Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 in View of the Supreme Court Decision in KSR International Co., 57526-57535 [E7-19973]
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Federal Register / Vol. 72, No. 195 / Wednesday, October 10, 2007 / Notices
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BILLING CODE 3510–22–S
DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO–P–2007–0031]
Examination Guidelines for
Determining Obviousness Under 35
U.S.C. 103 in View of the Supreme
Court Decision in KSR International
Co. v. Teleflex Inc.
United States Patent and
Trademark Office, Commerce.
ACTION: Notice.
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AGENCY:
SUMMARY: The United States Patent and
Trademark Office (USPTO) is
publishing examination guidelines for
determining obviousness under 35
U.S.C. 103 in view of the Supreme Court
decision in KSR International Co. v.
Teleflex Inc. These guidelines will assist
USPTO personnel to make a proper
determination of obviousness under 35
U.S.C. 103 and to provide an
appropriate supporting rationale.
DATES: These guidelines are effective
October 10, 2007.
FOR FURTHER INFORMATION CONTACT:
Contact either Kathleen Kahler Fonda,
Legal Advisor (telephone (571) 272–
7754; e-mail kathleen.fonda@uspto.gov)
or Pinchus M. Laufer, Patent
Examination Policy Analyst (telephone
(571) 272–7726; e-mail
pinchus.laufer@uspto.gov), of the Office
of the Deputy Commissioner for Patent
Examination Policy. Alternatively, mail
may be addressed to Ms. Fonda or Mr.
Laufer at Commissioner for Patents,
attn: KSR, P.O. Box 1450, Alexandria,
VA 22313–1450.
SUPPLEMENTARY INFORMATION: These
guidelines are intended to assist Office
personnel to make a proper
determination of obviousness under 35
U.S.C. 103, and to provide an
appropriate supporting rationale in view
of the recent decision by the Supreme
Court in KSR International Co. v.
Teleflex Inc. (KSR).1 The guidelines are
1 550
U.S. _, 82 USPQ2d 1385 (2007).
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based on the Office’s current
understanding of the law, and are
believed to be fully consistent with the
binding precedent of the Supreme
Court.2
These guidelines do not constitute
substantive rule making and hence do
not have the force and effect of law.
They have been developed as a matter
of internal Office management and are
not intended to create any right or
benefit, substantive or procedural,
enforceable by any party against the
Office. Rejections will continue to be
based upon the substantive law, and it
is these rejections that are appealable.
Consequently, any failure by Office
personnel to follow the guidelines is
neither appealable nor petitionable.
To the extent that earlier guidance
from the Office, including certain
sections of the current Manual of Patent
Examining Procedure (MPEP), is
inconsistent with the guidance set forth
herein, Office personnel are to follow
these guidelines. The next revision of
the MPEP will be updated accordingly.
I. The KSR Decision and Principles of
the Law of Obviousness
Teleflex owned a patent claiming
technology useful in the gas pedal of a
car. The invention at issue in KSR was
a pedal assembly that could be adjusted
to accommodate drivers of different
statures. The electronic pedal-position
sensor was positioned on the support
for the pedal assembly, and the pivot
point of the pedal remained fixed
regardless of how the pedal assembly
was adjusted. This combination of the
fixed pivot point for the adjustable
pedal and the fixed sensor position on
the support resulted in a simpler,
lighter, and more compact design.
Teleflex sued KSR for infringement.
The district court cited references that
separately taught adjustable pedals and
sensors, and found on summary
judgment that Teleflex’s patent was
invalid for obviousness. On appeal, the
Federal Circuit vacated the district
court’s decision, and remanded the case.
The Federal Circuit stated that ‘‘the
district court’s analysis applied an
incomplete teaching-suggestionmotivation test’’ in arriving at the
finding of obviousness.3
Upon KSR’s petition for review of the
Federal Circuit’s decision, the Supreme
Court reversed, concluding that the
district court had correctly determined
that the patent was invalid for
2 Further developments in the law of obviousness
are to be expected in view of KSR. Thus, it is not
clear which Federal Circuit decisions will retain
their viability.
3 Teleflex Inc. v. KSR Int’l Co., 119 Fed. Appx.
282, 288 (Fed. Cir. 2005).
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obviousness. The Supreme Court
reaffirmed the familiar framework for
determining obviousness as set forth in
Graham v. John Deere Co., but stated
that the Federal Circuit had erred by
applying the teaching-suggestionmotivation (TSM) test in an overly rigid
and formalistic way.4 Specifically, the
Supreme Court stated that the Federal
Circuit had erred in four ways: (1) ‘‘By
holding that courts and patent
examiners should look only to the
problem the patentee was trying to
solve;’’ 5 (2) by assuming ‘‘that a person
of ordinary skill attempting to solve a
problem will be led only to those
elements of prior art designed to solve
the same problem;’’ 6 (3) by concluding
‘‘that a patent claim cannot be proved
obvious merely by showing that the
combination of elements was ‘obvious
to try;’ ’’ 7 and (4) by overemphasizing
‘‘the risk of courts and patent examiners
falling prey to hindsight bias’’ and as a
result applying ‘‘[r]igid preventative
rules that deny factfinders recourse to
common sense.’’ 8
In KSR, the Supreme Court
particularly emphasized ‘‘the need for
caution in granting a patent based on
the combination of elements found in
the prior art,’’ 9 and discussed
circumstances in which a patent might
be determined to be obvious.
Importantly, the Supreme Court
reaffirmed principles based on its
precedent that ‘‘[t]he combination of
familiar elements according to known
methods is likely to be obvious when it
does no more than yield predictable
results.’’ 10 The Supreme Court stated
that there are ‘‘[t]hree cases decided
after Graham [that] illustrate this
doctrine.’’ 11 (1) ‘‘In United States v.
Adams, * * * [t]he Court recognized
that when a patent claims a structure
already known in the prior art that is
altered by the mere substitution of one
element for another known in the field,
the combination must do more than
yield a predictable result.’’ 12 (2) ‘‘In
Anderson’s-Black Rock, Inc. v.
Pavement Salvage Co., * * * [t]he two
[pre-existing elements] in combination
did no more than they would in
separate, sequential operation.’’ 13 (3)
‘‘[I]n Sakraida v. AG Pro, Inc., the Court
derived * * * the conclusion that when
550 U.S. at l, 82 USPQ2d at 1391.
at l, 82 USPQ2d at 1397.
4 KSR,
5 Id.
6 Id.
7 Id.
8 Id.
9 Id.
at l, 82 USPQ2d at 1395.
10 Id.
11 Id.
12 Id.
13 Id.
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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.’’ 14 (Internal
quotations omitted.) The principles
underlying these cases are instructive
when the question is whether a patent
application claiming the combination of
elements of prior art would have been
obvious. The Supreme Court further
stated that:
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, 35 U.S.C. 103 bars its patentability.
For the same reason, if a technique has been
used to improve one device, and a person of
ordinary skill in the art would recognize that
it would improve similar devices in the same
way, using the technique is obvious unless
its actual application is beyond his or her
skill.15
When considering obviousness of a
combination of known elements, the
operative question is thus ‘‘whether the
improvement is more than the
predictable use of prior art elements
according to their established
functions.’’ 16
II. The Basic Factual Inquiries of
Graham v. John Deere Co
An invention that would have been
obvious to a person of ordinary skill at
the time of the invention is not
patentable.17 As reiterated by the
Supreme Court in KSR, the framework
for the objective analysis for
determining obviousness under 35
U.S.C. 103 is stated in Graham v. John
Deere Co.18 Obviousness is a question of
law based on underlying factual
inquiries. The factual inquiries
enunciated by the Court are as follows:
(1) Determining the scope and content of
the prior art;
(2) Ascertaining the differences between
the claimed invention and the prior art; and
(3) Resolving the level of ordinary skill in
the pertinent art.
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Objective evidence relevant to the
issue of obviousness must be evaluated
by Office personnel.19 Such evidence,
sometimes referred to as ‘‘secondary
considerations,’’ may include evidence
of commercial success, long-felt but
unsolved needs, failure of others, and
unexpected results. The evidence may
be included in the specification as filed,
14 Id.
15 Id.
at l, 82 USPQ2d at 1395–96.
at l, 82 USPQ2d at 1396.
16 Id.
17 35
U.S.C. 103(a).
U.S. 1, 148 USPQ 459 (1966).
19 Id. at 17–18, 148 USPQ at 467.
18 383
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accompany the application on filing, or
be provided in a timely manner at some
other point during the prosecution. The
weight to be given any objective
evidence is decided on a case-by-case
basis. The mere fact that an applicant
has presented evidence does not mean
that the evidence is dispositive of the
issue of obviousness.
The question of obviousness must be
resolved on the basis of these factual
determinations. While each case is
different and must be decided on its
own facts, the Graham factors,
including secondary considerations
when present, are the controlling
inquiries in any obviousness analysis.20
As stated by the Supreme Court in KSR,
‘‘While the sequence of these questions
might be reordered in any particular
case, the [Graham] factors continue to
define the inquiry that controls.’’ 21
Office Personnel as Factfinders
Office personnel fulfill the critical
role of factfinder when resolving the
Graham inquiries. It must be
remembered that while the ultimate
determination of obviousness is a legal
conclusion, the underlying Graham
inquiries are factual. When making an
obviousness rejection, Office personnel
must therefore ensure that the written
record includes findings of fact
concerning the state of the art and the
teachings of the references applied. In
certain circumstances, it may also be
important to include explicit findings as
to how a person of ordinary skill would
have understood prior art teachings, or
what a person of ordinary skill would
have known or could have done. Factual
findings made by Office personnel are
the necessary underpinnings to
establish obviousness.
Once the findings of fact are
articulated, Office personnel must
provide an explanation to support an
obviousness rejection under 35 U.S.C.
103. 35 U.S.C. 132 requires that the
applicant be notified of the reasons for
the rejection of the claim so that he or
she can decide how best to proceed.
Clearly setting forth findings of fact and
the rationale(s) to support a rejection in
an Office action leads to the prompt
20 The Graham factors were reaffirmed and relied
upon by the Supreme Court in its consideration and
determination of obviousness in the fact situation
presented in KSR, 550 U.S. at l, 82 USPQ2d at
1391. The Supreme Court has utilized the Graham
factors in each of its obviousness decisions since
Graham. See Sakraida v. Ag Pro, Inc., 425 U.S. 273,
189 USPQ 449, reh’g denied, 426 U.S. 955 (1976);
Dann v. Johnston, 425 U.S. 219, 189 USPQ 257
(1976); and Anderson’s-Black Rock, Inc. v.
Pavement Salvage Co., 396 U.S. 57, 163 USPQ 673
(1969).
21 KSR, 550 U.S. at l, 82 USPQ2d at 1391.
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resolution of issues pertinent to
patentability.22
In short, the focus when making a
determination of obviousness should be
on what a person of ordinary skill in the
pertinent art would have known at the
time of the invention, and on what such
a person would have reasonably
expected to have been able to do in view
of that knowledge. This is so regardless
of whether the source of that knowledge
and ability was documentary prior art,
general knowledge in the art, or
common sense. What follows is a
discussion of the Graham factual
inquiries.
A. Determining the Scope and Content
of the Prior Art
In determining the scope and content
of the prior art, Office personnel must
first obtain a thorough understanding of
the invention disclosed and claimed in
the application under examination by
reading the specification, including the
claims, to understand what the
applicant has invented.23 The scope of
the claimed invention must be clearly
determined by giving the claims the
‘‘broadest reasonable interpretation
consistent with the specification.’’ 24
Once the scope of the claimed invention
is determined, Office personnel must
then determine what to search for and
where to search.
1. What to search for: The search
should cover the claimed subject matter
and should also cover the disclosed
features which might reasonably be
expected to be claimed.25 Although a
rejection need not be based on a
teaching or suggestion to combine, a
preferred search will be directed to
finding references that provide such a
teaching or suggestion if they exist.
2. Where to search: Office personnel
should continue to follow the general
search guidelines set forth in MPEP
§ 904 to § 904.03 regarding search of the
prior art. Office personnel are reminded
that, for purposes of 35 U.S.C. 103, prior
art can be either in the field of
applicant’s endeavor or be reasonably
pertinent to the particular problem with
which the applicant was concerned.
Furthermore, prior art that is in a field
of endeavor other than that of the
applicant,26 or solves a problem which
22 These guidelines focus on the proper content
of an obviousness rejection, and should not be
construed as dictating any particular format.
23 See MPEP § 904 (8th edition, revision 5, August
2006).
24 See Phillips v. AWH Corp., 415 F.3d 1303,
1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) and
MPEP § 2111.
25 See MPEP § 904.02.
26 As noted by the Court in KSR, ‘‘[w]hen a work
is available in one field of endeavor, design
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is different from that which the
applicant was trying to solve, may also
be considered for the purposes of 35
U.S.C. 103.27
For a discussion of what constitutes
prior art, see MPEP § 901 to § 901.06(d)
and § 2121 to § 2129.
B. Ascertaining the Differences Between
the Claimed Invention and the Prior Art
Ascertaining the differences between
the claimed invention and the prior art
requires interpreting the claim
language,28 and considering both the
invention and the prior art as a whole.29
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C. Resolving the Level of Ordinary Skill
in the Art
Any obviousness rejection should
include, either explicitly or implicitly in
view of the prior art applied, an
indication of the level of ordinary skill.
A finding as to the level of ordinary skill
may be used as a partial basis for a
resolution of the issue of obviousness.
