Generally speaking, you cannot obtain a patent for an obvious invention. However, to be a bit humorous, it is not always obvious whether an invention is obvious. When a patent application is filed, the application will be examined by a patent attorney at the US Patent & Trademark Office (“USPTO”). Under USPTO guidelines and court precedents, obviousness is based on three underlying factual inquiries:

• What is the scope and content of the prior art
• What are the differences between the claimed invention and the prior art and
• Would a person with “ordinary skill in the pertinent art” have deemed the claimed invention “obvious”

The patent attorney may also evaluate some “secondary considerations” which may include evidence of commercial success, long-felt but unsolved needs, failure of other inventors and unexpected results.

If a patent attorney makes a determination of obviousness, the attorney must explain and clearly articulate the reason or reasons why the claimed invention would have been obvious. Over the years, certain reasons have been upheld by the USPTO and the courts to support rejection on the basis of obviousness. Examples include:

• Mere combination of prior art elements according to known methods to yield predictable results
• Use of simple substitution of one known element for another to obtain predictable results
• Use of known technique to improve similar devices (methods, or products) in the same way
• Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results
• Choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success — known as “obvious to try”
• Use of known work in one field of endeavor to make variations of it for use in a different field of endeavor if the variations are predictable to one of ordinary skill in the art
• Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention
• And more

If a patent attorney makes a preliminary determination of obviousness, generally, the applicant has an opportunity to respond. To respond, the first step is to make a close examination of the patent attorney’s reasoning. After examination, sometimes, the best response is to amend the application. Maybe the solution is to add an element to the invention or modify a method. Sometimes a change of that sort will be sufficient to overcome the obviousness objection. In other cases, the applicant can directly challenge the claim of obviousness with one or more of the following arguments or evidentiary showings:

• Demonstrate that factual errors were made — for example, if possible, show that the examining attorney misunderstood some aspect of the application or the prior art
• Argue that the definition used for “one of ordinary skill” was in error
• Show that “one of ordinary skill in the art” could NOT have changed/combined/substituted the claimed elements by known methods — for example, show information was confidential or unknown or show that technological difficulties would have made it impossible for one of ordinary skill to make the change/combination/substitution
• Prove that the new elements or combinations or methods function differently from the prior art or traverse a different “path” to the end result
• Show that the results were different, unexpected and/or not predictable
• Provide evidence of commercial success or targeting of new/emerging markets or satisfaction of long-felt need
• And more

For more information or if you have questions about applying for a patent, contact the patent lawyers at Revision Legal at 231-714-0100.

The Graham v. John Deere Framework

Section 103 of the Patent Act (35 U.S.C. § 103) bars patenting of an invention if the differences between the claimed invention and the prior art are such that the invention would have been obvious to a person having ordinary skill in the relevant art (PHOSITA) at the time the invention was made. The Supreme Court established the analytical framework for evaluating obviousness in Graham v. John Deere Co., 383 U.S. 1 (1966), identifying four factual inquiries:

• The scope and content of the prior art
• The differences between the prior art and the claims at issue
• The level of ordinary skill in the pertinent art
• Secondary considerations of non-obviousness (objective indicia)

The Supreme Court’s more recent decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), rejected the Federal Circuit’s rigid “teaching-suggestion-motivation” (TSM) test and endorsed a more flexible, “common sense” approach to obviousness that examiners have applied aggressively. KSR made Section 103 rejections more common and harder to overcome on straightforward arguments alone.

Responding to a Section 103 Rejection: Legal Arguments

The first line of response to a § 103 rejection is legal argument attacking the examiner’s analysis under the Graham framework. Effective legal arguments include:

• Teaching away: If the prior art teaches away from combining references—that is, if a reference discourages making the proposed modification or combination—the combination is not obvious. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009).
• No reasonable expectation of success: Even if a combination was technically possible, if a PHOSITA would not have had a reasonable expectation that the combination would produce the claimed result, the rejection should fail.
• Different problem, different solution: If the prior art references address different problems in different technical fields, there may be no motivation to combine them.
• Hindsight reconstruction: If the examiner’s combination relies on the knowledge of the invention itself to identify and combine the relevant references, the analysis is improperly hindsight-based.

Secondary Considerations: Objective Indicia of Non-Obviousness

Secondary considerations—also called objective indicia of non-obviousness—can be powerful rebuttal evidence even when the legal arguments are weak. The Supreme Court in Graham identified these factors, and the Federal Circuit has elaborated on them extensively. The most probative secondary considerations include:

• Commercial success: Commercial success attributable to the claimed invention (not to marketing or branding) supports non-obviousness, particularly when there is a nexus between the success and the novel features of the claims
• Long-felt unmet need: Evidence that the problem the invention solves was recognized for years but remained unsolved despite efforts by those skilled in the art
• Failure of others: Evidence that others tried and failed to make the same invention
• Unexpected results: Results that are unexpectedly superior to those achieved by prior art approaches—particularly powerful in chemistry and pharmaceuticals
• Copying by competitors: Deliberate copying implies that the invention had value not obvious from the prior art
• Praise by experts: Recognition by those skilled in the art that the invention was non-obvious

Amending Claims to Overcome § 103 Rejections

When legal arguments and secondary considerations are insufficient to overcome a § 103 rejection, the applicant may amend the claims to add limitations that distinguish the prior art. This is an important but irreversible step: amendments narrow the claim scope and may create prosecution history estoppel that limits the doctrine of equivalents in later infringement litigation. Before amending, applicants should carefully consider: (1) whether the amendment will survive the rejection; (2) what scope will remain after amendment; and (3) whether the amended claims will provide meaningful commercial protection for the invention.

Contact the patent attorneys at Revision Legal at 231-714-0100 to develop a strategy for responding to Section 103 obviousness rejections.