2141

2141 >Examination Guidelines for Determining Obviousness Under< 35 U.S.C. 103** [R-6]

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

EXAMINATION GUIDELINES FOR DETERMINING OBVIOUSNESS UNDER 35 U.S.C. 103

LEE

See In re Nuvasive, 842 F.3d 1376, 1383 (Fed. Cir. 2016) (noting that "'conclusory statements' alone are insufficient and, instead, the finding must be supported by a 'reasoned explanation"') (quoting In re Lee, 277 F.3d 1338, 1342, 1345 (Fed. Cir. 2002))

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

(“[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.”) (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976)). 

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

In order to determine whether a prima facie case of obviousness has been established, we consider the factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the relevant art; and (4) objective evidence of nonobviousness, if present.

See Graham v. John Deere Co., 383 US 1, 10–12 (1966) (discussing Hotchkiss v. Greenwood, 11 How. 248 (1851) (The fact that judgment and mechanical skill may be required to arrive at a particular combination does not necessarily mean that particular combination constitutes a nonobvious invention.))

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

POWEROASIS

Further, the written-description statute "requires that the written description actually or inherently disclose the claim element." PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306--07 (Fed. Cir. 2008). 

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

ALCON

This argument is unpersuasive because the "motivation to modify a prior art reference to arrive at the claimed invention need not be the same motivation that the [applicant] had. See KSR, 550 U.S. at 420, 127 S.Ct. 1727 (stating that it is error to look "only to the problem the patentee was trying to solve");

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

> Furthermore, admitted prior art can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. 102. Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003);

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

BIGIO

We agree with Appellants that Melican is not analogous art. The Examiner’s opposing view apparently is based on the proposition that the inventions of Melican and claim 1 are in the same field of endeavor because they are both directed to composites. However, such a proposition so broadly characterizes the field of Appellants’ endeavor as to render meaningless this aspect of the test for non-analogous art. Here, the Examiner has failed to “correctly set the field of the invention by consulting the structure and function of the claimed invention as perceived by one of ordinary skill in the art.” In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004).

see also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (counseling “the PTO to avoid the temptation to limit broad claim terms solely on the basis of specification passages”) (citation omitted). The PTO has been counseled that it “should only limit the claim based on . . . prosecution history [that] expressly disclaim[s] the broader definition.” Id. However, this is a caution against careless reliance on prosecution history by the PTO, not a mandate for the liberal reliance on prosecution disclaimer to allow broadly worded claims to be read narrowly without requiring clarifying amendments to the claims or to the Specification.

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.”)

ICON; CLAY

For a reference to be “reasonably pertinent,” it must “logically [] have commended itself to an inventor's attention in considering his problem.” In re Icon Health & Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)). 

“[A] reference is reasonably pertinent if… it is one which because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). However, not “all systems and methods within the common knowledge [can be transformed] into analogous prior art simply by stating that anyone would have known of such a system or method.”

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).

"[S]tructural similarities" and "functional overlap" can show that the art to which a prior art reference belongs "is reasonably pertinent to the art with which [A]ppellant's invention dealt with." In re Ellis, 476 F.2d 1370, 1372 (CCPA 1973).

Further, “the similarities and differences in structure and function of the inventions disclosed in the references carry far greater weight” than patent classification. In re Ellis, 476 F.2d 1370, 1372 (CCPA 1973).

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).

We agree with Appellant that classification of the prior art is weak evidence with regard to the problem being solved. Reply Br. 2 (citing In re Mlot-Fijalkowski, 676 F.2d 666 (CCPA 1982), for the proposition that classification evidence is of little value when determining if a reference is analogous art).

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).

PENTEC

See also Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 315 (Fed. Cir. 1985) (commercial success may have been attributable to extensive advertising and position as a market leader before the introduction of the patented product).

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

The Examiner's reasoning in proposing to modify Rioux to have a uniform natural diameter lacks rational underpinnings because it fails to consider the teachings of the prior art as a whole.