The person of ordinary skill in the art
is a hypothetical person who is
presumed to have known the relevant
art at the time of the invention. Factors
that may be considered in determining
the level of ordinary skill in the art may
include: (1) ‘‘Type of problems
encountered in the art;’’ (2) ‘‘prior art
solutions to those problems;’’ (3)
‘‘rapidity with which innovations are
made;’’ (4) ‘‘sophistication of the
technology;’’ and (5) ‘‘educational level
of active workers in the field. In a given
case, every factor may not be present,
incentives and other market forces can prompt
variations of it, either in the same field or a different
one.’’ (Emphasis added) 550 U.S. at_, 82 USPQ2d
at 1396.
27 The Court in KSR stated that ‘‘[t]he first error
* * * in this case was * * * holding that courts
and patent examiners should look only to the
problem the patentee was trying to solve. The Court
of Appeals failed to recognize that the problem
motivating the patentee may be only one of many
addressed by the patent’s subject matter * * * . The
second error [was] * * * that a person of ordinary
skill attempting to solve a problem will be led only
to those elements of prior art designed to solve the
same problem.’’ 550 U.S. at l, 82 USPQ2d at 1397.
Federal Circuit case law prior to the Supreme
Court’s decision in KSR is generally in accord with
these statements by the KSR Court. See, e.g., In re
Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901
(Fed. Cir. 1990) (en banc) (‘‘[I]t is not necessary in
order to establish a prima facie case of obviousness
that both a structural similarity between a claimed
and prior art compound (or a key component of a
composition) be shown and that there be a
suggestion in or expectation from the prior art that
the claimed compound or composition will have
the same or a similar utility as one newly
discovered by applicant.’’); In re Lintner, 458 F.2d
1013, 1018, 173 USPQ 560, 562 (CCPA 1972) (‘‘The
fact that [applicant] uses sugar for a different
purpose does not alter the conclusion that its use
in a prior art composition would be prima facie
obvious from the purpose disclosed in the
references.’’).
28 See MPEP § 2111.
29 See MPEP § 2141.02.
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and one or more factors may
predominate.’’ 30
‘‘A person of ordinary skill in the art
is also a person of ordinary creativity,
not an automaton.’’ 31 ‘‘[I]n many cases
a person of ordinary skill will be able
to fit the teachings of multiple patents
together like pieces of a puzzle.’’ 32
Office personnel may also take into
account ‘‘the inferences and creative
steps that a person of ordinary skill in
the art would employ.’’ 33
In addition to the factors above, Office
personnel may rely on their own
technical expertise to describe the
knowledge and skills of a person of
ordinary skill in the art.34
III. Rationales To Support Rejections
Under 35 U.S.C. 103
Once the Graham factual inquiries are
resolved, Office personnel must
determine whether the claimed
invention would have been obvious to
one of ordinary skill in the art.
The obviousness analysis cannot be
confined by * * * overemphasis on the
importance of published articles and the
explicit content of issued patents * * * . 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.35
Prior art is not limited just to the
references being applied, but includes
the understanding of one of ordinary
skill in the art. The prior art reference
(or references when combined) need not
teach or suggest all the claim
limitations; however, Office personnel
must explain why the difference(s)
between the prior art and the claimed
invention would have been obvious to
one of ordinary skill in the art. The
‘‘mere existence of differences between
the prior art and an invention does not
establish the invention’s
nonobviousness.’’ 36 The gap between
the prior art and the claimed invention
may not be ‘‘so great as to render the
[claim] nonobvious to one reasonably
skilled in the art.’’ 37 In determining
obviousness, neither the particular
motivation to make the claimed
invention nor the problem the inventor
is solving controls. The proper analysis
is whether the claimed invention would
have been obvious to one of ordinary
skill in the art after consideration of all
the facts.38 Factors other than the
disclosures of the cited prior art may
provide a basis for concluding that it
would have been obvious to one of
ordinary skill in the art to bridge the
gap. The rationales discussed below
outline reasoning that may be applied to
find obviousness in such cases.
If the search of the prior art and the
resolution of the Graham factual
inquiries reveal that an obviousness
rejection may be made using the
familiar teaching-suggestion-motivation
(TSM) rationale, then such a rejection
using the TSM rationale can still be
made. Although the Supreme Court in
KSR cautioned against an overly rigid
application of TSM, it also recognized
that TSM was one of a number of valid
rationales that could be used to
determine obviousness.39 Office
personnel should also consider whether
one or more of the other rationales set
forth below support a conclusion of
obviousness.40 Note that the list of
rationales provided below is not
intended to be an all-inclusive list.
Other rationales to support a conclusion
of obviousness may be relied upon by
Office personnel.
The key to supporting any rejection
under 35 U.S.C. 103 is the clear
articulation of the reason(s) why the
claimed invention would have been
obvious. The Supreme Court in KSR
noted that the analysis supporting a
rejection under 35 U.S.C. 103 should be
made explicit. The Court quoting In re
Kahn 41 stated that ‘‘ ‘[R]ejections on
obviousness cannot be sustained by
37 Id.
38 35
30 In
re GPAC, 57 F.3d 1573, 1579, 35 USPQ2d
1116, 1121 (Fed. Cir. 1995); Custom Accessories,
Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962,
1 USPQ2d 1196, 1201 (Fed. Cir. 1986); Envtl.
Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696,
218 USPQ 865, 868 (Fed. Cir. 1983).
31 KSR, 550 U.S. at l, 82 USPQ2d at 1397.
32 Id.
33 Id. at l, 82 USPQ2d at 1396.
34 The Federal Circuit has stated that examiners
and administrative patent judges on the Board are
‘‘persons of scientific competence in the fields in
which they work’’ and that their findings are
‘‘informed by their scientific knowledge, as to the
meaning of prior art references to persons of
ordinary skill in the art.’’ In re Berg, 320 F.3d 1310,
1315, 65 USPQ2d 2003, 2007 (Fed. Cir. 2003).
35 KSR, 550 U.S. atl, 82 USPQ2d at 1396.
36 Dann v. Johnston, 425 U.S. 219, 230, 189 USPQ
257, 261 (1976).
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U.S.C. 103(a).
to the Supreme Court, establishment
of the TSM approach to the question of obviousness
‘‘captured a helpful insight.’’ 550 U.S. at l, 82
USPQ2d 1385, 1396 (citing In re Bergel, 292 F.2d
955, 956–57, 130 USPQ 206, 207–08 (1961)).
Furthermore, the Court explained that ‘‘[t]here is no
necessary inconsistency between the idea
underlying the TSM test and the Graham analysis.’’
KSR, 550 U.S. at l, 82 USPQ2d at 1396. The
Supreme Court also commented that the Federal
Circuit ‘‘no doubt has applied the test in accord
with these principles [set forth in KSR] in many
cases.’’ Id. at l, 82 USPQ2d at 1396.
40 The Court in KSR identified a number of
rationales to support a conclusion of obviousness
which are consistent with the proper ‘‘functional
approach’’ to the determination of obviousness as
laid down in Graham. Id. at l, 82 USPQ2d at 1395–
97.
41 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed.
Cir. 2006).
39 According
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mere conclusory statements; instead,
there must be some articulated
reasoning with some rational
underpinning to support the legal
conclusion of obviousness.’ ’’ 42
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Rationales
(A) Combining prior art elements
according to known methods to yield
predictable results;
(B) Simple substitution of one known
element for another to obtain
predictable results;
(C) Use of known technique to
improve similar devices (methods, or
products) in the same way;
(D) Applying a known technique to a
known device (method, or product)
ready for improvement to yield
predictable results;
(E) ‘‘Obvious to try’’—choosing from a
finite number of identified, predictable
solutions, with a reasonable expectation
of success;
(F) Known work in one field of
endeavor may prompt variations of it for
use in either the same field or a different
one based on design incentives or other
market forces if the variations would
have been predictable to one of ordinary
skill in the art;
(G) 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.
The subsections below include
discussions of each rationale along with
examples illustrating how the cited
rationales may be used to support a
finding of obviousness. The cases cited
(from which the facts were derived) may
not necessarily stand for the proposition
that the particular rationale is the basis
for the court’s holding of obviousness.
Note that, in some instances, a single
case is used in different subsections to
illustrate the use of more than one
rationale to support a finding of
obviousness. It may often be the case
that, once the Graham inquiries have
been satisfactorily resolved, a
conclusion of obviousness may be
supported by more than one line of
reasoning.
A. Combining Prior Art Elements
According to Known Methods To Yield
Predictable Results
To reject a claim based on this
rationale, Office personnel must resolve
the Graham factual inquiries. Office
personnel must then articulate the
following:
(1) a finding that the prior art included
each element claimed, although not
42 KSR,
550 U.S. at l, 82 USPQ2d at 1396.
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necessarily in a single prior art reference,
with the only difference between the claimed
invention and the prior art being the lack of
actual combination of the elements in a
single prior art reference;
(2) a finding that one of ordinary skill in
the art could have combined the elements as
claimed by known methods, and that in
combination, each element merely would
have performed the same function as it did
separately;
(3) a finding that one of ordinary skill in
the art would have recognized that the results
of the combination were predictable; and
(4) whatever additional findings based on
the Graham factual inquiries may be
necessary, in view of the facts of the case
under consideration, to explain a conclusion
of obviousness.
The rationale to support a conclusion
that the claim would have been obvious
is that all the claimed elements were
known in the prior art and one skilled
in the art could have combined the
elements as claimed by known methods
with no change in their respective
functions, and the combination would
have yielded nothing more than
predictable results to one of ordinary
skill in the art at the time of the
invention.43 ‘‘[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.’’ 44 If any of these
findings cannot be made, then this
rationale cannot be used to support a
conclusion that the claim would have
been obvious to one of ordinary skill in
the art.
Example 1: The claimed invention in
Anderson’s-Black Rock, Inc. v. Pavement
Salvage Co.45 was a paving machine which
combined several well-known elements onto
a single chassis. Standard prior art paving
machines typically combined equipment for
spreading and shaping asphalt onto a single
chassis. The patent claim included the wellknown element of a radiant-heat burner
attached to the side of the paver for the
purpose of preventing cold joints during
continuous strip paving.46 All of the
component parts were known in the prior art.
The only difference was the combination of
the ‘‘old elements’’ into a single device by
mounting them on a single chassis. The Court
found that the operation of the heater was in
no way dependent on the operation of the
other equipment, and that a separate heater
could also be used in conjunction with a
43 Id. at l, 82 USPQ2d at 1395; Sakraida v. AG
Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453
(1976); Anderson’s-Black Rock, Inc. v. Pavement
Salvage Co., 396 U.S. 57, 62–63, 163 USPQ 673, 675
(1969); Great Atl. & Pac. Tea Co. v. Supermarket
Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306
(1950).
44 KSR, 550 U.S. at l, 82 USPQ2d at 1396.
45 396 U.S. 57, 163 USPQ 673 (1969).
46 The prior art used radiant heat for softening the
asphalt to make patches, but did not use radiant
heat burners to achieve continuous strip paving.
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standard paving machine to achieve the same
results. The Court concluded that ‘‘[t]he
convenience of putting the burner together
with the other elements in one machine,
though perhaps a matter of great
convenience, did not produce a ‘new’ or
‘different function’ ’’ 47 and that to those
skilled in the art the use of the old elements
in combination would have been obvious.
Note that combining known prior art
elements is not sufficient to render the
claimed invention obvious if the results
would not have been predictable to one of
ordinary skill in the art.48 ‘‘When the prior
art teaches away from combining certain
known elements, discovery of successful
means of combining them is more likely to
be nonobvious.’’ 49
Example 2: The claimed invention in Ruiz
v. AB Chance Co.50 was directed to a system
which employs a screw anchor for
underpinning existing foundations and a
metal bracket to transfer the building load
onto the screw anchor. The prior art (Fuller)
used screw anchors for underpinning
existing structural foundations. Fuller used a
concrete haunch to transfer the load of the
foundation to the screw anchor. The prior art
(Gregory) used a push pier for underpinning
existing structural foundations. Gregory
taught a method of transferring load using a
bracket, specifically, a metal bracket transfers
the foundation load to the push pier. The
pier is driven into the ground to support the
load. Neither reference showed the two
elements of the claimed invention—screw
anchor and metal bracket—used together.
The court found that ‘‘artisans knew that a
foundation underpinning system requires a
means of connecting the foundation to the
load-bearing member.’’ 51
The nature of the problem to be
solved—underpinning unstable
foundations—as well as the need to
connect the member to the foundation
to accomplish this goal, would have led
one of ordinary skill in the art to choose
an appropriate load bearing member and
a compatible attachment. Therefore, it
would have been obvious to use a metal
bracket (as shown in Gregory) in
combination with the screw anchor (as
47 Id.
at 60, 163 USPQ at 674.
States v. Adams, 383 U.S. 39, 51–52,
148 USPQ 479, 483 (1966). In Adams, the claimed
invention was to a battery with one magnesium
electrode and one cuprous chloride electrode that
could be stored dry and activated by the addition
of plain water or salt water. Although magnesium
and cuprous chloride were individually known
battery components, the Court concluded that the
claimed battery was nonobvious. The Court stated
that ‘‘[d]espite the fact that each of the elements of
the Adams battery was well known in the prior art,
to combine them as did Adams required that a
person reasonably skilled in the prior art must
ignore’’ the teaching away of the prior art that such
batteries were impractical and that water-activated
batteries were successful only when combined with
electrolytes detrimental to the use of magnesium
electrodes. Id. at 42–43, 50–52, 148 USPQ at 480,
483.
49 KSR, 550 U.S. at l, 82 USPQ2d at 1395.
50 357 F.3d 1270, 69 USPQ2d 1686 (Fed. Cir.
