Nonobviousness II
Intro to IP – Prof Merges
1.26.12
Defining the “Invention” Threshold: Ingenuity
Problem: articulating an objective and determinative standard;
otherwise subjective and vague “I know it when I see it.”
“flash of creative
genius” test
Patent Act of 1952
Non-obviousness
reqt made express
• flash of genius
Cuno Engineering Corp. v. Automatic
Devices Corp., 314 U.S. 84, 91 (1941)
35 USC Sec 103
§ 103. Conditions for patentability; non-obvious
subject matter
(a) [Even if novel, no patent], 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.
35 USC Sec 103
(a) [Even if novel, no patent], 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.
Level of Ordinary Skill in the Art
Hobbyist
Bench Scientist
1 year
experience
Bench Scientist
15 years
experience
Nobel
Laureate
Factors that may be considered:
• Educational level of the inventor
• Type of problems encountered in the art
• Prior art solutions to the problems
• Rapidity with which innovations are made
• Sophistication of the technology
• Educational level of active workers in the field
But Extraordinary Knowledge: A person of ordinary skill is
presumed to know of all relevant prior art.
Comparison of Differences
• Subject matter sought to be patented must be
considered as a whole
• Strict identity not required
• less precision than §102
Graham v. John Deere
Upper Plate
Prior Art
Hinge Plate
Is it obvious to move the hinge plate from under the
shank to above the shank?
Upper Plate
Improved
Design
Hinge Plate
Enhanced flexibility
Claim Chart
Invention Compared with Prior Art
Rotating handle Cutting element Base, with U-shaped
at end of bar
attached to bar passageway
bar
Smith
Article
Jones
Patent
Adams
Slicer
X
X
X
X
X
X
X
INVENTION
NOT ANTICIPATED;
BUT OBVIOUS?
Graham v. John Deere
Is it obvious to move the hinge plate from position A under
the shank to position 1 above the shank?
C
3
2
B
1
A
The Graham Test
• Scope and content of the prior art
• Difference between the prior art and the
claims at issue
• Level of ordinary skill in the pertinent art
• Factor 3 ½: “Secondary considerations” such
as (1) commercial success; (2) long felt need;
or (3) failure of others
Developments: Graham (1966) to
Teleflex (2007)
• Secondary considerations  “objective
indicia”, the 4th Graham factor
• “Teaching, suggestion or motivation test”
(TSM test)
TSM Test
Invention Compared with Prior Art
Rotating handle Cutting element Base, with U-shaped
at end of bar
attached to bar passageway
bar
Smith
Article
Jones
Patent
X
X
X
X
X
X
OBVIOUS TO
COMBINE SMITH
AND JONES?
KSR Int’l v. Teleflex, 550 US 398
(2007)
The claimed invention at issue in this case is a
straightforward combination of (i) a preexisting type of “adjustable pedal,” and (ii) a
pre-existing type of “electronic control” that
is commonly used on newer cars.
Claim 4
A vehicle control pedal apparatus (12) comprising:
a support (18) adapted to be mounted to a vehicle
structure (20);
an adjustable pedal assembly (22) having a pedal arm
(14)
moveable in force [sic] and aft directions with respect
to said support (18);
a pivot (24) for pivotally supporting said adjustable
pedal assembly (22) with respect to said support
(18) and defining a pivot axis (26); and
an electronic control (28) attached to said support
(18) for
controlling a vehicle system;
said apparatus (12) characterized by said electronic
control (28) being responsive to said pivot (24)
for providing a signal (32) that corresponds to
pedal arm position as said pedal arm (14) pivots
about said pivot axis (26) between rest and
applied positions wherein the position of said
pivot (24) remains constant while said pedal arm
(14) moves in fore and aft directions with respect
to said pivot (24).
