103‎ > ‎

2141

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

I.    The KSR Decision and Principles of the Law of Obviousness

II.    The Basic Factual Inquiries of Graham v. John Deere Co.

Office Personnel As Factfinders

A.    Determining the Scope and Content of the Prior Art
 
What To Search For:

Where To Search:

Lintner

Claims that are so broad that they read on nonstatutory as well as statutory subject matter are unpatentable. Cf. In re Lintner, 458 F.2d 1013, 1015 (CCPA 1972) (citation omitted) (“Claims which are broad enough to read on obvious subject matter are unpatentable even though they also read on nonobvious subject matter.”).

B.    Ascertaining the Differences Between the Claimed Invention and the Prior Art

C.    Resolving the Level of Ordinary Skill in the Art

III.    RATIONALES TO SUPPORT REJECTIONS UNDER 35 U.S.C. 103

DANN

The mere existence of differences between the prior art and the claim does not establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 230 (1976). The issue is “whether the difference between the prior art and the subject matter in question ‘is a differen[ce] sufficient to render the claimed subject matter unobvious to one skilled in the applicable art.’” Dann, 425 U.S. at 228 (citation omitted)

IV.    APPLICANT's REPLY

V.    CONSIDERATION OF APPLICANT'S REBUTTAL EVIDENCE



ANDERSON'S-BLACK ROCK

We are in agreement with Appellants’ argument that the incorporation of the rain water trough in the mounting bar as disclosed by Appellants does reflect a certain synergy that is indicative of nonobviousness. See Anderson’s-Black Rock, Inc. v. Pavement Salvage Co. , 396 U.S. 57, 60-62, 163 USPQ 673 (1969).

CFMT

[O]bviousness requires a suggestion of all the elements in a claim (CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)) and “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)

DILLON

It is well settled that the prior art need not disclose the same purpose for a claimed method in order to establish its obviousness under 35 U.S.C. § 103.In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990).

GRAHAM

A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning. See Graham, 383 U.S., at 36, 86 S.Ct 684 (warning against a "temptation to read into the prior art the teachings of the invention in issue" and instructing courts to " ‘guard against slipping into the use of hindsight’ " (quoting Monroe Auto Equipment Co. v. Heckethorn Mfg. & Supply Co., 332 F.2d 406, 412 (C.A.6 1964))). Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).

KSR

In KSR, the Court indicated that there is "no necessary inconsistency between the idea underlying the TSM test and the Graham analysis" provided that the test is not applied as a "rigid and mandatory" formula. Id. at 419. The TSM test is applied in an overly rigid and formalistic manner when the "obviousness analysis" is confined "by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents." Id.

"Although predictability is a touchstone of obviousness, the ‘predictable result’ discussed in KSR refers not only to the expectation that prior art elements are capable of being physically combined, but also that the combination would have worked for its intended purpose. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739-40 (2007)." Depuy Spine, Inc v. Medtronic Sofamor Danek, Inc. (Fed. Cir. 2008-1240, -1253, -1401, Decided June 1, 2009).

“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007).

Appellant’s argument is based on a reading of In re Ratti, 270 F.2d 810 (CCPA 1959). We have reviewed that venerable case of the CCPA, and find that much of its holding must be updated by further developments in the law guided by the Supreme Court as expressed in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).

“[O]bviousness requires a suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern. Corp. , 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)). Thus, as the Supreme Court pointed out in KSR Int' l Co. v. Teleflex Inc. , 550 U.S. 398 (2007):
[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does . . . because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.
Id. at 418-419 (emphasis added).

2141.01 Scope and Content of the Prior Art [R-6]

I. PRIOR ART AVAILABLE UNDER 35 U.S.C. 102 IS AVAILABLE UNDER 35 U.S.C. 103

II. SUBSTANTIVE CONTENT OF THE PRIOR ART

III. CONTENT OF THE PRIOR ART IS DETERMINED AT THE TIME THE INVENTION WAS MADE TO AVOID HINDSIGHT

Dembiczak

"[T]he best defense against the subtle but powerful attraction of a hindsight-based obviousness analysis is rigorous application of the requirement for a showing of the teaching or motivation to combine prior art references." In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999).
 
GORE

See W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1551, 1553 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (“To imbue one of ordinary skill in the art with knowledge of the invention in suit, when no prior art reference or references of record convey or suggest that knowledge, is to fall victim to the insidious effect of a hindsight syndrome wherein that which only the inventor taught is used against its teacher.”).