2004).
51 Id. at 1276, 69 USPQ2d at 1691.
48 United
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shown in Fuller) to underpin unstable
foundations.
B. Simple Substitution of One Known
Element for Another To Obtain
Predictable Results
To reject a claim based on this
rationale, Office personnel must resolve
the Graham factual inquiries. Office
personnel must then articulate the
following:
(1) a finding that the prior art contained a
device (method, product, etc.) which differed
from the claimed device by the substitution
of some components (step, element, etc.)
with other components;
(2) a finding that the substituted
components and their functions were known
in the art;
(3) a finding that one of ordinary skill in
the art could have substituted one known
element for another, and the results of the
substitution would have been predictable;
and
(4) whatever additional findings based on
the Graham factual inquiries may be
necessary, in view of the facts of the case
under consideration, to explain a conclusion
of obviousness.
rwilkins on PROD1PC63 with NOTICES
The rationale to support a conclusion
that the claim would have been obvious
is that the substitution of one known
element for another would have yielded
predictable results to one of ordinary
skill in the art at the time of the
invention. If any of these findings
cannot be made, then this rationale
cannot be used to support a conclusion
that the claim would have been obvious
to one of ordinary skill in the art.
Example 1: The claimed invention in In re
Fout 52 was directed to a method for
decaffeinating coffee or tea. The prior art
(Pagliaro) method produced a decaffeinated
vegetable material and trapped the caffeine in
a fatty material (such as oil). The caffeine was
then removed from the fatty material by an
aqueous extraction process. Applicant (Fout)
substituted an evaporative distillation step
for the aqueous extraction step. The prior art
(Waterman) suspended coffee in oil and then
directly distilled the caffeine through the oil.
The court found that ‘‘[b]ecause both Pagliaro
and Waterman teach a method for separating
caffeine from oil, it would have been prima
facie obvious to substitute one method for
the other. Express suggestion to substitute
one equivalent for another need not be
present to render such substitution
obvious.’’ 53
Example 2: The invention in In re
O’Farrell 54 was directed to a method for
synthesizing a protein in a transformed
bacterial host species by substituting a
heterologous gene for a gene native to the
host species. Generally speaking, protein
synthesis in vivo follows the path of DNA to
RNA to protein. Although the prior art
Polisky article (authored by two of the three
inventors of the application) had explicitly
suggested employing the method described
for protein synthesis, the inserted
heterologous gene exemplified in the article
was one that normally did not proceed all the
way to the protein production step, but
instead terminated with the RNA. A second
reference to Bahl had described a general
method of inserting chemically synthesized
DNA into a plasmid. Thus, it would have
been obvious to one of ordinary skill in the
art to replace the prior art gene with another
gene known to lead to protein production,
because one of ordinary skill in the art would
have been able to carry out such a
substitution, and the results were reasonably
predictable.
In response to applicant’s argument
that there had been significant
unpredictability in the field of
molecular biology at the time of the
invention, the court stated that the level
of skill was quite high and that the
teachings of Polisky, even taken alone,
contained detailed enabling
methodology and included the
suggestion that the modification would
be successful for synthesis of proteins.
This is not a situation where the
rejection is a statement that it would
have been ‘‘obvious to try’’ without
more. Here there was a reasonable
expectation of success. ‘‘Obviousness
does not require absolute predictability
of success.’’ 55
Example 3: The fact pattern in Ruiz v. AB
Chance Co.56 is set forth above in Example
2 in subsection III.A.
The prior art showed differing loadbearing members and differing means of
attaching the foundation to the member.
Therefore, it would have been obvious
to one of ordinary skill in the art to
substitute the metal bracket taught in
Gregory for Fuller’s concrete haunch for
the predictable result of transferring the
load.
Example 4: The claimed invention in Ex
parte Smith 57 was a pocket insert for a
bound book made by gluing a base sheet and
a pocket sheet of paper together to form a
continuous two-ply seam defining a closed
pocket. The prior art (Wyant) disclosed at
least one pocket formed by folding a single
sheet and securing the folder portions along
the inside margins using any convenient
bonding method. The prior art (Wyant) did
not disclose bonding the sheets to form a
continuous two-ply seam. The prior art
(Dick) disclosed a pocket that is made by
stitching or otherwise securing two sheets
along three of its four edges to define a closed
pocket with an opening along its fourth edge.
In considering the teachings of Wyant
and Dick, the Board ‘‘found that (1) each
of the claimed elements is found within
55 Id.
52 675
F.2d 297, 213 USPQ 532 (CCPA 1982).
53 Id. at 301, 213 USPQ at 536.
54 853 F.2d 894, 7 USPQ2d 1673 (Fed. Cir. 1988).
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at 903, 7 USPQ2d at 1681.
F.3d 1270, 69 USPQ2d 1686 (Fed. Cir.
56 357
2004).
57 83 USPQ2d 1509 (Bd. Pat. App. & Int. 2007).
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the scope and content of the prior art;
(2) one of ordinary skill in the art could
have combined the elements as claimed
by methods known at the time the
invention was made; and (3) one of
ordinary skill in the art would have
recognized at the time the invention was
made that the capabilities or functions
of the combination were predictable.’’
Citing KSR, the Board concluded that
‘‘[t]he substitution of the continuous,
two-ply seam of Dick for the folded
seam of Wyant thus is no more than ‘the
simple substitution of one known
element for another or the mere
application of a known technique to a
piece of prior art ready for
improvement.’ ’’
C. Use of Known Technique To Improve
Similar Devices (Methods, or Products)
in the Same Way
To reject a claim based on this
rationale, Office personnel must resolve
the Graham factual inquiries. Office
personnel must then articulate the
following:
(1) a finding that the prior art contained a
‘‘base’’ device (method, or product) upon
which the claimed invention can be seen as
an ‘‘improvement;’’
(2) a finding that the prior art contained a
‘‘comparable’’ device (method, or product
that is not the same as the base device) that
was improved in the same way as the
claimed invention;
(3) a finding that one of ordinary skill in
the art could have applied the known
‘‘improvement’’ technique in the same way to
the ‘‘base’’ device (method, or product) and
the results would have been predictable to
one of ordinary skill in the art; and
(4) whatever additional findings based on
the Graham factual inquiries may be
necessary, in view of the facts of the case
under consideration, to explain a conclusion
of obviousness.
The rationale to support a conclusion
that the claim would have been obvious
is that a method of enhancing a
particular class of devices (methods, or
products) was made part of the ordinary
capabilities of one skilled in the art
based upon the teaching of such
improvement in other situations. One of
ordinary skill in the art would have
been capable of applying this known
method of enhancement to a ‘‘base’’
device (method, or product) in the prior
art and the results would have been
predictable to one of ordinary skill in
the art. The Supreme Court in KSR
noted that if the actual application of
the technique would have been beyond
the skill of one of ordinary skill in the
art, then using the technique would not
have been obvious.58 If any of these
findings cannot be made, then this
58 KSR,
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rationale cannot be used to support a
conclusion that the claim would have
been obvious to one of ordinary skill in
the art.
Example 1: The claimed invention in In re
Nilssen 59 was directed to a ‘‘means by which
the self-oscillating inverter in a power-lineoperated inverter-type fluorescent lamp
ballast is disabled in case the output current
from the inverter exceeds some preestablished threshold level for more than a
very brief period.’’ 60 That is, the current
output was monitored, and if the current
output exceeded some threshold for a
specified short time, an actuation signal was
sent and the inverter was disabled to protect
it from damage.
The prior art (a USSR certificate)
described a device for protecting an
inverter circuit in an undisclosed
manner via a control means. The device
indicated the high-load condition by
way of the control means, but did not
indicate the specific manner of overload
protection. The prior art (Kammiller)
disclosed disabling the inverter in the
event of a high-load current condition in
order to protect the inverter circuit. That
is, the overload protection was achieved
by disabling the inverter by means of a
cutoff switch.
The court found ‘‘it would have been
obvious to one of ordinary skill in the
art to use the threshold signal produced
in the USSR device to actuate a cutoff
switch to render the inverter inoperative
as taught by Kammiller.’’ 61 That is,
using the known technique of a cutoff
switch for protecting a circuit to provide
the protection desired in the inverter
circuit of the USSR document would
have been obvious to one of ordinary
skill.
Example 2: The fact pattern in Ruiz v. AB
Chance Co.62 is set forth above in Example
2 in subsection III.A.
The nature of the problem to be
solved may lead inventors to look at
references relating to possible solutions
to that problem.63 Therefore, it would
have been obvious to use a metal
bracket (as shown in Gregory) with the
screw anchor (as shown in Fuller) to
underpin unstable foundations.
D. Applying a Known Technique to a
Known Device (Method, or Product)
Ready for Improvement To Yield
Predictable Results
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To reject a claim based on this
rationale, Office personnel must resolve
the Graham factual inquiries. Office
59 851
F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988).
at 1402, 7 USPQ2d at 1501.
61 Id. at 1403, 7 USPQ2d at 1502.
62 357 F.3d 1270, 69 USPQ2d 1686 (Fed. Cir.
2004).
63 Id. at 1277, 69 USPQ2d at 1691.
60 Id.
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personnel must then articulate the
following:
(1) a finding that the prior art contained a
‘‘base’’ device (method, or product) upon
which the claimed invention can be seen as
an ‘‘improvement;’’
(2) a finding that the prior art contained a
known technique that is applicable to the
base device (method, or product);
(3) a finding that one of ordinary skill in
the art would have recognized that applying
the known technique would have yielded
predictable results and resulted in an
improved system; and
(4) whatever additional findings based on
the Graham factual inquiries may be
necessary, in view of the facts of the case
under consideration, to explain a conclusion
of obviousness.
The rationale to support a conclusion
that the claim would have been obvious
is that a particular known technique
was recognized as part of the ordinary
capabilities of one skilled in the art. One
of ordinary skill in the art would have
been capable of applying this known
technique to a known device (method,
or product) that was ready for
improvement and the results would
have been predictable to one of ordinary
skill in the art. If any of these findings
cannot be made, then this rationale
cannot be used to support a conclusion
that the claim would have been obvious
to one of ordinary skill in the art.
Example 1: The claimed invention in Dann
v. Johnston 64 was directed towards a system
(i.e., computer) for automatic record keeping
of bank checks and deposits. In this system,
a customer would put a numerical category
code on each check or deposit slip. The
check processing system would record these
on the check in magnetic ink, just as it did
for amount and account information. With
this system in place, the bank can provide
statements to customers that are broken
down to give subtotals for each category. The
claimed system also allowed the bank to
print reports according to a style requested
by the customer. As characterized by the
Court, ‘‘[u]nder respondent’s invention, then,
a general purpose computer is programmed
to provide bank customers with an
individualized and categorized breakdown of
their transactions during the period in
question.’’65
Base System—The nature of the
current use of data processing
equipment and computer software in
the banking industry was that banks
routinely did much of the record
keeping automatically. In routine check
processing, the system read any
magnetic ink characters identifying the
account and routing. The system also
read the amount of the check and then
printed that value in a designated area
of the check. The check was then sent
PO 00000
U.S. 219, 189 USPQ 257 (1976).
at 222, 189 USPQ at 259.
through a further data processing step
which used the magnetic ink
information to generate the appropriate
records for transactions and for posting
to the appropriate accounts. These
systems included generating periodic
statements for each account, such as the
monthly statement sent to checking
account customers.
Improved System—The claimed
invention supplemented this system by
recording a category code which can
then be utilized to track expenditures by
category. Again, the category code will
be a number recorded on the check (or
deposit slip) which will be read,
converted into a magnetic ink imprint,
and then processed in the data system
to include the category code. This
enabled reporting of data by category as
opposed to only allowing reporting by
account number.
Known Technique—This is an
application of a technique from the
prior art—the use of account numbers
(generally used to track an individual’s
total transactions) to solve the problem
of how to track categories of
expenditures to more finely account for
a budget. That is, account numbers
(identifying data capable of processing
in the automatic data processing system)
were used to distinguish between
different customers. Furthermore, banks
have long segregated debits attributable
to service charges within any given
separate account and have rendered
their customers subtotals for those
charges. Previously, one would have
needed to set up separate accounts for
each category and thus receive separate
reports. Supplementing the account
information with additional digits (the
category codes) solved the problem by
effectively creating a single account that
can be treated as distinct accounts for
tracking and reporting services. That is,
the category code merely allowed what
might previously have been separate
accounts to be handled as a single
account, but with a number of subaccounts indicated in the report.
The basic technique of putting indicia
on data which then enabled standard
sorting, searching, and reporting would
have yielded no more than the
predictable outcome which one of
ordinary skill would have expected to
achieve with this common tool of the
trade and was therefore an obvious
expedient. The Court held that ‘‘[t]he
gap between the prior art and
respondent’s system is simply not so
great as to render the system
nonobvious to one reasonably skilled in
the art.’’ 66
64 425
65 Id.
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66 Id.
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Example 2: The fact pattern in In re
Nilssen 67 is set forth above in Example 1 in
subsection III.C.
The court found ‘‘it would have been
obvious to one of ordinary skill in the
art to use the threshold signal produced
in the USSR device to actuate a cutoff
switch to render the inverter inoperative
as taught by Kammiller.’’ 68 The known
technique of using a cutoff switch
would have predictably resulted in
protecting the inverter circuit.
Therefore, it would have been within
the skill of the ordinary artisan to use
a cutoff switch in response to the
actuation signal to protect the inverter.
