Nonobviousness II:Nonobviousness II:

More on More on

Nonobviousness Nonobviousness

The Scope & Content The Scope & Content

of the Prior Artof the Prior Art

Law 677 | Patent Law | Spring 2002Law 677 | Patent Law | Spring 2002

Administrative:

(1) reminder: Federal Circuit @ Penn, Feb. 6, 2:00 PM

(2) Tuesday, Feb. 5 class: Class Exercise I (materials in dist. cntr.)

Obviousness: the Obviousness: the GrahamGraham Test Test

The Calmar & Colgate PatentsThe Calmar & Colgate Patents

Case Invention How made?Aligned

with priorteachings?

SuccessPriorNeed Result

Adamschemicalbattery experimentation no yes yes nonobvious

McClainsingle spring

collar pad use of prior art yes noevidence yes obvious

Evans90º thread

angle intuition/invention no yes yes nonobvious

Schencknon-damping

vibrationmeasuing

combination no yes ? nonobvious

UnitedChromium

solution forplating w/chromium

experimentation yes yes yes nonobvious

The Struggle with ObviousnessThe Struggle with Obviousness

The Scope & Content of the Prior ArtThe Scope & Content of the Prior Art

1. How do we determine what is “appropriate” prior art?

Section 102 defines prior art. Is there any justification for treating the question differently for § 103?

§ 103(c) 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 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.

Why?Consider: what does an obviousness analysis based on 102(c) prior art look like?

What about an obviousness analysis based on 102(f) prior art?

The Scope & Content of the Prior ArtThe Scope & Content of the Prior Art

1. How do we determine what is “appropriate” prior art?

The Analogous Art Requirement:Why should § 103 art be analogous?

Rules for analogous art:(1) Art from the same field of endeavor, regardless of the problem addressed.(2) Art not within the field, but “reasonably pertinent” to the problem with which the inventor is involved.

2. Modifying / Combining Prior Art References: Are there Limits?

“Teaching or Suggestion” to modify or combine references.

Why require a teaching or suggestion?

Where can you find teachings or suggestions?

•Expressly from the references.

•Knowledge of importance of references in the field.

•In the “nature of the problem to be solved” (Pro-Mold & Tool)

•In a trend suggested by the prior art.

The Scope & Content of the Prior ArtThe Scope & Content of the Prior Art

1. How do we determine what is “appropriate” prior art?

The Analogous Art Requirement:Why should § 103 art be analogous?

Rules for analogous art:(1) Art from the same field of endeavor, regardless of the problem addressed.(2) Art not within the field, but “reasonably pertinent” to the problem with which the inventor is involved.

2. Modifying / Combining Prior Art References: Are there Limits?

“Teaching or Suggestion” to modify or combine references.

References that “teach away” can be signs of nonobviousness. Why?

A modification or combination cannot be merely “obvious to try”: it must have a reasonable expectation of success. Why?

The Scope & Content of the Prior ArtThe Scope & Content of the Prior Art

3. Avoiding Hindsight: How can we avoid hindsight analysis?

Require a teaching or suggestion to combine or modify.

Require an expectation of success in combinations / modifications.

Widen the analysis: “objective indicia of nonobviousness”