In the last quarter’s article, we reviewed the four requirements for patentability of an invention, which are 1) utility, 2) patentable subject matter, 3) novelty and 4) non-obviousness. In particular, we reviewed the utility, patentable subject matter and novelty requirements in great detail. However, the fourth and most difficult hurdle to satisfy for getting a patent is the non-obviousness requirement, which is codified under 35 U.S.C. § 103.
Under this statute, even if the claimed invention is novel, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a person having ordinary skill in the art, then the non-obviousness requirement for patentability is not satisfied. Patent examiners need to put themselves in the shoes of a skilled artisan in the field (a person having ordinary skill in the art) in determining whether the invention is obvious or not.
Rejecting a claim for obviousness
In order for a patent examiner to reject a claim invention for obviousness, a three-prong test must be satisfied.
- There must be some suggestion or motivation, either in the prior art references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings.
- There must be a reasonable expectation of success.
- The prior art reference (or references when combined) must teach or suggest all of the claim features of the invention for patenting.
The examiner also should search for prior art references from analogous art/technology areas to the invention. If the prior art references combined by the examiner in an obviousness rejection are not from the same technology area as the claimed invention, then rejection may be improper. The examiner also is not supposed to use improper hindsight reconstruction in “picking and choosing” elements from among two or more prior art references in coming up with the claimed invention; however, this is the nature of patent examination.
Patent examiners need to put themselves in the shoes of a skilled artisan in the field … in determining whether the invention is obvious or not.”
Illustrating the concepts
Now, let’s use a hypothetical invention to illustrate these concepts. Let’s suppose that our claimed invention = A + B + C + D. The examiner does a prior art search relative to the claimed invention and identifies Reference 1, which teaches A + B + C, and Reference 2, which teaches A + D. Neither Reference 1 nor Reference 2 discloses individually all of the features (A + B + C + D) of our claimed invention. Hence, our claimed invention is novel.
However, the examiner then typically will pivot and combine together two or more prior art references to make an obviousness rejection of the claimed invention. In this case, the examiner will say that it would be obvious to a person having ordinary skill in art to which the invention pertains to combine the teachings of Reference 1 (A + B + C) with Reference 2 (A +D) to recreate the claimed invention (A + B + C + D). The examiner may argue that the motivation to combine the teachings of Reference 1 with the teachings of Reference 2 is that feature A is common to the two references and that Reference 1 and Reference 2 are from analogous art areas because they relate to the same technology area. In this case, the combination of Reference 1 and Reference 2 teaches all the features of the claimed invention (A + B + C + D), so a proper obviousness rejection has been made by the examiner.
Secondary considerations for patentability
Even if the examiner makes a proper obviousness rejection, the patent applicant can present secondary considerations for patentability that must be considered by the examiner in trying to overcome the rejection. These secondary considerations include unexpected or surprising results, commercial success of the invention, long-felt need for the invention, praise and skepticism of experts in the field in being able to come up with the invention, prior failure of others in trying to come up with the invention, licensing of the invention to others and copying of the invention by others.
Of these secondary considerations, unexpected or surprising results based on the invention is the most commonly used and most successfully argued secondary consideration for patentability. However, the unexpected or surprising results argument must be supported by actual experimental data relative to the invention and an explanation of why the data is surprising or unexpected. This is why it is important to include actual experimental examples and results in the patent application which may be used later to support an unexpected or surprising results argument for why the claimed invention is unobvious to one skilled in the art.
Conclusion
Obviousness rejections in patent applications are quite common, and a patent applicant should not give up hope of getting a granted patent by receiving one or more of them. Working with a patent attorney to devise a strategy and implement it, the patent applicant oftentimes can overcome these rejections and turn a patent application into a granted patent. In subsequent articles, we will cover some strategies for overcoming obviousness rejections now that we fully comprehend what they are.
Robert A. Migliorini
203-200-8065; rampatlaw@gmail.com
Patent Attorney