E. ‘‘Obvious To Try’’—Choosing From a
Finite Number of Identified, Predictable
Solutions, With a Reasonable
Expectation of Success
To reject a claim based on this
rationale, Office personnel must resolve
the Graham factual inquiries. Office
personnel must then articulate the
following:
(1) a finding that at the time of the
invention, there had been a recognized
problem or need in the art, which may
include a design need or market pressure to
solve a problem;
(2) a finding that there had been a finite
number of identified, predictable potential
solutions to the recognized need or problem;
(3) a finding that one of ordinary skill in
the art could have pursued the known
potential solutions with a reasonable
expectation of success; and
(4) whatever additional findings based on
the Graham factual inquiries may be
necessary, in view of the facts of the case
under consideration, to explain a conclusion
of obviousness.
rwilkins on PROD1PC63 with NOTICES
The rationale to support a conclusion
that the claim would have been obvious
is that ‘‘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.’’ 69 If any of these findings cannot
be made, then this rationale cannot be
used to support a conclusion that the
claim would have been obvious to one
of ordinary skill in the art.
Example 1: The claimed invention in
Pfizer, Inc. v. Apotex, Inc.70 was directed to
the amlodipine besylate drug product, which
is commercially sold in tablet form in the
United States under the trademark Norvasc.
67 851
F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988).
at 1403, 7 USPQ2d at 1502.
69 KSR, 550 U.S. at l, 82 USPQ2d at 1397.
70 480 F.3d 1348, 82 USPQ2d 1321 (Fed. Cir.
2007).
68 Id.
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At the time of the invention, amlodipine was
known as was the use of besylate anions.
Amlodipine was known to have the same
therapeutic properties as were being claimed
for the amlodipine besylate but Pfizer
discovered that the besylate form had better
manufacturing properties (e.g., reduced
‘‘stickiness’’).
Pfizer argued that the results of
forming amlodipine besylate would
have been unpredictable, and therefore
were nonobvious. The court rejected the
notion that unpredictability could be
equated with nonobviousness here,
because there were only a finite number
(53) of pharmaceutically acceptable salts
to be tested for improved properties.
The court found that one of ordinary
skill in the art having problems with the
machinability of amlodipine would
have looked to forming a salt of the
compound and would have been able to
narrow the group of potential saltformers to a group of 53 anions known
to form pharmaceutically acceptable
salts, which would be an acceptable
number to form ‘‘a reasonable
expectation of success.’’
Example 2: The claimed invention in Alza
Corp. v. Mylan Laboratories, Inc.71 was
drawn to sustained-release formulations of
the drug oxybutynin in which the drug is
released at a specified rate over a 24-hour
period. Oxybutynin was known to be highly
water-soluble, and the specification had
pointed out that development of sustainedrelease formulations of such drugs presented
particular problems.
A prior art patent to Morella had
taught sustained-release compositions of
highly water-soluble drugs, as
exemplified by a sustained-release
formulation of morphine. Morella had
also identified oxybutynin as belonging
to the class of highly water-soluble
drugs. The Baichwal prior art patent had
taught a sustained-release formulation
of oxybutynin that had a different
release rate than the claimed invention.
Finally, the Wong prior art patent had
taught a generally applicable method for
delivery of drugs over a 24-hour period.
Although Wong mentioned applicability
of the disclosed method to several
categories of drugs to which oxybutynin
belonged, Wong did not specifically
mention its applicability to oxybutynin.
The court found that because the
absorption properties of oxybutynin
would have been reasonably predictable
at the time of the invention, there would
have been a reasonable expectation of
successful development of a sustainedrelease formulation of oxybutynin as
claimed. The prior art, as evidenced by
the specification, had recognized the
obstacles to be overcome in
71 464 F.3d 1286, 80 USPQ2d 1001 (Fed. Cir.
2006).
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development of sustained-release
formulations of highly water-soluble
drugs, and had suggested a finite
number of ways to overcome these
obstacles. The claims were obvious
because it would have been obvious to
try the known methods for formulating
sustained-release compositions, with a
reasonable expectation of success. The
court was not swayed by arguments of
a lack of absolute predictability.
Example 3: The claimed invention in Ex
parte Kubin 72 was an isolated nucleic acid
molecule. The claim stated that the nucleic
acid encoded a particular polypeptide. The
encoded polypeptide was identified in the
claim by its partially specified sequence, and
by its ability to bind to a specified protein.
A prior art patent to Valiante taught
the polypeptide encoded by the claimed
nucleic acid, but did not disclose either
the sequence of the polypeptide, or the
claimed isolated nucleic acid molecule.
However, Valiante did disclose that by
employing conventional methods, such
as those disclosed by a prior art
laboratory manual by Sambrook, the
sequence of the polypeptide could be
determined, and the nucleic acid
molecule could be isolated. In view of
Valiante’s disclosure of the polypeptide,
and of routine prior art methods for
sequencing the polypeptide and
isolating the nucleic acid molecule, the
Board found that a person of ordinary
skill in the art would have had a
reasonable expectation that a nucleic
acid molecule within the claimed scope
could have been successfully obtained.
Relying on In re Deuel, Appellant
argued that it was improper for the
Office to use the polypeptide of the
Valiante patent together with the
methods described in Sambrook to
reject a claim drawn to a specific
nucleic acid molecule without
providing a reference showing or
suggesting a structurally similar nucleic
acid molecule. Citing KSR, the Board
stated that ‘‘when there is motivation 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 anticipated
success, it is likely the product not of
innovation but of ordinary skill and
common sense.’’ The Board noted that
the problem facing those in the art was
to isolate a specific nucleic acid, and
there were a limited number of methods
available to do so. The Board concluded
that the skilled artisan would have had
reason to try these methods with the
reasonable expectation that at least one
would be successful. Thus, isolating the
72 83
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specific nucleic acid molecule claimed
was ‘‘the product not of innovation but
of ordinary skill and common sense.’’
F. Known Work in One Field of
Endeavor May Prompt Variations of it
for Use in Either the Same Field or a
Different One Based on Design
Incentives or Other Market Forces if The
Variations Would Have Been
Predictable to One of Ordinary Skill in
the Art
To reject a claim based on this
rationale, Office personnel must resolve
the Graham factual inquiries. Office
personnel must then articulate the
following:
(1) a finding that the scope and content of
the prior art, whether in the same field of
endeavor as that of the applicant’s invention
or a different field of endeavor, included a
similar or analogous device (method, or
product);
(2) a finding that there were design
incentives or market forces which would
have prompted adaptation of the known
device (method, or product);
(3) a finding that the differences between
the claimed invention and the prior art were
encompassed in known variations or in a
principle known in the prior art;
(4) a finding that one of ordinary skill in
the art, in view of the identified design
incentives or other market forces, could have
implemented the claimed variation of the
prior art, and the claimed variation would
have been predictable to one of ordinary skill
in the art; and
(5) whatever additional findings based on
the Graham factual inquiries may be
necessary, in view of the facts of the case
under consideration, to explain a conclusion
of obviousness.
The rationale to support a conclusion
that the claimed invention would have
been obvious is that design incentives or
other market forces could have
prompted one of ordinary skill in the art
to vary the prior art in a predictable
manner to result in the claimed
invention. If any of these findings
cannot be made, then this rationale
cannot be used to support a conclusion
that the claim would have been obvious
to one of ordinary skill in the art.
rwilkins on PROD1PC63 with NOTICES
Example 1: The fact pattern in Dann v.
Johnston 73 is set forth above in Example 1 in
subsection III.D.
The court found that the problem
addressed by applicant—the need to
give more detailed breakdown by a
category of transactions—was closely
analogous to the task of keeping track of
the transaction files of individual
business units.74 Thus, an artisan in the
data processing area would have
recognized the similar class of problem
and the known solutions of the prior art
and it would have been well within the
ordinary skill level to implement the
system in the different environment.
The court held that ‘‘[t]he gap between
the prior art and respondent’s system is
simply not so great as to render the
system nonobvious to one reasonably
skilled in the art.’’ 75
Example 2: The claimed invention in
Leapfrog Enterprises, Inc. v. Fisher-Price,
Inc.76 was directed to a learning device to
help young children read phonetically.
The claim read as follows:
An interactive learning device,
comprising:
a housing including a plurality of switches;
a sound production device in communication
with the switches and including a
processor and a memory;
at least one depiction of a sequence of letters,
each letter being associable with a switch;
and
a reader configured to communicate the
identity of the depiction to the processor,
wherein selection of a depicted letter
activates an associated switch to
communicate with the processor, causing
the sound production device to generate a
signal corresponding to a sound associated
with the selected letter, the sound being
determined by a position of the letter in the
sequence of letter.
The court concluded that the claimed
invention would have been obvious in
view of the combination of two pieces
of prior art, (1) Bevan (which showed an
electro-mechanical toy for phonetic
learning), (2) the Super Speak & Read
device (SSR) (an electronic reading toy),
and the knowledge of one of ordinary
skill in the art.
The court made clear that there was
no technological advance beyond the
skill shown in the SSR device. The
court stated that ‘‘one of ordinary skill
in the art of children’s learning toys
would have found it obvious to combine
the Bevan device with the SSR to
update it using modern electronic
components in order to gain the
commonly understood benefits of such
adaptation, such as decreased size,
increased reliability, simplified
operation, and reduced cost. While the
SSR only permits generation of a sound
corresponding to the first letter of a
word, it does so using electronic means.
The combination is thus the adaptation
of an old idea or invention (Bevan)
using newer technology that is
commonly available and understood in
the art (the SSR).’’
The court found that the claimed
invention was but a variation on already
known children’s toys. This variation
75 Id.
73 425
U.S. 219, 189 USPQ 257 (1976).
74 Id. at 229, 189 USPQ at 261.
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F.3d 1157, 82 USPQ2d 1687 (Fed. Cir.
presented no nonobvious advance over
other toys. The court made clear that
there was no technological advance
beyond the skill shown in the SSR
device. The court found that
‘‘[a]ccomodating a prior art mechanical
device that accomplishes that goal to
modern electronics would have been
reasonably obvious to one of ordinary
skill in designing children’s learning
devices. Applying modern electronics to
older mechanical devices has been
commonplace in recent years.’’
Example 3: The claimed invention in KSR
International Co. v. Teleflex Inc.77 was an
adjustable pedal assembly with a fixed pivot
point and an electronic pedal-position sensor
attached to the assembly support. The fixed
pivot point meant that the pivot was not
changed as the pedal was adjusted. The
placement of the sensor on the assembly
support kept the sensor fixed while the pedal
was adjusted.
Conventional gas pedals operated by
a mechanical link which adjusted the
throttle based on the travel of the pedal
from a set position. The throttle
controlled the combustion process and
the available power generated by the
engine. Newer cars used computer
controlled throttles in which a sensor
detected the motion of the pedal and
sent signals to the engine to adjust the
throttle accordingly. At the time of the
invention, the marketplace provided a
strong incentive to convert mechanical
pedals to electronic pedals, and the
prior art taught a number of methods for
doing so. The prior art (Asano) taught an
adjustable pedal with a fixed pivot point
with mechanical throttle control. The
prior art (’936 patent to Byler) taught an
electronic pedal sensor which was
placed on a pivot point in the pedal
assembly and that it was preferable to
detect the pedal’s position in the pedal
mechanism rather than in the engine.
The prior art (Smith) taught that to
prevent the wires connecting the sensor
to the computer from chafing and
wearing out, the sensor should be put
on a fixed part of the pedal assembly
rather than in or on the pedal’s footpad.
The prior art (Rixon) taught an
adjustable pedal assembly (sensor in the
footpad) with an electronic sensor for
throttle control. There was no prior art
electronic throttle control that was
combined with a pedal assembly which
kept the pivot point fixed when
adjusting the pedal.
The Court stated that ‘‘[t]he proper
question to have asked was whether a
pedal designer of ordinary skill, facing
the wide range of needs created by
developments in the field of endeavor,
would have seen a benefit to upgrading
76 485
77 550
2007).
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Asano with a sensor.’’ 78 The Court
found that technological developments
in the automotive design would have
prompted a designer to upgrade Asano
with an electronic sensor. The next
question was where to attach the sensor.
Based on the prior art, a designer would
have known to place the sensor on a
nonmoving part of the pedal structure
and the most obvious nonmoving point
on the structure from which a sensor
can easily detect the pedal’s position
was a pivot point. The Court concluded
that it would have been obvious to
upgrade Asano’s fixed pivot point
adjustable pedal by replacing the
mechanical assembly for throttle control
with an electronic throttle control and
to mount the electronic sensor on the
pedal support structure.
rwilkins on PROD1PC63 with NOTICES
Example 4: The claimed invention in Ex
parte Catan 79 was a consumer electronics
device using bioauthentication to authorize
sub-users of an authorized credit account to
place orders over a communication network
up to a pre-set maximum sub-credit limit.
The prior art (Nakano) disclosed a
consumer electronics device like the claimed
invention, except that security was provided
by a password authentication device rather
than a bioauthentication device. The prior art
(Harada) disclosed that the use of a
bioauthentication device (fingerprint sensor)
on a consumer electronics device (remote
control) to provide bioauthentication
information (fingerprint) was known in the
prior art at the time of the invention. The
prior art (Dethloff) also disclosed that it was
known in the art at the time of the invention
to substitute bioauthentication for PIN
authentication to enable a user to access
credit via a consumer electronics device.
The Board found that the prior art ‘‘shows
that one of ordinary skill in the consumer
electronic device art at the time of the
invention would have been familiar with
using bioauthentication information
interchangeably with or in lieu of PINs to
authenticate users.’’ The Board concluded
that one of ordinary skill in the art of
consumer electronic devices would have
found it obvious to update the prior art
password device with the modern
bioauthentication component and thereby
gain, predictably, the commonly understood
benefits of such adaptation, that is, a secure
and reliable authentication procedure.
