Friday, July 22, 2011

How to tackle Non Obviousness Objection by USPTO

Non Obviousness is a ground against patentability of an invention defined under 35 U.S.C. §103 of US Patent Law. This is equivalent to lack of inventive step in the invention that renders invention obvious of person skilled in art.

The Flash of Genius Doctrine or Test was a test for patentability used by the United States Federal Courts for over a decade. The doctrine was formalized in Cuno Engineering Corp. v. Automatic Devices Corp. (314 U.S. 84 (1941)) which held that the inventive act had to come into the mind of an inventor in a "flash of genius" and not as a result of tinkering. "The new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling. If it fails, it has not established its right to a private grant on the public domain." (Id. at 91). This test, which lasted little more than a decade, was most likely an appealing and easy standard for judges and unsophisticated jurors to apply to any given patent dispute when the technology being disputed was beyond their non-scientific acumen. It was eventually rejected by the 1952 patent statute's section 103 standard of non-obviousness: "Patentability shall not be negatived by the manner in which the invention was made." Many decades later, the Federal Circuit stated that this portion of section 103 was enacted expressly to overrule the flash of genius test from Cuno (Ryko Manufacturing v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)).

US Supreme Court in Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966) outlined factors that a court will look at when determining obviousness and non-obviousness in the United States, and are commonly referred to as the "Graham factors". As per the Graham Factors, the obviousness should be determined by looking at

a) scope and content of the prior art;
b) level of ordinary skill in the art;
c) differences between the claimed invention and the prior art; and
d) objective evidence of non-obviousness.

Factors that show "objective evidence of non-obviousness" are:
i. commercial success;
ii. long-felt but unsolved needs; and
iii. failure of others

Later on, the Federal Circuit in Winner Int'l Royalty Corp. v. Wang (202 F.3d. 1340, 1348 (Fed. Cir., 2000), (Teaching Suggestion Motivation Test) laid down that there must be a suggestion or teaching in the prior art (itself) to combine elements shown in the prior art in order to find a patent obvious. Thus, in general the critical inquiry is whether there is something in the prior art to suggest the desirability, and thus the obvious nature, of the combination of previously known elements. As almost all inventions are some combination of known elements, the TSM test requires that some suggestion or motivation exists to combine known elements to form a claimed invention. The Federal circuit has made clear that the motivation may be implicit, and may be provided for example by an advantage resulting from the modification. In other words, an explicit prior art teaching or suggestion to make a particular modification is sufficient, but not required for a finding of obviousness.

But the U.S. Supreme Court addressed the issue in KSR v. Teleflex (2006). The unanimous decision, rendered on April 30, 2007, overturned a decision of the Federal Circuit and held that it "analyzed the issue in a narrow, rigid manner inconsistent with §103 and our precedents," referring to the Federal Circuit's application of the TSM test. The court held that, while the ideas behind the TSM test and the Graham analysis were not necessarily inconsistent, the true test of non-obviousness is the Graham analysis.

Therefore, it must be established that there was no teaching, suggestion or motivation in the prior art that would have led one of the ordinary skill (the Applicant) to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. It should be established that there is neither a simple substitution of one known element for another to obtain predictable results nor use of known technique to improve similar devices (methods or products) in the same way. The claimed invention does not apply any known technique to a known device (method or product) ready for improvement to yield predictable results.

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