One of the substantive requirements to obtain a patent, 35 U.S.C. §103, states
if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
A common concern relates to what it means for an invention to be “obvious”. While the definition has not been overly helpful,[i] the U.S. Supreme Court has provided some factors that are pertinent in determining obviousness versus non-obviousness, namely,
(1) determining the scope and content of the references in the field (prior art);
(2) differences between the references and the claims;
(3) the level of skill in the field (ordinary skill in the art);
(4) any secondary considerations, like commercial success of the invention (that relates to the inventive aspect of the product), unsolved need in the field, and failure of others.[ii]
While a single reference can be relied upon for rejecting a patent application for obviousness, it is common for multiple references to be strung together to form a refusal to patent the invention.
However, in doing so, the references must show some rationale or motivation to combine the references, with a reasonable expectation of success in integrating the concepts in the references together to meet the claimed invention.[iii]
An obviousness rejection requires a showing that knowledge in the respective field would lead a person of ordinary skill in that field to the invention. This is done, at least in part, through references that evidence what was known at a given time. However, the reference can be used for everything it teaches in the technological field; and thus it is not limited to the particular invention described but includes the background knowledge and all teachings in the reference.[iv]
The courts have recognized that most inventions combine elements already found in the field, and therefore obviousness is more than just an identification of each element of the claimed invention.[v] Accordingly, the test for obviousness looks at the information presented in a reference, the understanding of a person of ordinary skill in the field, and the motivations of such a person to solve a problem,[vi] even if that problem differs from the problem the inventor sought to address.[vii]
Notably, the motivation to combine can take into account the demands known in the field or marketplace,[viii] a need or problem known in the field and addressed by a reference can provide motivation,[ix] as well as “known-technique[s]” in the field, meaning a technique used to improve one device that is applicated to improve similar devices in the same way.[x] However, it is important to note that the solution does not need to be the best solution, just a suitable option for the problem.[xi] Understanding fundamentals of obviousness is critical to addressing rejections under 35 U.S.C. §103, either during preparation of the application or upon receipt of an office action. Many times, identifying a critical issue that shows a question, and therefore the solution, was not within the ordinary skill in the field can be highly useful in addressing these obviousness issues. For example, in the pharmaceutical industry, a critical issue is the therapeutic dose (difference between a toxic dose and a therapeutic dose), and addressing this factor can, and has, assisted in getting inventions patented.
[i] See, Dann v. Johnston, 425 U.S. 219, 230, 189 USPQ 257, 261 (1976) (Stating the obviousness test looks to “whether the difference between the prior art and the subject matter in question “is a difference sufficient to render the claimed subject matter unobvious to one skilled in the applicable art. . . .””).
[ii] Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459 (1966).
[iii] Netflix, Inc. v. DIVX, LLC, No. 2022-1083, slip opinion at 7 (Fed. Cir., Mar. 1, 2023) (citing Procter & Gamble Co. v. Teva Pharmaceuticals USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009). See also, Intel Corp. v. PACT XPP Schweiz AG, No. 2022-1037, slip opinion at 7 (Fed. Cir., Mar. 13, 2023) (citing PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014)).
[iv] Netflix, Inc., No. 2022-1083 at 9 (Fed. Cir., Mar. 1, 2023) (citing EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985); In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012); In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)).
[v] In re Kahn, 441 F.3d 977, 986, 78 U.S.P.Q.2d 1329 (Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355, 1357 (Fed.Cir.1998))
[vi] In re Kahn, 441 F.3d 977 at 988 (citing Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1321-24 (Fed.Cir.2005)).
[vii] KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 127 S.Ct 1727, 1742, 82 USPQ2d 1385 (2007)(“any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”)
[viii] KSR Int’l Co.,127 S.Ct 1727 at 1740.
[ix] Intel Corp., No. 2022-1037 at 10-11 (Fed. Cir., Mar. 13, 2023).
[x] Intel Corp., No. 2022-1037 at 10-12 (Fed. Cir., Mar. 13, 2023)
[xi] Netflix, Inc. , No. 2022-1083 at 12 (Fed. Cir., Mar. 1, 2023) (citing Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (quoting Par Pharmaceuticals, 773 F.3d at 1197–98); see also In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012); Kahn, 441 F.3d at 990)).