G. 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
To reject a claim based on this
rationale, Office personnel must resolve
the Graham factual inquiries. Office
personnel must then articulate the
following:
78 Id.
79 83
atl, 82 USPQ2d at 1399.
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(1) a finding that there was some teaching,
suggestion, or motivation, either in the
references themselves or in the knowledge
generally available to one of ordinary skill in
the art, to modify the reference or to combine
reference teachings;
(2) a finding that there was reasonable
expectation of success; and
(3) whatever additional findings based on
the Graham factual inquiries may be
necessary, in view of the facts of the case
under consideration, to explain a conclusion
of obviousness.
The rationale to support a conclusion
that the claim would have been obvious
is that ‘‘a person of ordinary skill in the
art would have been motivated to
combine the prior art to achieve the
claimed invention and that there would
have been a reasonable expectation of
success.’’ 80 If any of these findings
cannot be made, then this rationale
cannot be used to support a conclusion
that the claim would have been obvious
to one of ordinary skill in the art.
The courts have made clear that the
teaching, suggestion, or motivation test
is flexible and an explicit suggestion to
combine the prior art is not necessary.
The motivation to combine may be
implicit and may be found in the
knowledge of one of ordinary skill in
the art, or, in some cases, from the
nature of the problem to be solved.81
‘‘[A]n implicit motivation to combine
exists not only when a suggestion may
be gleaned from the prior art as a whole,
but when the ‘improvement’ is
technology-independent and the
combination of references results in a
product or process that is more
desirable, for example because it is
stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient.
Because the desire to enhance
commercial opportunities by improving
a product or process is universal—and
even common-sensical—we have held
that there exists in these situations a
motivation to combine prior art
references even absent any hint of
suggestion in the references themselves.
In such situations, the proper question
is whether the ordinary artisan
possesses knowledge and skills
rendering him capable of combining the
prior art references.’’ 82
IV. Applicant’s Reply
Once Office personnel have
established the Graham factual findings
and concluded that the claimed
invention would have been obvious, the
burden then shifts to the applicant to (1)
80 DyStar Textilfarben GmbH & Co. Deutschland
KG v. C.H. Patrick Co., 464 F.3d 1356, 1360, 80
USPQ2d 1641, 1645 (Fed. Cir. 2006).
81 Id. at 1366, 80 USPQ2d at 1649.
82 Id. at 1368, 80 USPQ2d at 1651.
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show that the Office erred in these
findings, or (2) provide other evidence
to show that the claimed subject matter
would have been nonobvious. 37 CFR
1.111(b) requires applicant to distinctly
and specifically point out the supposed
errors in the Office’s action and reply to
every ground of objection and rejection
in the Office action. The reply must
present arguments pointing out the
specific distinction believed to render
the claims patentable over any applied
references.
If an applicant disagrees with any
factual findings by the Office, an
effective traverse of a rejection based
wholly or partially on such findings
must include a reasoned statement
explaining why the applicant believes
the Office has erred substantively as to
the factual findings. A mere statement
or argument that the Office has not
established a prima facie case of
obviousness or that the Office’s reliance
on common knowledge is unsupported
by documentary evidence will not be
considered substantively adequate to
rebut the rejection or an effective
traverse of the rejection under 37 CFR
1.111(b). Office personnel addressing
this situation may repeat the rejection
made in the prior Office action and
make the next Office action final. See
MPEP § 706.07(a).
V. Consideration of Applicant’s
Rebuttal Evidence
Office personnel should consider all
rebuttal evidence that is timely
presented by the applicants when
reevaluating any obviousness
determination. Rebuttal evidence may
include evidence of ‘‘secondary
considerations,’’ such as ‘‘commercial
success, long felt but unsolved needs,
[and] failure of others’’83, and may also
include evidence of unexpected results.
As set forth in section III. above, Office
personnel must articulate findings of
fact that support the rationale relied
upon in an obviousness rejection. As a
result, applicants are likely to submit
evidence to rebut the fact finding made
by Office personnel. For example, in the
case of a claim to a combination,
applicants may submit evidence or
argument to demonstrate that:
(1) one of ordinary skill in the art could not
have combined the claimed elements by
known methods (e.g., due to technological
difficulties);
(2) the elements in combination do not
merely perform the function that each
element performs separately; or
(3) the results of the claimed combination
were unexpected.
83 Graham v. John Deere Co., 383 U.S. at 17, 148
USPQ at 467.
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Once the applicant has presented
rebuttal evidence, Office personnel
should reconsider any initial
obviousness determination in view of
the entire record.84 All the rejections of
record and proposed rejections and their
bases should be reviewed to confirm
their continued viability. The Office
action should clearly communicate the
Office’s findings and conclusions,
articulating how the conclusions are
supported by the findings. The
procedures set forth in MPEP § 706.07(a)
are to be followed in determining
whether an action may be made final.
See MPEP § 2145 concerning
consideration of applicant’s rebuttal
evidence. See also MPEP § 716 to
rwilkins on PROD1PC63 with NOTICES
84 See, e.g., In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); In re Eli Lilly
& Co., 90 F.2d 943, 945, 14 USPQ2d 1741, 1743
(Fed. Cir. 1990).
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§ 716.10 regarding affidavits or
declarations filed under 37 CFR 1.132
for purposes of traversing grounds of
rejection.
Dated: October 3, 2007.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. E7–19973 Filed 10–9–07; 8:45 am]
BILLING CODE 3510–16–P
DEPARTMENT OF DEFENSE
Office of the Secretary
[Transmittal Nos. 08–09]
36(b)(1) Arms Sales Notification
Department of Defense, Defense
Security Cooperation Agency.
AGENCY:
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ACTION:
57535
Notice.
SUMMARY: The Department of Defense is
publishing the unclassified text of a
section 36(b)(1) arms sales notification.
This is published to fulfill the
requirements of section 155 of Public
Law 104–164 dated 21 July 1996.
FOR FURTHER INFORMATION CONTACT: Ms.
B. English, DSCA/DBO/CFM, (703) 601–
3740.
The following is a copy of a letter to
the Speaker of the House of
Representatives, Transmittals 08–09
with attached transmittal, policy
justification, and Sensitivity of
Technology.
Dated: October 3, 2007.
L.M. Bynum,
OSD Federal Register Liaison Officer,
Department of Defense.
BILLING CODE 5001–06–M
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]]>Agencies
[Federal Register Volume 72, Number 195 (Wednesday, October 10, 2007)]
[Notices]
[Pages 57526-57535]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E7-19973]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No.: PTO-P-2007-0031]
Examination Guidelines for Determining Obviousness Under 35
U.S.C. 103 in View of the Supreme Court Decision in KSR International
Co. v. Teleflex Inc.
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: The United States Patent and Trademark Office (USPTO) is
publishing examination guidelines for determining obviousness under 35
U.S.C. 103 in view of the Supreme Court decision in KSR International
Co. v. Teleflex Inc. These guidelines will assist USPTO personnel to
make a proper determination of obviousness under 35 U.S.C. 103 and to
provide an appropriate supporting rationale.
DATES: These guidelines are effective October 10, 2007.
FOR FURTHER INFORMATION CONTACT: Contact either Kathleen Kahler Fonda,
Legal Advisor (telephone (571) 272-7754; e-mail
kathleen.fonda@uspto.gov) or Pinchus M. Laufer, Patent Examination
Policy Analyst (telephone (571) 272-7726; e-mail
pinchus.laufer@uspto.gov), of the Office of the Deputy Commissioner for
Patent Examination Policy. Alternatively, mail may be addressed to Ms.
Fonda or Mr. Laufer at Commissioner for Patents, attn: KSR, P.O. Box
1450, Alexandria, VA 22313-1450.
SUPPLEMENTARY INFORMATION: These guidelines are intended to assist
Office personnel to make a proper determination of obviousness under 35
U.S.C. 103, and to provide an appropriate supporting rationale in view
of the recent decision by the Supreme Court in KSR International Co. v.
Teleflex Inc. (KSR).\1\ The guidelines are based on the Office's
current understanding of the law, and are believed to be fully
consistent with the binding precedent of the Supreme Court.\2\
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\1\ 550 U.S. --, 82 USPQ2d 1385 (2007).
\2\ Further developments in the law of obviousness are to be
expected in view of KSR. Thus, it is not clear which Federal Circuit
decisions will retain their viability.
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These guidelines do not constitute substantive rule making and
hence do not have the force and effect of law. They have been developed
as a matter of internal Office management and are not intended to
create any right or benefit, substantive or procedural, enforceable by
any party against the Office. Rejections will continue to be based upon
the substantive law, and it is these rejections that are appealable.
Consequently, any failure by Office personnel to follow the guidelines
is neither appealable nor petitionable.
To the extent that earlier guidance from the Office, including
certain sections of the current Manual of Patent Examining Procedure
(MPEP), is inconsistent with the guidance set forth herein, Office
personnel are to follow these guidelines. The next revision of the MPEP
will be updated accordingly.
I. The KSR Decision and Principles of the Law of Obviousness
Teleflex owned a patent claiming technology useful in the gas pedal
of a car. The invention at issue in KSR was a pedal assembly that could
be adjusted to accommodate drivers of different statures. The
electronic pedal-position sensor was positioned on the support for the
pedal assembly, and the pivot point of the pedal remained fixed
regardless of how the pedal assembly was adjusted. This combination of
the fixed pivot point for the adjustable pedal and the fixed sensor
position on the support resulted in a simpler, lighter, and more
compact design.
Teleflex sued KSR for infringement. The district court cited
references that separately taught adjustable pedals and sensors, and
found on summary judgment that Teleflex's patent was invalid for
obviousness. On appeal, the Federal Circuit vacated the district
court's decision, and remanded the case. The Federal Circuit stated
that ``the district court's analysis applied an incomplete teaching-
suggestion-motivation test'' in arriving at the finding of
obviousness.\3\
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\3\ Teleflex Inc. v. KSR Int'l Co., 119 Fed. Appx. 282, 288
(Fed. Cir. 2005).
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Upon KSR's petition for review of the Federal Circuit's decision,
the Supreme Court reversed, concluding that the district court had
correctly determined that the patent was invalid for obviousness. The
Supreme Court reaffirmed the familiar framework for determining
obviousness as set forth in Graham v. John Deere Co., but stated that
the Federal Circuit had erred by applying the teaching-suggestion-
motivation (TSM) test in an overly rigid and formalistic way.\4\
Specifically, the Supreme Court stated that the Federal Circuit had
erred in four ways: (1) ``By holding that courts and patent examiners
should look only to the problem the patentee was trying to solve;'' \5\
(2) by assuming ``that a person of ordinary skill attempting to solve a
problem will be led only to those elements of prior art designed to
solve the same problem;'' \6\ (3) by concluding ``that a patent claim
cannot be proved obvious merely by showing that the combination of
elements was `obvious to try;' '' \7\ and (4) by overemphasizing ``the
risk of courts and patent examiners falling prey to hindsight bias''
and as a result applying ``[r]igid preventative rules that deny
factfinders recourse to common sense.'' \8\
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\4\ KSR, 550 U.S. at --, 82 USPQ2d at 1391.
\5\ Id. at --, 82 USPQ2d at 1397.
\6\ Id.
\7\ Id.
\8\ Id.
\9\ Id. at --, 82 USPQ2d at 1395.
\10\ Id.
\11\ Id.
\12\ Id.
\13\ Id.
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In KSR, the Supreme Court particularly emphasized ``the need for
caution in granting a patent based on the combination of elements found
in the prior art,'' \9\ and discussed circumstances in which a patent
might be determined to be obvious. Importantly, the Supreme Court
reaffirmed principles based on its precedent that ``[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.'' \10\ The Supreme
Court stated that there are ``[t]hree cases decided after Graham
[that] illustrate this doctrine.'' \11\ (1) ``In United States v.
Adams, * * * [t]he Court recognized that when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the
combination must do more than yield a predictable result.'' \12\ (2)
``In Anderson's-Black Rock, Inc. v. Pavement Salvage Co., * * * [t]he
two [pre-existing elements] in combination did no more than they would
in separate, sequential operation.'' \13\ (3) ``[I]n Sakraida v. AG
Pro, Inc., the Court derived * * * the conclusion that when
[[Page 57527]]
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.'' \14\
(Internal quotations omitted.) The principles underlying these cases
are instructive when the question is whether a patent application
claiming the combination of elements of prior art would have been
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obvious. The Supreme Court further stated that:
\14\ Id. at --, 82 USPQ2d at 1395-96.
\15\ Id. at --, 82 USPQ2d at 1396.
\16\ Id.
\17\ 35 U.S.C. 103(a).
\18\ 383 U.S. 1, 148 USPQ 459 (1966).
\19\ Id. at 17-18, 148 USPQ at 467.
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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, 35 U.S.C. 103 bars its
patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is
beyond his or her skill.\15\
When considering obviousness of a combination of known elements,
the operative question is thus ``whether the improvement is more than
the predictable use of prior art elements according to their
established functions.'' \16\
II. The Basic Factual Inquiries of Graham v. John Deere Co
An invention that would have been obvious to a person of ordinary
skill at the time of the invention is not patentable.\17\ As reiterated
by the Supreme Court in KSR, the framework for the objective analysis
for determining obviousness under 35 U.S.C. 103 is stated in Graham v.