In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (cited with approval in Bausch & Lomb, Inc. v. BarnesHind/Hydrocurve, Inc., 796 F.2d 443, 448 (Fed. Cir. 1986)).

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).

JONES

Further, because “each claim must be considered as defining a separate invention,” Jones v. Hardy, 727 F.2d 1524, 1528 (Fed. Cir. 1984), we find it entirely within the parameters of proper patent examination for the Examiner to tailor his application of the prior art to the specific language of each independent claim. See also Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1220 (Fed. Cir. 1995) (“each claim is a separate statement of the patented invention”); Altoona Publix Theatres, Inc. v. Am. Tri—Ergon Corp., 294 U.S. 477, 487 (1935) (“each claim must stand or fall, as itself sufficiently defining invention, independently of the others”).

PANDUIT

Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1572 (Fed. Cir. 1987) (the patent system is not foreclosed to those who make simple inventions), cert. denied, 481 U.S. 1052, 107 S.Ct. 2187, 95 L.Ed.2d 843 (1987).

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

SPONNOBLE

[R]eferences in a combination may be said to teach away where their combined teachings would produce a "seemingly inoperative device". See In re Sponnoble, 405 F.2d 578, 587 (CCPA 1969). 

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);

Eibel Process and Sponnoble both stand for the proposition that the discovery of an unknown problem can result in a patentable invention, even if the solution would have been obvious once the problem is identified.  Eibel Process, 261 U.S. at 67–68, 43 S. Ct. 322; Sponnoble, 405 F.2d at 585. 

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).

see also Par Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 2014 WL 6782649 at *6 (Fed. Cir. Dec. 3, 2014 ) (“We have, however, also explained that the use of inherency, a doctrine originally rooted in anticipation, must be carefully circumscribed in the context of obviousness. See, e.g., In re Rijckaert, 9 F.3d 1531, 1533–34 (Fed.Cir. 1993) (“The mere fact that a certain thing may result from a given set of circumstances is not sufficient [to establish inherency].” (internal quotation omitted)).

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).

MEDICHEM

“[T]o have a reasonable expectation of success, one must be motivated to do more than merely to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1365 (Fed. Cir. 2007) (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)). 

2141.03 Level of Ordinary Skill in the Art [R-6]

>I. < FACTORS TO CONSIDER IN DETERMINING LEVEL OF ORDINARY SKILL

NAT'L STEEL

“It has long been the law that the motivation to combine need not be found in prior art references, but equally can be found ‘in the knowledge generally available to one of ordinary skill in the art.’” Nat’l Steel Car, Ltd. v. Canadian Pacific Ry., Ltd., 357 F.3d 1319, 1337 (Fed. Cir. 2004) (quoting In re Jones, 958 F.2d 347, 351 (Fed. Cir. 1992)). 

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

CHORE-TIME

In cases where the patents and prior art are "easily understandable, a factual determination of the level of skill in the art was unnecessary.... [one] cannot, argue that an unnecessary fact is material. It makes only a naked allegation that some unspecified higher level of skill should have been applied." Chore-time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774, 779 (Fed. Cir 1983).

CUSTOM ACCESSORIES

See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“The person of ordinary skill in the art is a hypothetical person who is presumed to know the relevant prior art.”) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986) (emphasis added)). 

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)).

 see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) ("the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention" (emphasis added)).

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

RYKO

see also Ryko Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (explaining that skill in the art does not act as a bridge over gaps in the substantive presentation of an obviousness case). 

The Examiner’s reasoning—for not discussing the claim limitations—conflates the hypothetical person of ordinary skill standard with the Office’s notification requirements in carrying its procedural burden. Cf. Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“Instead of ascertaining what was subjectively obvious to the inventor at the time of invention, the court must ascertain what would have been objectively obvious to one of ordinary skill in the art at such time.”).