Lowndes, Drosdick, Doster, Kantor & Reed, P.A.

Jacqueline E. Hartt

One of the most difficult things to explain to inventors is the concept of "obviousness" used in the context of patentability. Patent statute 35 USC §103(a) states that a patent may not be obtained "if the difference 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." How this statute is actually applied during patent prosecution has changed dramatically over the years.

Using 35 USC §103(a), the Patent Office can combine elements found in one or more references to assert that an applicant’s invention is "obvious" over these references, even if the invention as claimed is not identical to anything found in the prior art. Thus, if the applicant has invented a device C that combines elements A and B, the patent examiner can use references containing elements A and B to reject the patent claims, even if the combination C is not found in the prior art. The burden then shifts to the applicant and his/her practitioner to argue against the examiner’s position and assert patentability.

Until the Supreme Court weighed in, we relied upon an analysis known as the "TSM" test, that is, whether there were evidence of a teaching, suggestion, or motivation to combine known elements to make the claimed invention. An argument for patentability would typically proceed along the lines that, as A and B are found in different references, and there had been no indication in those references that A and B could or should be combined to form C, the applicant’s invention could not be considered obvious. If the TSM test were rigidly applied by the Patent Office, this argument could be, and often was, successful.

The KSR Decision

However, when the Supreme Court’s decision on KSR Intl Co. v. Teleflex Inc. (550 US 398, 418 (US 2007)) came down, such rigid application of the TSM test was dealt a severe blow, and obviousness rejections escalated. Examiners were now able to reject patent claims that were asserted to:

1. Combine prior art elements in a known way to yield predictable results;
2. Make a simple substitution of one known element for another to obtain predictable results;
3. Use a known technique to improve similar devices in the same way;
4. Apply a known technique to a known device ready for improvement toyield predictable results;
5. Be "obvious to try," by choosing from a finite number of predictable solutions;
6. Result from known work in one field prompting variations in the same or a different field based on design incentives or other market forces ifvariations are predictable; or
7. Pass the TSM test but had a reasonable expectation of success.

Obviousness in Biotechnology 

A recent case involving a biotechnology invention illustrates an application of the "obvious to try" standard. In In re Kubin (561 F.3d 1351 (Fed. Cir. 2009)), the Federal Circuit ruled that it would have been “obvious to try” to obtain a nucleic acid molecule encoding a known protein coupled with the availability of conventional techniques for obtaining nucleotide sequences. Thus, as biotechnology has become a more predictable art, it would appear that patenting inventions in this field will be more difficult in the future.

Obviousness in Software Inventions

In another recent case Perfect Web Technologies, Inc. v. InfoUSA, Inc ., Case No. 09-1105 (Fed. Cir., Dec. 2, 2009), the role of "common sense" figured in a finding of invalidity of a computer-related invention. The claims in US 6,631,400 were directed to a method for sending bulk e-mails to a group of target recipients and calculating the quantity of e-mails successfully received by that group. These steps were agreed by both parties to be disclosed in the prior art. A final method step, which was asserted to be non-obvious by patent owner Perfect Web, entailed "repeating [the prior steps] until said calculated quantity exceeds said prescribed minimum quantity [of successfully received e-mails]."

The Court stated that "common sense can be a source of reasons to combine or modify prior art references to achieve the patented invention." The Court emphasized, however, that a clear and reasoned explanation must be provided to issue a finding of obviousness. Although expert witnesses were not deemed necessary in this case, the Court affirmed that an expert opinion might be required in a more complex case.

How has patent practice changed in light of the changing applications of the "obviousness" standard?

It is more important than ever to ensure that applicants recognize the meaning and import of the obviousness rejection. Applications should be carefully crafted with an eye to defusing possible obviousness rejections from the outset. Arguments should be marshaled in response to, and even in advance of, receiving an Office Action from the Patent Office. Finally, it may be recommended to contact experts in the field who would be prepared to provide an affidavit in support of the non-obviousness of the applicant’s invention.

The art of patent practice has undergone some significant changes in recent years, and will continue to change as other important rulings are expected in 2010. We shall attempt to keep you informed in this exciting and ever-shifting landscape, but please feel free to contact one of our IP practitioners if we can help you with your invention.