John Deere Co.\18\ Obviousness is a question of law based on underlying
factual inquiries. The factual inquiries enunciated by the Court are as
follows:
(1) Determining the scope and content of the prior art;
(2) Ascertaining the differences between the claimed invention
and the prior art; and
(3) Resolving the level of ordinary skill in the pertinent art.
Objective evidence relevant to the issue of obviousness must be
evaluated by Office personnel.\19\ Such evidence, sometimes referred to
as ``secondary considerations,'' may include evidence of commercial
success, long-felt but unsolved needs, failure of others, and
unexpected results. The evidence may be included in the specification
as filed, accompany the application on filing, or be provided in a
timely manner at some other point during the prosecution. The weight to
be given any objective evidence is decided on a case-by-case basis. The
mere fact that an applicant has presented evidence does not mean that
the evidence is dispositive of the issue of obviousness.
The question of obviousness must be resolved on the basis of these
factual determinations. While each case is different and must be
decided on its own facts, the Graham factors, including secondary
considerations when present, are the controlling inquiries in any
obviousness analysis.\20\ As stated by the Supreme Court in KSR,
``While the sequence of these questions might be reordered in any
particular case, the [Graham] factors continue to define the inquiry
that controls.'' \21\
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\20\ The Graham factors were reaffirmed and relied upon by the
Supreme Court in its consideration and determination of obviousness
in the fact situation presented in KSR, 550 U.S. at --, 82 USPQ2d at
1391. The Supreme Court has utilized the Graham factors in each of
its obviousness decisions since Graham. See Sakraida v. Ag Pro,
Inc., 425 U.S. 273, 189 USPQ 449, reh'g denied, 426 U.S. 955 (1976);
Dann v. Johnston, 425 U.S. 219, 189 USPQ 257 (1976); and Anderson's-
Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 163 USPQ 673
(1969).
\21\ KSR, 550 U.S. at --, 82 USPQ2d at 1391.
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Office Personnel as Factfinders
Office personnel fulfill the critical role of factfinder when
resolving the Graham inquiries. It must be remembered that while the
ultimate determination of obviousness is a legal conclusion, the
underlying Graham inquiries are factual. When making an obviousness
rejection, Office personnel must therefore ensure that the written
record includes findings of fact concerning the state of the art and
the teachings of the references applied. In certain circumstances, it
may also be important to include explicit findings as to how a person
of ordinary skill would have understood prior art teachings, or what a
person of ordinary skill would have known or could have done. Factual
findings made by Office personnel are the necessary underpinnings to
establish obviousness.
Once the findings of fact are articulated, Office personnel must
provide an explanation to support an obviousness rejection under 35
U.S.C. 103. 35 U.S.C. 132 requires that the applicant be notified of
the reasons for the rejection of the claim so that he or she can decide
how best to proceed. Clearly setting forth findings of fact and the
rationale(s) to support a rejection in an Office action leads to the
prompt resolution of issues pertinent to patentability.\22\
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\22\ These guidelines focus on the proper content of an
obviousness rejection, and should not be construed as dictating any
particular format.
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In short, the focus when making a determination of obviousness
should be on what a person of ordinary skill in the pertinent art would
have known at the time of the invention, and on what such a person
would have reasonably expected to have been able to do in view of that
knowledge. This is so regardless of whether the source of that
knowledge and ability was documentary prior art, general knowledge in
the art, or common sense. What follows is a discussion of the Graham
factual inquiries.
A. Determining the Scope and Content of the Prior Art
In determining the scope and content of the prior art, Office
personnel must first obtain a thorough understanding of the invention
disclosed and claimed in the application under examination by reading
the specification, including the claims, to understand what the
applicant has invented.\23\ The scope of the claimed invention must be
clearly determined by giving the claims the ``broadest reasonable
interpretation consistent with the specification.'' \24\ Once the scope
of the claimed invention is determined, Office personnel must then
determine what to search for and where to search.
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\23\ See MPEP Sec. 904 (8th edition, revision 5, August 2006).
\24\ See Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d
1321, 1329 (Fed. Cir. 2005) and MPEP Sec. 2111.
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1. What to search for: The search should cover the claimed subject
matter and should also cover the disclosed features which might
reasonably be expected to be claimed.\25\ Although a rejection need not
be based on a teaching or suggestion to combine, a preferred search
will be directed to finding references that provide such a teaching or
suggestion if they exist.
---------------------------------------------------------------------------
\25\ See MPEP Sec. 904.02.
---------------------------------------------------------------------------
2. Where to search: Office personnel should continue to follow the
general search guidelines set forth in MPEP Sec. 904 to Sec. 904.03
regarding search of the prior art. Office personnel are reminded that,
for purposes of 35 U.S.C. 103, prior art can be either in the field of
applicant's endeavor or be reasonably pertinent to the particular
problem with which the applicant was concerned. Furthermore, prior art
that is in a field of endeavor other than that of the applicant,\26\ or
solves a problem which
[[Page 57528]]
is different from that which the applicant was trying to solve, may
also be considered for the purposes of 35 U.S.C. 103.\27\
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\26\ As noted by the Court in KSR, ``[w]hen 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.'' (Emphasis added) 550 U.S. at--, 82 USPQ2d at 1396.
\27\ The Court in KSR stated that ``[t]he first error * * * in
this case was * * * holding that courts and patent examiners should
look only to the problem the patentee was trying to solve. The Court
of Appeals failed to recognize that the problem motivating the
patentee may be only one of many addressed by the patent's subject
matter * * * . The second error [was] * * * that a person of
ordinary skill attempting to solve a problem will be led only to
those elements of prior art designed to solve the same problem.''
550 U.S. at --, 82 USPQ2d at 1397. Federal Circuit case law prior to
the Supreme Court's decision in KSR is generally in accord with
these statements by the KSR Court. See, e.g., In re Dillon, 919 F.2d
688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc) (``[I]t is
not necessary in order to establish a prima facie case of
obviousness that both a structural similarity between a claimed and
prior art compound (or a key component of a composition) be shown
and that there be a suggestion in or expectation from the prior art
that the claimed compound or composition will have the same or a
similar utility as one newly discovered by applicant.''); In re
Lintner, 458 F.2d 1013, 1018, 173 USPQ 560, 562 (CCPA 1972) (``The
fact that [applicant] uses sugar for a different purpose does not
alter the conclusion that its use in a prior art composition would
be prima facie obvious from the purpose disclosed in the
references.'').
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For a discussion of what constitutes prior art, see MPEP Sec. 901
to Sec. 901.06(d) and Sec. 2121 to Sec. 2129.
B. Ascertaining the Differences Between the Claimed Invention and the
Prior Art
Ascertaining the differences between the claimed invention and the
prior art requires interpreting the claim language,\28\ and considering
both the invention and the prior art as a whole.\29\
---------------------------------------------------------------------------
\28\ See MPEP Sec. 2111.
\29\ See MPEP Sec. 2141.02.
---------------------------------------------------------------------------
C. Resolving the Level of Ordinary Skill in the Art
Any obviousness rejection should include, either explicitly or
implicitly in view of the prior art applied, an indication of the level
of ordinary skill. A finding as to the level of ordinary skill may be
used as a partial basis for a resolution of the issue of obviousness.
The person of ordinary skill in the art is a hypothetical person
who is presumed to have known the relevant art at the time of the
invention. Factors that may be considered in determining the level of
ordinary skill in the art may include: (1) ``Type of problems
encountered in the art;'' (2) ``prior art solutions to those
problems;'' (3) ``rapidity with which innovations are made;'' (4)
``sophistication of the technology;'' and (5) ``educational level of
active workers in the field. In a given case, every factor may not be
present, and one or more factors may predominate.'' \30\
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\30\ In re GPAC, 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed.
Cir. 1995); Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc.,
807 F.2d 955, 962, 1 USPQ2d 1196, 1201 (Fed. Cir. 1986); Envtl.
Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696, 218 USPQ 865, 868
(Fed. Cir. 1983).
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``A person of ordinary skill in the art is also a person of
ordinary creativity, not an automaton.'' \31\ ``[I]n many cases a
person of ordinary skill will be able to fit the teachings of multiple
patents together like pieces of a puzzle.'' \32\ Office personnel may
also take into account ``the inferences and creative steps that a
person of ordinary skill in the art would employ.'' \33\
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\31\ KSR, 550 U.S. at --, 82 USPQ2d at 1397.
\32\ Id.
\33\ Id. at --, 82 USPQ2d at 1396.
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In addition to the factors above, Office personnel may rely on
their own technical expertise to describe the knowledge and skills of a
person of ordinary skill in the art.\34\
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\34\ The Federal Circuit has stated that examiners and
administrative patent judges on the Board are ``persons of
scientific competence in the fields in which they work'' and that
their findings are ``informed by their scientific knowledge, as to
the meaning of prior art references to persons of ordinary skill in
the art.'' In re Berg, 320 F.3d 1310, 1315, 65 USPQ2d 2003, 2007
(Fed. Cir. 2003).
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III. Rationales To Support Rejections Under 35 U.S.C. 103
Once the Graham factual inquiries are resolved, Office personnel
must determine whether the claimed invention would have been obvious to
one of ordinary skill in the art.
The obviousness analysis cannot be confined by * * *
overemphasis on the importance of published articles and the
explicit content of issued patents * * * . 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.\35\
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\35\ KSR, 550 U.S. at--, 82 USPQ2d at 1396.
Prior art is not limited just to the references being applied, but
includes the understanding of one of ordinary skill in the art. The
prior art reference (or references when combined) need not teach or
suggest all the claim limitations; however, Office personnel must
explain why the difference(s) between the prior art and the claimed
invention would have been obvious to one of ordinary skill in the art.
The ``mere existence of differences between the prior art and an
invention does not establish the invention's nonobviousness.'' \36\ The
gap between the prior art and the claimed invention may not be ``so
great as to render the [claim] nonobvious to one reasonably skilled in
the art.'' \37\ In determining obviousness, neither the particular
motivation to make the claimed invention nor the problem the inventor
is solving controls. The proper analysis is whether the claimed
invention would have been obvious to one of ordinary skill in the art
after consideration of all the facts.\38\ Factors other than the
disclosures of the cited prior art may provide a basis for concluding
that it would have been obvious to one of ordinary skill in the art to
bridge the gap. The rationales discussed below outline reasoning that
may be applied to find obviousness in such cases.
---------------------------------------------------------------------------
\36\ Dann v. Johnston, 425 U.S. 219, 230, 189 USPQ 257, 261
(1976).
\37\ Id.
\38\ 35 U.S.C. 103(a).
---------------------------------------------------------------------------
If the search of the prior art and the resolution of the Graham
factual inquiries reveal that an obviousness rejection may be made
using the familiar teaching-suggestion-motivation (TSM) rationale, then
such a rejection using the TSM rationale can still be made. Although
the Supreme Court in KSR cautioned against an overly rigid application
of TSM, it also recognized that TSM was one of a number of valid
rationales that could be used to determine obviousness.\39\ Office
personnel should also consider whether one or more of the other
rationales set forth below support a conclusion of obviousness.\40\
Note that the list of rationales provided below is not intended to be
an all-inclusive list. Other rationales to support a conclusion of
obviousness may be relied upon by Office personnel.
---------------------------------------------------------------------------
\39\ According to the Supreme Court, establishment of the TSM
approach to the question of obviousness ``captured a helpful
insight.'' 550 U.S. at --, 82 USPQ2d 1385, 1396 (citing In re
Bergel, 292 F.2d 955, 956-57, 130 USPQ 206, 207-08 (1961)).
Furthermore, the Court explained that ``[t]here is no necessary
inconsistency between the idea underlying the TSM test and the
Graham analysis.'' KSR, 550 U.S. at --, 82 USPQ2d at 1396. The
Supreme Court also commented that the Federal Circuit ``no doubt has
applied the test in accord with these principles [set forth in KSR]
in many cases.'' Id. at --, 82 USPQ2d at 1396.
\40\ The Court in KSR identified a number of rationales to
support a conclusion of obviousness which are consistent with the
proper ``functional approach'' to the determination of obviousness
as laid down in Graham. Id. at --, 82 USPQ2d at 1395-97.
---------------------------------------------------------------------------
The key to supporting any rejection under 35 U.S.C. 103 is the
clear articulation of the reason(s) why the claimed invention would
have been obvious. The Supreme Court in KSR noted that the analysis
supporting a rejection under 35 U.S.C. 103 should be made explicit. The
Court quoting In re Kahn \41\ stated that `` `[R]ejections on
obviousness cannot be sustained by
[[Page 57529]]
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal
conclusion of obviousness.' '' \42\
---------------------------------------------------------------------------
\41\ 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
\42\ KSR, 550 U.S. at --, 82 USPQ2d at 1396.
---------------------------------------------------------------------------
Rationales
(A) Combining prior art elements according to known methods to
yield predictable results;
(B) Simple substitution of one known element for another to obtain
predictable results;
(C) Use of known technique to improve similar devices (methods, or
products) in the same way;
(D) Applying a known technique to a known device (method, or
product) ready for improvement to yield predictable results;
(E) ``Obvious to try''--choosing from a finite number of
identified, predictable solutions, with a reasonable expectation of
success;
(F) Known work in one field of endeavor may prompt variations of it
for use in either the same field or a different one based on design
incentives or other market forces if the variations would have been
predictable to one of ordinary skill in the art;
(G) 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.
The subsections below include discussions of each rationale along
with examples illustrating how the cited rationales may be used to
support a finding of obviousness. The cases cited (from which the facts
were derived) may not necessarily stand for the proposition that the
particular rationale is the basis for the court's holding of
obviousness. Note that, in some instances, a single case is used in
different subsections to illustrate the use of more than one rationale
to support a finding of obviousness. It may often be the case that,
once the Graham inquiries have been satisfactorily resolved, a
conclusion of obviousness may be supported by more than one line of
reasoning.
