Examples - Obvious to Skilled Person

General. The following hypothetical examples teach this concept:

Hypothetical Example No. 1. Kate designs a widget by combining the teachings in articles in the Widget Journal in a way that any good widget engineer would have. She simply uses good engineering practice for her field. Her widget is deemed obvious to a person having ordinary skill in the art of widget design and, hence, unpatentable.

Hypothetical Example No. 2. John combines elements present in the prior art to create a novel invention by changing the manner in which the elements are combined in a way that is not suggested by the prior art. In fact, those who have attempted to combine the same elements have failed to produce the result that John's invention produces. John is granted a patent on his discovery.

Hypothetical Example No. 3. Buckminster has added a new part to an existing machine. The part is made of a new material that is known to be equivalent to the material previously used. The machine performs the same function as it did before Buckminster's modifications. The machine is unpatentable because the differences between the machine and the prior art are such that the machine as a whole would have been obvious at the time the invention was made.

Hypothetical Example No. 4. Amelia omits a step from a known process. The modified process is incapable of achieving the same result or a better result than it could before it was modified. In fact, the modified process is less efficient than the known process. The modified process is unpatentable because it is deemed obvious. No invention was involved.

Case Law. The following examples from U.S. case law teach this concept:

Clay, In re, 966 F.2d 656, 23 USPQ2d 1058 (Fed. Cir. 1992)
Continential Can Co. USA v. Monsanto Co., 948 F.2d 1264, 20 USPQ2d 1746 (Fed. Cir. 1991)
Fritch, In re, 972 F.2d 1260, 23 USPQ2d 1780 (Fed. Cir. 1992)
Lintner, In re, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972)
Skinner, Ex parte, 2 USPQ2d 1788 (BPAI 1987)
Sun, In re, 31 USPQ2d 1451 (Fed. Cir. 1993)

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