Patents IV
Nonobviousness
Class Notes: March 5, 2003
Law 507 | Intellectual Property | Spring 2003
Professor Wagner
Today’s Agenda
1. Clean Up: Priority Analysis
2. The Nonobviousness Requirement
1. The Graham Framework
2. Challenge 1: Combining References
3. Challenge 2: Secondary Considerations
4. Challenge 3: Software & Business Models
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Priority of Invention
The Basic Rule of Priority
First to ‘reduce to practice’ = priority
• Exception A: Prior conception + reasonable diligence
until reduction to practice.
• Exception B: The original inventor abandons,
suppresses, or conceals her invention.
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Priority of Invention
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Priority of Invention
Griffith v Kanamaru (1987)
Issue: what is meant by ‘reasonable diligence’?
• Await confirmation of funding sources?
• Await matriculation of graduate student?
What types of delays are ‘reasonable’?
Key point: assume an inventor does set aside her
invention for an ‘unreasonable’ time/reason
• Is she unable to seek a patent? (Under what
circumstances?)
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Review: Requirements for Patentability
A valid patent must be . . .
1. Fully disclosed (§ 112)
2. Novel (§ 102)
3. Not subject to a statutory bar (§ 102)
4. Nonobvious (§ 103)
5. Within the appropriate subject matter.
(March 19)
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Obviousness: History
Why require something beyond novelty?
Hotchkiss:
• Prior art: metallic doorknobs with particular hole
• Invention: clay or porcelain doorknob, same hole
• Court: no patent; a patent requires “more ingenuity and skill”
than that of a “simple mechanic”
Subsequent tests:
• “requirement for invention”
• “flash of creative genius” requirement
Is there a problem with this?
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Obviousness
35 U.S.C. § 103. - Conditions for patentability; non-obvious
subject matter
(a) A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102 of
this title, if the differences 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. Patentability shall not be
negatived by the manner in which the invention was made.
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Obviousness: Graham
Graham v John Deere (1966)
Establishes the Graham Framework for obviousness
analysis.
o The ultimate question of obviousness is one of law (for the
court)
o The analysis requires three factual considerations:
1.Scope and content of the prior art
2.Differences between the prior art and the invention
3.The level of ordinary skill in the pertinent art
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Graham in Action
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Graham in Action
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Challenge 1: Combining References
Recall: under § 102 - each element of the claim
must be found in the same document/reference
Under § 103, you can ‘combine’ references to
identify all elements.
• What is the primary challenge with this?
• How do you deal with it?
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Challenge 1: Combining References
How to ‘limit’ combining references?
In re Vaeck/Dembiczak:
• Require ‘teaching, suggestion, or motivation to
combine’ references
• Require ‘reasonable expectation of success’ in
combinations
• Where can you find ‘teachings’?
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Challenge 2: Secondary Considerations
Note the Federal Circuit in 1980s:
‘jurisprudentially inappropriate’ to exclude
consideration of secondary factors (Why?)
The factors: (Which - if any - are probative?)
Commercial success
Long-felt need / failure of others
Evidence of copying
Skepticism (prior to invention) / praise (after
invention)
• Licensing/acquiescence to the patent
•
•
•
•
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Challenge 3: Software/Business Models
1. Why do software and business model patents
offer such a challenge?
2. How should the courts deal with this?
Lockwood v. American Airlines (1997)
Do you agree with the court that the lack of
detail about the software component was fatal?
What does this suggest about software patents?
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Challenge 3: Software/Business Models
Amazon.com v Barnesandnoble.com (2001):
• Note the procedural posture.
• What do you think the court suggests about
the validity of the one-click patent?
• What does the court’s analysis suggest about
software/business method/Internet patents
more generally?
• Is there a problem here?
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Next Class
Patents V
Claim Construction
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