IV. 35 U.S.C. 103(c) - EVIDENCE REQUIRED TO SHOW CONDITIONS OF 35 U.S.C. 103 (c) APPLY

2141.01(a) Analogous and Nonanalogous Art [R-6] - 2100 Patentability

I. TO RELY ON A REFERENCE UNDER 35 U.S.C. 103, IT MUST BE ANALOGOUS PRIOR ART

CONSTANT

see also Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a patent that something is in the prior art is binding on the applicant and patentee for determinations of anticipation and obviousness.”)


II. **>CONSIDER< SIMILARITIES AND DIFFERENCES IN STRUCTURE AND FUNCTION **
 
ELLIS
 
In any event, patent classification is not dispositive to the issue of whether Reese relates to non-analogous art. See In re Ellis, 476 F.2d 1370, 1372 (C.C.P.A. 1973) (stating that while USPTO classification may provide “some evidence of ‘non-analogy,’ … the similarities and differences in structure and function of the inventions disclosed in the references to carry far greater weight.”) (emphasis in original).

III. ANALOGY IN THE CHEMICAL ARTS

MLOT

Evidence of classification of prior art in different categories by the U.S. Patent and Trademark Office “is inherently weak . . . because considerations in forming a classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem.” In re Mlot-Fijalkowski, 676 F.2d 666, 670 n.5 (CCPA 1982).

IV. ANALOGY IN THE MECHANICAL ARTS

DEMINSKI 

Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Deminski, 796 F.2d 436, 442 . . . . (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)
 
BIGIO
"Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor was involved." In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
 
 
V. ANALOGY IN THE ELECTRICAL ARTS

VI. EXAMPLES OF ANALOGY IN THE DESIGN ARTS
 
2141.02 Differences Between Prior Art and Claimed Invention [R-5]

I. THE CLAIMED INVENTION AS A WHOLE MUST BE CONSIDERED
 
ANTONIE

For an obviousness rejection to be maintained, the combination of elements selected from each reference in combination must represent the claimed invention as a whole. See In re Antonie, 559 F.2d 618, 619 (CCPA 1977) (“Just as we look to a chemical and its properties when we examine the obviousness of a composition of matter claim, it is this invention as a whole, and not some part of it, which must be obvious under 35 U.S.C. § 103.”) (emphasis original).

STRATOFLEX

In determining the differences between the prior art and the claims, the question under 35 U.S.C. § 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1537 (Fed. Cir. 1983).
 
II. DISTILLING THE INVENTION DOWN TO A "GIST" OR "THRUST" OF AN INVENTION DISREGARDS "AS A WHOLE" REQUIREMENT
 
GIST
 
There is no legally recognizable essential gist or heart of the invention. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir. 1983) (citations omitted).

III. DISCOVERING SOURCE/CAUSE OF A PROBLEM IS PART OF "AS A WHOLE" INQUIRY
 
SPONNOBLE

Recognition of the problem is part of the invention as a whole. In re Sponnoble, 405 F.2d 578, 585 (CCPA 1969) (“[D]iscovery of the source of a problem” is part of the “subject matter as a whole” to be considered in determining obviousness).
 
If when combined, the references "would produce a seemingly inoperative device," then they teach away from their combination. In re Sponnoble, 405 F.2d 578, 587 (CCPA 1969);

IV. APPLICANTS ALLEGING DISCOVERY OF A SOURCE OF A PROBLEM MUST PROVIDE SUBSTANTIATING EVI-DENCE

V. DISCLOSED INHERENT PROPERTIES ARE PART OF "AS A WHOLE" INQUIRY
 
ANTONIE
 
Optimization of a parameter not recognized as being result-effective is not prima facie obvious. Application of Antonie, 559 F.2d 618, 620 (CCPA 1977).

BOESCH

“[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. . . . It is well settled that a prima facie case of obviousness may be rebutted ‘where the results of optimizing a variable, which was known to be result effective, (are) unexpectedly good.’” In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
 
PAPESCH
 
See In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“a compound and all of its properties are inseparable”).
 
RIJCKAERT

As stated in In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (quoting from In re Oelrich, 666 F.2d at 581), "[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient [to establish inherency]" (emphasis in original).

“The mere fact that a certain thing may result from a given set of circumstances is not sufficient [to establish inherency]” (emphasis in original). In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981).

VI. PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS

FULTON

See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any … alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed .…”)

GORE

A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983).
 
 
>I. < FACTORS TO CONSIDER IN DETERMINING LEVEL OF ORDINARY SKILL

>II. < SPECIFYING A PARTICULAR LEVEL OF SKILL IS NOT NECESSARY WHERE THE PRIOR ART ITSELF REFLECTS AN APPROPRIATE LEVEL
 
OKAJIMA

See Okajima v. Bourdeau, 261 F.3d 1350,1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).

>III. < ASCERTAINING LEVEL OF ORDINARY SKILL IS NECESSARY TO MAINTAIN OBJECTIVITY
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