ASSEMBLEY
ARM
SENSOR
District Court Opinion
• It would have been obvious to combine
the moveable gas pedal with well
known automotive sensors that were
widely available to those skilled in the
art
• Patent invalid
Federal Circuit opinion
The specification of the ’565 patent indicates
that prior-art pedal assemblies incorporating
an electronic control suffered from being too
bulky, complex, and expensive to
manufacture. See ’565 patent, col. 1, ll. 4853. It was this problem that the ’565 patent
set out to address. See id. col. 2, ll. 2-5.
Fed Cir.
We agree with Teleflex that the district court
did not apply the correct teachingsuggestion-motivation test. We also agree
that, under that test, genuine issues of
material fact exist, so as to render summary
judgment of obviousness improper.
-- Fed Cir case no. 04-1152, slip op at 10.
Under our case law, whether based on the nature of
the problem to be solved, the express teachings of
the prior art, or the knowledge of one of ordinary
skill in the art, the district court was
required to make specific findings as to
whether there was a suggestion or
motivation to combine the teachings of
Asano with an electronic control in the particular
manner claimed by claim 4 of the ’565 patent. See
Kotzab, 217 F.3d at 1371; Rouffet, 149 F.3d at 1357.
That is, the district court was required to make
specific findings as to a suggestion or motivation to
attach an electronic control to the support bracket
of the Asano assembly.
KSR INTERNATIONAL CO. v.
TELEFLEX INC.
127 S.Ct. 1727 (April 30, 2007)
[T]he Federal Circuit has employed an
approach referred to by the parties as the
“teaching, suggestion, or motivation” test
(TSM test), under which a patent claim is
only proved obvious if “some motivation
or suggestion to com bine the prior art
teachings” can be found in the prior art,
the nature of the problem, or the
knowledge of a person having ordinary skill
in the art.
Asano
Pedal
Sensor prior art
• Integrated and freestanding
pedal sensors, described and
claimed in various prior art
patents
Engelgau [Teleflex patent inventor]
had not included Asano among the
prior art references, and Asano was
not mentioned in the patent’s
prosecution. Thus, the PTO did not
have before it an adjustable pedal
with a fixed pivot point.
Supreme Ct. holding
“We begin by rejecting the rigid
approach of the Court of Appeals.
Throughout this Court’s engagement
with the question of obviousness,
our cases have set forth an expansive
and flexible approach inconsistent
with the way the Court of Appeals
applied its TSM test here.”
When a work is available in one field
of endeavor, design incentives and
other market forces can prompt
variations of it, either in the same
field or a different one. If a person
of ordinary skill can implement a
predictable variation, § 103 likely
bars its patentability.
“Often, it will be necessary for a court to look
to interrelated teachings of multiple
patents; the effects of demands known to
the design community or present in the
marketplace; and the background
knowledge possessed by a person having
ordinary skill in the art, all in order to
determine whether there was an apparent
reason to combine the known elements in
the fashion claimed by the patent at issue.
To facilitate review, this analysis should be
made explicit.”
A “court can take account of
the inferences and creative
steps that a person of
ordinary skill in the art
would employ.”
In many fields it may be that there is little
discussion of obvious techniques or
combinations, and it often may be the case
that market demand, rather than scientific
literature, will drive design trends. Granting
patent protection to advances that would
occur in the ordinary course without real
innovation retards progress and may, in the
case of patents combining previously known
elements, deprive prior inventions of their
value or utility.
When there is a design need or market
pressure to solve a problem and there are a
finite number of identified, predictable
solutions, a person of ordinary skill has good
reason to pursue the known options within
his or her technical grasp. If this leads to the
anticipated success, it is likely the product
not of innovation but of ordinary skill and
common sense. In that instance the fact that
a combination was obvious to try might
show that it was obvious under § 103.
PHOSITA and Nonobviousness
A person having ordinary skill in
the art could have combined
Asano with a pedal position
sensor in a fashion encompassed
by claim 4, and would have seen
the benefits of doing so.
Graham v. John Deere
Is it obvious to move the hinge plate from position A under
the shank to position 1 above the shank?
C
3
2
B
1
A
Merges, “Uncertainty and the Standard of
Patentability,” 7 [Berkeley] High Tech. L.J. 1
(1993).