A. Combining Prior Art Elements According to Known Methods To Yield
Predictable Results
To reject a claim based on this rationale, Office personnel must
resolve the Graham factual inquiries. Office personnel must then
articulate the following:
(1) a finding that the prior art included each element claimed,
although not necessarily in a single prior art reference, with the
only difference between the claimed invention and the prior art
being the lack of actual combination of the elements in a single
prior art reference;
(2) a finding that one of ordinary skill in the art could have
combined the elements as claimed by known methods, and that in
combination, each element merely would have performed the same
function as it did separately;
(3) a finding that one of ordinary skill in the art would have
recognized that the results of the combination were predictable; and
(4) whatever additional findings based on the Graham factual
inquiries may be necessary, in view of the facts of the case under
consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have
been obvious is that all the claimed elements were known in the prior
art and one skilled in the art could have combined the elements as
claimed by known methods with no change in their respective functions,
and the combination would have yielded nothing more than predictable
results to one of ordinary skill in the art at the time of the
invention.\43\ ``[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.'' \44\
If any of these findings cannot be made, then this rationale cannot be
used to support a conclusion that the claim would have been obvious to
one of ordinary skill in the art.
\43\ Id. at --, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425
U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson's-Black Rock, Inc.
v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675
(1969); Great Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340
U.S. 147, 152, 87 USPQ 303, 306 (1950).
\44\ KSR, 550 U.S. at --, 82 USPQ2d at 1396.
---------------------------------------------------------------------------
Example 1: The claimed invention in Anderson's-Black Rock, Inc.
v. Pavement Salvage Co.\45\ was a paving machine which combined
several well-known elements onto a single chassis. Standard prior
art paving machines typically combined equipment for spreading and
shaping asphalt onto a single chassis. The patent claim included the
well-known element of a radiant-heat burner attached to the side of
the paver for the purpose of preventing cold joints during
continuous strip paving.\46\ All of the component parts were known
in the prior art. The only difference was the combination of the
``old elements'' into a single device by mounting them on a single
chassis. The Court found that the operation of the heater was in no
way dependent on the operation of the other equipment, and that a
separate heater could also be used in conjunction with a standard
paving machine to achieve the same results. The Court concluded that
``[t]he convenience of putting the burner together with the other
elements in one machine, though perhaps a matter of great
convenience, did not produce a `new' or `different function' '' \47\
and that to those skilled in the art the use of the old elements in
combination would have been obvious.
---------------------------------------------------------------------------
\45\ 396 U.S. 57, 163 USPQ 673 (1969).
\46\ The prior art used radiant heat for softening the asphalt
to make patches, but did not use radiant heat burners to achieve
continuous strip paving.
\47\ Id. at 60, 163 USPQ at 674.
---------------------------------------------------------------------------
Note that combining known prior art elements is not sufficient
to render the claimed invention obvious if the results would not
have been predictable to one of ordinary skill in the art.\48\
``When the prior art teaches away from combining certain known
elements, discovery of successful means of combining them is more
likely to be nonobvious.'' \49\
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\48\ United States v. Adams, 383 U.S. 39, 51-52, 148 USPQ 479,
483 (1966). In Adams, the claimed invention was to a battery with
one magnesium electrode and one cuprous chloride electrode that
could be stored dry and activated by the addition of plain water or
salt water. Although magnesium and cuprous chloride were
individually known battery components, the Court concluded that the
claimed battery was nonobvious. The Court stated that ``[d]espite
the fact that each of the elements of the Adams battery was well
known in the prior art, to combine them as did Adams required that a
person reasonably skilled in the prior art must ignore'' the
teaching away of the prior art that such batteries were impractical
and that water-activated batteries were successful only when
combined with electrolytes detrimental to the use of magnesium
electrodes. Id. at 42-43, 50-52, 148 USPQ at 480, 483.
\49\ KSR, 550 U.S. at --, 82 USPQ2d at 1395.
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Example 2: The claimed invention in Ruiz v. AB Chance Co.\50\
was directed to a system which employs a screw anchor for
underpinning existing foundations and a metal bracket to transfer
the building load onto the screw anchor. The prior art (Fuller) used
screw anchors for underpinning existing structural foundations.
Fuller used a concrete haunch to transfer the load of the foundation
to the screw anchor. The prior art (Gregory) used a push pier for
underpinning existing structural foundations. Gregory taught a
method of transferring load using a bracket, specifically, a metal
bracket transfers the foundation load to the push pier. The pier is
driven into the ground to support the load. Neither reference showed
the two elements of the claimed invention--screw anchor and metal
bracket--used together. The court found that ``artisans knew that a
foundation underpinning system requires a means of connecting the
foundation to the load-bearing member.'' \51\
---------------------------------------------------------------------------
\50\ 357 F.3d 1270, 69 USPQ2d 1686 (Fed. Cir. 2004).
\51\ Id. at 1276, 69 USPQ2d at 1691.
---------------------------------------------------------------------------
The nature of the problem to be solved--underpinning unstable
foundations--as well as the need to connect the member to the
foundation to accomplish this goal, would have led one of ordinary
skill in the art to choose an appropriate load bearing member and a
compatible attachment. Therefore, it would have been obvious to use a
metal bracket (as shown in Gregory) in combination with the screw
anchor (as
[[Page 57530]]
shown in Fuller) to underpin unstable foundations.
B. Simple Substitution of One Known Element for Another To Obtain
Predictable Results
To reject a claim based on this rationale, Office personnel must
resolve the Graham factual inquiries. Office personnel must then
articulate the following:
(1) a finding that the prior art contained a device (method,
product, etc.) which differed from the claimed device by the
substitution of some components (step, element, etc.) with other
components;
(2) a finding that the substituted components and their
functions were known in the art;
(3) a finding that one of ordinary skill in the art could have
substituted one known element for another, and the results of the
substitution would have been predictable; and
(4) whatever additional findings based on the Graham factual
inquiries may be necessary, in view of the facts of the case under
consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have
been obvious is that the substitution of one known element for another
would have yielded predictable results to one of ordinary skill in the
art at the time of the invention. If any of these findings cannot be
made, then this rationale cannot be used to support a conclusion that
the claim would have been obvious to one of ordinary skill in the art.
Example 1: The claimed invention in In re Fout \52\ was directed
to a method for decaffeinating coffee or tea. The prior art
(Pagliaro) method produced a decaffeinated vegetable material and
trapped the caffeine in a fatty material (such as oil). The caffeine
was then removed from the fatty material by an aqueous extraction
process. Applicant (Fout) substituted an evaporative distillation
step for the aqueous extraction step. The prior art (Waterman)
suspended coffee in oil and then directly distilled the caffeine
through the oil. The court found that ``[b]ecause both Pagliaro and
Waterman teach a method for separating caffeine from oil, it would
have been prima facie obvious to substitute one method for the
other. Express suggestion to substitute one equivalent for another
need not be present to render such substitution obvious.'' \53\
---------------------------------------------------------------------------
\52\ 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
\53\ Id. at 301, 213 USPQ at 536.
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Example 2: The invention in In re O'Farrell \54\ was directed to
a method for synthesizing a protein in a transformed bacterial host
species by substituting a heterologous gene for a gene native to the
host species. Generally speaking, protein synthesis in vivo follows
the path of DNA to RNA to protein. Although the prior art Polisky
article (authored by two of the three inventors of the application)
had explicitly suggested employing the method described for protein
synthesis, the inserted heterologous gene exemplified in the article
was one that normally did not proceed all the way to the protein
production step, but instead terminated with the RNA. A second
reference to Bahl had described a general method of inserting
chemically synthesized DNA into a plasmid. Thus, it would have been
obvious to one of ordinary skill in the art to replace the prior art
gene with another gene known to lead to protein production, because
one of ordinary skill in the art would have been able to carry out
such a substitution, and the results were reasonably predictable.
---------------------------------------------------------------------------
\54\ 853 F.2d 894, 7 USPQ2d 1673 (Fed. Cir. 1988).
---------------------------------------------------------------------------
In response to applicant's argument that there had been significant
unpredictability in the field of molecular biology at the time of the
invention, the court stated that the level of skill was quite high and
that the teachings of Polisky, even taken alone, contained detailed
enabling methodology and included the suggestion that the modification
would be successful for synthesis of proteins.
This is not a situation where the rejection is a statement that it
would have been ``obvious to try'' without more. Here there was a
reasonable expectation of success. ``Obviousness does not require
absolute predictability of success.'' \55\
---------------------------------------------------------------------------
\55\ Id. at 903, 7 USPQ2d at 1681.
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Example 3: The fact pattern in Ruiz v. AB Chance Co.\56\ is set
forth above in Example 2 in subsection III.A.
---------------------------------------------------------------------------
\56\ 357 F.3d 1270, 69 USPQ2d 1686 (Fed. Cir. 2004).
---------------------------------------------------------------------------
The prior art showed differing load-bearing members and differing
means of attaching the foundation to the member. Therefore, it would
have been obvious to one of ordinary skill in the art to substitute the
metal bracket taught in Gregory for Fuller's concrete haunch for the
predictable result of transferring the load.
Example 4: The claimed invention in Ex parte Smith \57\ was a
pocket insert for a bound book made by gluing a base sheet and a
pocket sheet of paper together to form a continuous two-ply seam
defining a closed pocket. The prior art (Wyant) disclosed at least
one pocket formed by folding a single sheet and securing the folder
portions along the inside margins using any convenient bonding
method. The prior art (Wyant) did not disclose bonding the sheets to
form a continuous two-ply seam. The prior art (Dick) disclosed a
pocket that is made by stitching or otherwise securing two sheets
along three of its four edges to define a closed pocket with an
opening along its fourth edge.
---------------------------------------------------------------------------
\57\ 83 USPQ2d 1509 (Bd. Pat. App. & Int. 2007).
In considering the teachings of Wyant and Dick, the Board ``found
that (1) each of the claimed elements is found within the scope and
content of the prior art; (2) one of ordinary skill in the art could
have combined the elements as claimed by methods known at the time the
invention was made; and (3) one of ordinary skill in the art would have
recognized at the time the invention was made that the capabilities or
functions of the combination were predictable.'' Citing KSR, the Board
concluded that ``[t]he substitution of the continuous, two-ply seam of
Dick for the folded seam of Wyant thus is no more than `the simple
substitution of one known element for another or the mere application
of a known technique to a piece of prior art ready for improvement.' ''
C. Use of Known Technique To Improve Similar Devices (Methods, or
Products) in the Same Way
To reject a claim based on this rationale, Office personnel must
resolve the Graham factual inquiries. Office personnel must then
articulate the following:
(1) a finding that the prior art contained a ``base'' device
(method, or product) upon which the claimed invention can be seen as
an ``improvement;''
(2) a finding that the prior art contained a ``comparable''
device (method, or product that is not the same as the base device)
that was improved in the same way as the claimed invention;
(3) a finding that one of ordinary skill in the art could have
applied the known ``improvement'' technique in the same way to the
``base'' device (method, or product) and the results would have been
predictable to one of ordinary skill in the art; and
(4) whatever additional findings based on the Graham factual
inquiries may be necessary, in view of the facts of the case under
consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have
been obvious is that a method of enhancing a particular class of
devices (methods, or products) was made part of the ordinary
capabilities of one skilled in the art based upon the teaching of such
improvement in other situations. One of ordinary skill in the art would
have been capable of applying this known method of enhancement to a
``base'' device (method, or product) in the prior art and the results
would have been predictable to one of ordinary skill in the art. The
Supreme Court in KSR noted that if the actual application of the
technique would have been beyond the skill of one of ordinary skill in
the art, then using the technique would not have been obvious.\58\ If
any of these findings cannot be made, then this
[[Page 57531]]
rationale cannot be used to support a conclusion that the claim would
have been obvious to one of ordinary skill in the art.
---------------------------------------------------------------------------
\58\ KSR, 550 U.S. at --, 82 USPQ2d at 1396.
Example 1: The claimed invention in In re Nilssen \59\ was
directed to a ``means by which the self-oscillating inverter in a
power-line-operated inverter-type fluorescent lamp ballast is
disabled in case the output current from the inverter exceeds some
pre-established threshold level for more than a very brief period.''
\60\ That is, the current output was monitored, and if the current
output exceeded some threshold for a specified short time, an
actuation signal was sent and the inverter was disabled to protect
---------------------------------------------------------------------------
it from damage.
\59\ 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988).
\60\ Id. at 1402, 7 USPQ2d at 1501.
---------------------------------------------------------------------------
The prior art (a USSR certificate) described a device for
protecting an inverter circuit in an undisclosed manner via a control
means. The device indicated the high-load condition by way of the
control means, but did not indicate the specific manner of overload
protection. The prior art (Kammiller) disclosed disabling the inverter
in the event of a high-load current condition in order to protect the
inverter circuit. That is, the overload protection was achieved by
disabling the inverter by means of a cutoff switch.
The court found ``it would have been obvious to one of ordinary
skill in the art to use the threshold signal produced in the USSR
device to actuate a cutoff switch to render the inverter inoperative as
taught by Kammiller.'' \61\ That is, using the known technique of a
cutoff switch for protecting a circuit to provide the protection
desired in the inverter circuit of the USSR document would have been
obvious to one of ordinary skill.
---------------------------------------------------------------------------
\61\ Id. at 1403, 7 USPQ2d at 1502.
