WEB PATENT NEWS--December, 1999

by Robert M. Hunter, Registered Patent Agent

News about patents, licensing and seed capital sources for inventors and innovating organizations.


The patent laws of many countries, including those of the U.S., require that an invention be "non-obvious" in order to be patentable. Of the three criteria for patentability (the other two being novelty or newness and utility or usefulness), non-obviousness is by far the most difficult to understand. This article explains how this difficult concept is defined and used under U.S. law.

35 U.S.C. Section 103 (a) provides that "A patent my 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 said subject matter pertains." While other paragraphs of Section 103 create an exception for certain "biotechnological" processes (which exception the courts have generally found to be unnecessary) and an exception for commonly- owned inventions, the general requirement of non-obviousness must be meet by almost all inventions.

The U.S. Supreme Court in its decision entitled, Graham v. John Deere, 383 U.S. 1, 148 USPQ 459 (1966), stipulated that obviousness/non-obviousness is to be determined in a four-step process. The first step involves identifying the scope and content of references that qualify as "prior art" under 35 U.S.C. Section 102. Such references include admissions by the applicant(s); and patents and documents made available to the public anywhere in the world, public knowledge in the U.S. and public use by others in the U.S.--provided the event occurred before the date of invention. Other such references include patents and documents made available to the public anywhere in the world (including those published by the inventor(s)), public (nonexperimental) use in the U.S. and public or secret offers to sell or sales in the U.S.--provided the event occurred more than 12 months before the U.S. patent application in question was filed. The appropriate fields of search (for prior art references) are those in which inventors face problems similar to those solved by the claimed invention. Because so much depends on knowing the scope and content of the prior art before a patent application is filed, the importance of performing a professional-quality novelty search is apparent.

The second step involves identifying the differences between the prior art and the claimed invention as a whole. Such differences may be differences in the structure of product-type inventions or differences in the steps of process-type inventions. Distilling the claimed invention down to its "gist" is not allowed--all of the features (termed "limitations") incorporated into each claim must be considered in determining differences. Furthermore, prior art references that "teach away" from the claimed invention must also be considered. In anticipation of this step being performed during patent prosecution, a well-written patent application points out the problems left unsolved by the prior art as a way of high-lighting the differences that will be used to establish non-obviousness during the prosecution of the patent application.

The third step calls for establishing the level of skill that a person of ordinary skill in the art would have possessed on the date the invention "was made." The hypothetical "person having ordinary skill in the art" is one who has knowledge of all prior art but who is neither a neophyte or an expert in the field of the invention. The required perspective is that of an ordinary practitioner of an art, termed a "routineer." In the U.S., an invention is "made" or "completed" on the earliest date the inventor(s) can show (by means of evidence) that he/she/they became diligent in performing acts that resulted in the reduction to practice of an invention that they/he/she was the first to conceive (provided all acts occurred in the U.S. or in a NAFTA or World Trade Organization country). Reduction to practice is accomplished either by building and testing a working model of the invention under conditions that prove its utility or by filing a patent application disclosing a complete and operable invention that can be shown to have been conceived by the named inventor(s). This step illustrates the importance of maintaining (preferably contemporaneously witnessed) records of all activities involved in the conception of inventions and in diligence in reducing them to practice.

The fourth (and most difficult) step involves coming to a conclusion as to whether a routineer in the art would have deemed the claimed invention obvious on the date of its "invention." While there are no "hard and fast" rules for defining non-obviousness, it is always the case that the inventor(s) must have taken an "inventive" step--a step beyond the practice of good engineering or commonsense design--in conceiving the invention. Approaches that have not made it over the obviousness hurdle include making merely aesthetic or inconsequential design changes; omitting an element with the loss of a related function; automating a manual activity; changing (simply scaling up or down) a product's size without solving a technical problem in doing so; changing the shape of a product for no reason; changing the sequence in which ingredients are added; making a product portable, integral, or separable; making a process continuous; reversing, duplicating or rearranging parts; purifying a known product; claiming ranges that overlap with those in the prior art; optimizing a product within ranges known in the prior art; combining equivalents known to be useful for the same purpose; etc. Approaches that have been successful include elimination of an element of an invention without loss of a related function; discovering the source of a long-standing problem that the claimed invention solves; producing a pure culture of an undiscovered microorganism; operating a conventional computer in a new way that produces a tangible, useful result; etc.

In making an obviousness/non-obviousness determination, it is important that "hindsight" not be used to "reconstruct" a claimed invention from unrelated elements present in the prior art because the combination would have been "obvious to try." In fact, before any elements or steps from the prior art can be combined to produce the claimed invention (thereby rendering it obvious), there must be present in the prior art some express or implied suggestion or motivation to do so, either in the references themselves or in the knowledge generally available in the art. Furthermore, there must have been a reasonable expectation that modifying a reference or combining references to make the invention would have been successful.

The obviousness/non-obviousness determination must also evaluate "secondary considerations." These considerations include objective evidence of unexpected results, commercial success, meeting a long-felt need, failure of others, copying of the invention by competitors, licensing, skepticism of experts, solution of an unrecognized or insoluble problem, etc. Such considerations are secondary only in the order of their application and are not secondary in importance in that they can sometimes be used to clearly establish non-obviousness. In all instances, a clear connection (nexus) must be established between the claimed invention and the consideration, e.g., evidence must be produced that it was the advantages of the invention and not excellent marketing that produced commercial success.

Establishing the non-obviousness of a claimed invention during prosecution within the U.S. Patent and Trademark Office (USPTO) has recently become more important than ever. A recent decision of the U.S. Supreme Court in Dickenson v. Zurko, 119 S. Ct. 1816 (1999) has severely limited the power of the U.S. Court of Appeals for the Federal Circuit (CAFC) to "second guess" the USPTO in making patentability judgements, including those concerning obviousness. In fact, the Zurko decision involved a disputed non-obviousness decision by the CAFC. In the future, the CAFC will be unable to substitute its judgement for that of the USPTO unless the CAFC determines that the USPTO abused its discretion or acted arbitrarily or capriciously in reaching its conclusion of unpatentability. Because the only other route for a patent applicant to take who is unsatisfied with a USPTO patentability decision is to file a (much more expensive to prosecute) civil action in the U.S. District Court for the District of Columbia, inventors and patent practitioners must "leave no arrows in their quivers" in their efforts to convince the USPTO of the non-obviousness of the inventors' inventions. This is particularly important for individual inventors and small businesses, as many of them will not be able to afford a trial de novo (from the beginning) in District Court. A patent practitioner who can provide thoughtful, innovative and persuasive representation before the USPTO is the most cost-effective solution to meeting this new challenge. That much is obvious.


During 1999, Dr. Hunter won two awards of which he is very proud. The first was a Tibbetts Award from the U.S. Small Business Administration. These prestigious national awards are made annually to small firms, organizations and individuals judged to exemplify the very best in Small Business Innovation Research (SBIR) achievement.

The second is a Support Person of the Year Award from Project SBIR West, a regional project of the Small Business High Technology Institute that is funded by US West. Project SBIR West promotes successful participation in the SBIR program by small businesses located in the 14 states served by US West.

Robert M. (Bob) Hunter, Ph.D., P.E.
Registered Patent Agent
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