will be obvious Takeda Chemical Industries Ltd. v. Alphapharm

Pty., 83 USPQ 2d 1169 (Fed. Cir. 2007) Mere evidence that known technique could be used

does not mean would be obvious if no expectation of improvement and large number of combinations resulting

Need evidence that not finite number of solutions

Evidence combats obvious to try


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Best evidence of nonobviousness: Is there express evidence in prior art as to why

combination would NOT be made? Gold standard for proving obviousness

Example: find academic paper saying that should not try adding new element


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Usually criticism comes in the form of Background of invention saying not to use reference in way alleged by Examiner or Defendant

Example: Claim is to A+B+C Prior Art A Teaches A+C Prior Art B Teaches B+C, but warns that use of A in

A+C has safety problems Result is one skilled in the art would not use A+B+C


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Evidence of Praise in industry is evidence of nonobviousness Praise in the industry for a patented invention, and

specifically praise from a competitor tends to “indicat[e] that the invention was not obvious”

Allen Archery, Inc. v. Browning Mfg. Co., 819 F.2d 1087, 1092 (Fed. Cir. 1987)

Other evidence can be industry awards Similar to commercial success

More persuasive since competitors acknowledging nonobviousness, not consumers or academia


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Caution: Commercial Success Evidence of commercial success can actually

provide motivation to make combinationEvidence of desirability

Ritchie v. Vast Resources, Inc., 563 F.3d 1334 (Fed Cir. 2009)

Best evidence is long-felt need, doubt of experts, unexpected resultsNeed evidence everyone thought the invention was a

bad idea Hard since inventor believes invention is good

Important to prove that such a combination was generally thought to be a bad idea


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Evidence of Copying Invented Solution

Is evidence of copying patent evidence of non-obviousness?

Not always, but can be a form of praise and acknowledgement of newness


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Power-One, Inc. v. Artesyn Technologies, Inc., 599 F3d 1343 (Fed. Cir. 2010) Power-One put into evidence that Artesyn had

Copied Power-One’s patented design, Artesyn then touted as an advancement in the industry on

introduction of its copied product.

“Artesyn’s contemporaneous reaction to Power-One’s invention, and the industry’s reaction, demonstrate the unobviousness of the invention disclosed in the ’125 patent.”

The evidence of copying, as well as Artesyn’s

own advertising represented an admission usable as a secondary consideration of nonobviousness.


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Comparative test results include comparison with closest prior art show unexpected properties or unexpectedly

superior results explanation by expert of why differences

significant (in kind, not merely degree) and unexpected

tests may be separate—may compare invention with published specifications of prior art


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State of prior art, by providing evidence of Level of ordinary skill defined by person with

knowledge of art Problem solved by invention discovered by

inventors (solution may be obvious once cause of problem is known)

Expressions of desirability of features provided by invention

Others' unsuccessful search for solution provided by invention

Conventional wisdom discouraged solution used by invention

Explaining why another field of technology would not be considered for solution by person of ordinary skill in pertinent art


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Response to invention including evidence of Commercial success of invention not caused by

market factors Displacement of competing device Copying by others Licensing prior to issuance Expressions of incredulity followed by praise


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Evidence of what is obvious to try in art including Extent of possible variations in question

Is it truly finite and small, or large numbers of variations Extent of predictability Market factors dissuading use

Too costly, not practical, etc. Extent of testing on variations done in industry Cost and time needed to perform tests of variations

And what is norm in industry Non-documentary expressions of doubt by others


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Evidence of market force not to make combination Bulky, expensive.

Evidence of teaching away from combination. Combination becomes unworkable. Market moving in different direction

E.g., invention uses silver but market moving towards gold Need to ensure that the record as a whole explains why it

would not let one market force override other considerations.

Example Case

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United States v. Adams, 383 U.S. 39, 148 USPQ 479 (1966).

Adams invention - non-rechargeable wet, electric battery having some truly extraordinary properties. Adams battery - used electrodes of cuprous

chloride and magnesium, a combination of electrodes never before found in a single battery.

Example Case (Cont.)

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In Adams, The Prior Art Taught

Cuprous chloride electrodes were "equivalent" to silver chloride electrodes.

Magnesium electrodes were the "equivalent” of zinc electrodes.

Both zinc and silver chloride used in the prior battery art as electrode material.


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Considerations By Court Classic secondary considerations

The properties and operating characteristics of the Adams battery were: “Unexpected“ “Far surpassed then existing … batteries"

Took a long time for those of even expert skill in the art to believe that the Adams battery operates as it does.


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Known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness.

Invention achieved tremendous commercial success.

Permitted activity and scientific research that had been impossible.


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Supreme Court applied new Graham Factual Inquiries Scope and content of prior art Differences between prior art and claims at issue Level of ordinary skill in the art Secondary considerations (long felt need, failure of

others, etc.)


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Based upon these factors, found the battery nonobvious “This is not to say that one who merely finds

new uses for old inventions by shutting his eyes to their prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness.”

Example of Arguments in Actual Case

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Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Yamamoto et al., (U.S. Publication No. 2008/0212846) in view of Saito, U.S. Pub. No. 2002/0018637.

The examiner cites Saito for teaching displaying size ratios of captured video, and asserts that it would have been obvious to one of ordinary skill in the art at the time of the invention for the displayed error message of Yamamoto to include a size ratio as taught by Saito to all the user to visually see exactly how much fingerprint was acquired.

The examiner goes on to say Yamamoto and Saito are combinable because they are from the same field of endeavor. The applicant strongly disagrees and fails to see how these two references are from the same field of endeavor. Yamamoto’s field of endeavor is tools and techniques for obtaining biologic information input which is to be accepted or rejected as being input from a user, thereby providing a method of biometric authentication. Saito’s field of endeavor is providing a capture section to acquire a video signal in accordance with capture timing and capture time of a selected procedure information and storing the video signal in a digest temporary section as a digest video signal. After the signal recording is ended, the digest video signal is recorded on a magnetic tape section. Saito has nothing to with biologics in any way or authentication in any way. The disclosure at paragraph 0078 relates to a percentage represented by the cursor position at a position of a capture timing indicator, and the capture time at that percentage is displayed at the position of the capture time indicator. There is no mention of any metrics related to a human or even an authentication of any kind.

On top of the foregoing, Yamamoto et al. makes no mention of indicating the error in the fingerprint acquisition, so there is no motivation in Yamamoto et al. to even display whatever results Saito determines on a display, let alone one which shows the size ratio of a fingerprint.

The examiner asserts that displaying a size ratio would help guide the user to move the fingerprint to a correct position. The applicant does not dispute that in the least. However, that is one of the nice advantages of the present invention. Just because something would be helpful, does not mean that it would have been obvious to combine Saito with Yamamoto to obtain the invention as specified in claim 2. Under that reasoning, almost nothing would be patentable, because the examiner could almost always find something which would improve something else, but if there is no teaching or motivation, beyond it simply being helpful, then it would not have been obvious to combine those references.

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Nonobviousness Under 35 U.S.C. § 103

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