Example 2: The fact pattern in Ruiz v. AB Chance Co.\62\ is set
forth above in Example 2 in subsection III.A.
---------------------------------------------------------------------------
\62\ 357 F.3d 1270, 69 USPQ2d 1686 (Fed. Cir. 2004).
The nature of the problem to be solved may lead inventors to look
at references relating to possible solutions to that problem.\63\
Therefore, it would have been obvious to use a metal bracket (as shown
in Gregory) with the screw anchor (as shown in Fuller) to underpin
unstable foundations.
---------------------------------------------------------------------------
\63\ Id. at 1277, 69 USPQ2d at 1691.
---------------------------------------------------------------------------
D. Applying a Known Technique to a Known Device (Method, or Product)
Ready for Improvement To Yield Predictable Results
To reject a claim based on this rationale, Office personnel must
resolve the Graham factual inquiries. Office personnel must then
articulate the following:
(1) a finding that the prior art contained a ``base'' device
(method, or product) upon which the claimed invention can be seen as
an ``improvement;''
(2) a finding that the prior art contained a known technique
that is applicable to the base device (method, or product);
(3) a finding that one of ordinary skill in the art would have
recognized that applying the known technique would have yielded
predictable results and resulted in an improved system; and
(4) whatever additional findings based on the Graham factual
inquiries may be necessary, in view of the facts of the case under
consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have
been obvious is that a particular known technique was recognized as
part of the ordinary capabilities of one skilled in the art. One of
ordinary skill in the art would have been capable of applying this
known technique to a known device (method, or product) that was ready
for improvement and the results would have been predictable to one of
ordinary skill in the art. If any of these findings cannot be made,
then this rationale cannot be used to support a conclusion that the
claim would have been obvious to one of ordinary skill in the art.
Example 1: The claimed invention in Dann v. Johnston \64\ was
directed towards a system (i.e., computer) for automatic record
keeping of bank checks and deposits. In this system, a customer
would put a numerical category code on each check or deposit slip.
The check processing system would record these on the check in
magnetic ink, just as it did for amount and account information.
With this system in place, the bank can provide statements to
customers that are broken down to give subtotals for each category.
The claimed system also allowed the bank to print reports according
to a style requested by the customer. As characterized by the Court,
``[u]nder respondent's invention, then, a general purpose computer
is programmed to provide bank customers with an individualized and
categorized breakdown of their transactions during the period in
question.''\65\
---------------------------------------------------------------------------
\64\ 425 U.S. 219, 189 USPQ 257 (1976).
\65\ Id. at 222, 189 USPQ at 259.
Base System--The nature of the current use of data processing
equipment and computer software in the banking industry was that banks
routinely did much of the record keeping automatically. In routine
check processing, the system read any magnetic ink characters
identifying the account and routing. The system also read the amount of
the check and then printed that value in a designated area of the
check. The check was then sent through a further data processing step
which used the magnetic ink information to generate the appropriate
records for transactions and for posting to the appropriate accounts.
These systems included generating periodic statements for each account,
such as the monthly statement sent to checking account customers.
Improved System--The claimed invention supplemented this system by
recording a category code which can then be utilized to track
expenditures by category. Again, the category code will be a number
recorded on the check (or deposit slip) which will be read, converted
into a magnetic ink imprint, and then processed in the data system to
include the category code. This enabled reporting of data by category
as opposed to only allowing reporting by account number.
Known Technique--This is an application of a technique from the
prior art--the use of account numbers (generally used to track an
individual's total transactions) to solve the problem of how to track
categories of expenditures to more finely account for a budget. That
is, account numbers (identifying data capable of processing in the
automatic data processing system) were used to distinguish between
different customers. Furthermore, banks have long segregated debits
attributable to service charges within any given separate account and
have rendered their customers subtotals for those charges. Previously,
one would have needed to set up separate accounts for each category and
thus receive separate reports. Supplementing the account information
with additional digits (the category codes) solved the problem by
effectively creating a single account that can be treated as distinct
accounts for tracking and reporting services. That is, the category
code merely allowed what might previously have been separate accounts
to be handled as a single account, but with a number of sub-accounts
indicated in the report.
The basic technique of putting indicia on data which then enabled
standard sorting, searching, and reporting would have yielded no more
than the predictable outcome which one of ordinary skill would have
expected to achieve with this common tool of the trade and was
therefore an obvious expedient. The Court held that ``[t]he gap between
the prior art and respondent's system is simply not so great as to
render the system nonobvious to one reasonably skilled in the art.''
\66\
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\66\ Id. at 230, 189 USPQ at 261.
[[Page 57532]]
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Example 2: The fact pattern in In re Nilssen \67\ is set forth
above in Example 1 in subsection III.C.
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\67\ 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir. 1988).
The court found ``it would have been obvious to one of ordinary
skill in the art to use the threshold signal produced in the USSR
device to actuate a cutoff switch to render the inverter inoperative as
taught by Kammiller.'' \68\ The known technique of using a cutoff
switch would have predictably resulted in protecting the inverter
circuit. Therefore, it would have been within the skill of the ordinary
artisan to use a cutoff switch in response to the actuation signal to
protect the inverter.
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\68\ Id. at 1403, 7 USPQ2d at 1502.
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E. ``Obvious To Try''--Choosing From a Finite Number of Identified,
Predictable Solutions, With a Reasonable Expectation of Success
To reject a claim based on this rationale, Office personnel must
resolve the Graham factual inquiries. Office personnel must then
articulate the following:
(1) a finding that at the time of the invention, there had been
a recognized problem or need in the art, which may include a design
need or market pressure to solve a problem;
(2) a finding that there had been a finite number of identified,
predictable potential solutions to the recognized need or problem;
(3) a finding that one of ordinary skill in the art could have
pursued the known potential solutions with a reasonable expectation
of success; and
(4) whatever additional findings based on the Graham factual
inquiries may be necessary, in view of the facts of the case under
consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have
been obvious is that ``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 Sec. 103.'' \69\ If any of these findings cannot be
made, then this rationale cannot be used to support a conclusion that
the claim would have been obvious to one of ordinary skill in the art.
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\69\ KSR, 550 U.S. at --, 82 USPQ2d at 1397.
Example 1: The claimed invention in Pfizer, Inc. v. Apotex,
Inc.\70\ was directed to the amlodipine besylate drug product, which
is commercially sold in tablet form in the United States under the
trademark Norvasc[reg]. At the time of the invention, amlodipine was
known as was the use of besylate anions. Amlodipine was known to
have the same therapeutic properties as were being claimed for the
amlodipine besylate but Pfizer discovered that the besylate form had
better manufacturing properties (e.g., reduced ``stickiness'').
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\70\ 480 F.3d 1348, 82 USPQ2d 1321 (Fed. Cir. 2007).
Pfizer argued that the results of forming amlodipine besylate would
have been unpredictable, and therefore were nonobvious. The court
rejected the notion that unpredictability could be equated with
nonobviousness here, because there were only a finite number (53) of
pharmaceutically acceptable salts to be tested for improved properties.
The court found that one of ordinary skill in the art having
problems with the machinability of amlodipine would have looked to
forming a salt of the compound and would have been able to narrow the
group of potential salt-formers to a group of 53 anions known to form
pharmaceutically acceptable salts, which would be an acceptable number
to form ``a reasonable expectation of success.''
Example 2: The claimed invention in Alza Corp. v. Mylan
Laboratories, Inc.\71\ was drawn to sustained-release formulations
of the drug oxybutynin in which the drug is released at a specified
rate over a 24-hour period. Oxybutynin was known to be highly water-
soluble, and the specification had pointed out that development of
sustained-release formulations of such drugs presented particular
problems.
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\71\ 464 F.3d 1286, 80 USPQ2d 1001 (Fed. Cir. 2006).
A prior art patent to Morella had taught sustained-release
compositions of highly water-soluble drugs, as exemplified by a
sustained-release formulation of morphine. Morella had also identified
oxybutynin as belonging to the class of highly water-soluble drugs. The
Baichwal prior art patent had taught a sustained-release formulation of
oxybutynin that had a different release rate than the claimed
invention. Finally, the Wong prior art patent had taught a generally
applicable method for delivery of drugs over a 24-hour period. Although
Wong mentioned applicability of the disclosed method to several
categories of drugs to which oxybutynin belonged, Wong did not
specifically mention its applicability to oxybutynin.
The court found that because the absorption properties of
oxybutynin would have been reasonably predictable at the time of the
invention, there would have been a reasonable expectation of successful
development of a sustained-release formulation of oxybutynin as
claimed. The prior art, as evidenced by the specification, had
recognized the obstacles to be overcome in development of sustained-
release formulations of highly water-soluble drugs, and had suggested a
finite number of ways to overcome these obstacles. The claims were
obvious because it would have been obvious to try the known methods for
formulating sustained-release compositions, with a reasonable
expectation of success. The court was not swayed by arguments of a lack
of absolute predictability.
Example 3: The claimed invention in Ex parte Kubin \72\ was an
isolated nucleic acid molecule. The claim stated that the nucleic
acid encoded a particular polypeptide. The encoded polypeptide was
identified in the claim by its partially specified sequence, and by
its ability to bind to a specified protein.
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\72\ 83 USPQ2d 1410 (Bd. Pat. App. & Int. 2007).
A prior art patent to Valiante taught the polypeptide encoded by
the claimed nucleic acid, but did not disclose either the sequence of
the polypeptide, or the claimed isolated nucleic acid molecule.
However, Valiante did disclose that by employing conventional methods,
such as those disclosed by a prior art laboratory manual by Sambrook,
the sequence of the polypeptide could be determined, and the nucleic
acid molecule could be isolated. In view of Valiante's disclosure of
the polypeptide, and of routine prior art methods for sequencing the
polypeptide and isolating the nucleic acid molecule, the Board found
that a person of ordinary skill in the art would have had a reasonable
expectation that a nucleic acid molecule within the claimed scope could
have been successfully obtained.
Relying on In re Deuel, Appellant argued that it was improper for
the Office to use the polypeptide of the Valiante patent together with
the methods described in Sambrook to reject a claim drawn to a specific
nucleic acid molecule without providing a reference showing or
suggesting a structurally similar nucleic acid molecule. Citing KSR,
the Board stated that ``when there is motivation 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 anticipated
success, it is likely the product not of innovation but of ordinary
skill and common sense.'' The Board noted that the problem facing those
in the art was to isolate a specific nucleic acid, and there were a
limited number of methods available to do so. The Board concluded that
the skilled artisan would have had reason to try these methods with the
reasonable expectation that at least one would be successful. Thus,
isolating the
[[Page 57533]]
specific nucleic acid molecule claimed was ``the product not of
innovation but of ordinary skill and common sense.''
F. Known Work in One Field of Endeavor May Prompt Variations of it for
Use in Either the Same Field or a Different One Based on Design
Incentives or Other Market Forces if The Variations Would Have Been
Predictable to One of Ordinary Skill in the Art
To reject a claim based on this rationale, Office personnel must
resolve the Graham factual inquiries. Office personnel must then
articulate the following:
(1) a finding that the scope and content of the prior art,
whether in the same field of endeavor as that of the applicant's
invention or a different field of endeavor, included a similar or
analogous device (method, or product);
(2) a finding that there were design incentives or market forces
which would have prompted adaptation of the known device (method, or
product);
(3) a finding that the differences between the claimed invention
and the prior art were encompassed in known variations or in a
principle known in the prior art;
(4) a finding that one of ordinary skill in the art, in view of
the identified design incentives or other market forces, could have
implemented the claimed variation of the prior art, and the claimed
variation would have been predictable to one of ordinary skill in
the art; and
(5) whatever additional findings based on the Graham factual
inquiries may be necessary, in view of the facts of the case under
consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claimed invention
would have been obvious is that design incentives or other market
forces could have prompted one of ordinary skill in the art to vary the
prior art in a predictable manner to result in the claimed invention.
If any of these findings cannot be made, then this rationale cannot be
used to support a conclusion that the claim would have been obvious to
one of ordinary skill in the art.
Example 1: The fact pattern in Dann v. Johnston \73\ is set
forth above in Example 1 in subsection III.D.
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\73\ 425 U.S. 219, 189 USPQ 257 (1976).
The court found that the problem addressed by applicant--the need
to give more detailed breakdown by a category of transactions--was
closely analogous to the task of keeping track of the transaction files
of individual business units.\74\ Thus, an artisan in the data
processing area would have recognized the similar class of problem and
the known solutions of the prior art and it would have been well within
the ordinary skill level to implement the system in the different
environment. The court held that ``[t]he gap between the prior art and
respondent's system is simply not so great as to render the system
nonobvious to one reasonably skilled in the art.'' \75\
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\74\ Id. at 229, 189 USPQ at 261.
\75\ Id. at 230, 189 USPQ at 261.
Example 2: The claimed invention in Leapfrog Enterprises, Inc.
v. Fisher-Price, Inc.\76\ was directed to a learning device to help
young children read phonetically.
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\76\ 485 F.3d 1157, 82 USPQ2d 1687 (Fed. Cir. 2007).
The claim read as follows:
An interactive learning device, comprising:
a housing including a plurality of switches;
a sound production device in communication with the switches and
including a processor and a memory;
at least one depiction of a sequence of letters, each letter being
associable with a switch; and
a reader configured to communicate the identity of the depiction to
the processor,
wherein selection of a depicted letter activates an associated
switch to communicate with the processor, causing the sound
production device to generate a signal corresponding to a sound
associated with the selected letter, the sound being determined by a
position of the letter in the sequence of letter.
The court concluded that the claimed invention would have been
obvious in view of the
