Blog 12: Obviousness Definition

Hello! Today I will be discussing obviousness. 

According to the lecture this week, Nonobvious means that a person having ordinary skills in the art would not have easily thought of it given the plurality of prior art. And unlike the novelty requirement that says that every element must be contained in a single piece of prior art, the Nonobviousness requirement asks to look at multiple pieces of prior art. 

For example in class we discussed the glow-in-the-dark toothbrush example. The patent examiner thought it was too obvious to just combine two prior arts. But people could argue that it is nonobvious because the prior art references come from different fields. Someone designing new a toothbrush is unlikely to look at alternative lighting technologies for solutions.  That is why it is much less obvious to combine these two prior arts.  

Another example given in class was the water bottle cap. If someone decides to just change the water bottle cap color to green it is too obvious, so that idea can not be patented.

After doing some more research I found this really good article that describes obviousness and the factual inquires that make up the initial obviousness inquiry. Here is a link to the article: http://www.ipwatchdog.com/2012/06/16/understanding-obviousness-john-deere-and-the-basics/id=25543/ and a quick summary about what was described as the factual inquiries. 

(1) Determining the scope and content of the prior art.

In determining the scope and content of the prior art, it is necessary to achieve a thorough understanding of the invention to understand what the inventor has invented. The scope of the claimed invention will be determined by giving the patent claims sthe broadest reasonable interpretation.

(2) 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, and considering both the invention and the prior art as a whole.

(3) Resolving the level of ordinary skill in the pertinent art.

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. It is necessary to determine who this hypothetical person is because the law requires that the invention not because the law – 35 USC 103 – seeks to determine whether “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art…” So this hypothetical person of ordinary skill in the art is central to the inquiry. 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

(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. A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton. In many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.

(4) Secondary considerations of non-obviousness.

In addition to the aforementioned factual inquiries, evidence that is sometimes referred to as ‘‘secondary considerations’’ or “objective indicia of non-obviousness,” must be considered.  Essentially, secondary considerations are a reality check on the determination reached through the first 3 factual inquiries.  In other words, the invention may appear on paper to be obvious, but if reality does not match theory then the invention can be established as being non-obvious. Evidence of secondary considerations may include evidence of commercial success, long-felt but unsolved needs, failure of others, copying by the industry and unexpected results.  If you are paying attention you notice that I mentioned unexpected results above.  This is an important linchpin because unexpected results comes up as a secondary consideration and whether the combination of elements produces an predicted result or outcome plays a central role in the post-KSR obviousness determination.  More on that in the next segment of this series. It is important to understand that not all secondary considerations are created equally.  For example, there are many possible reasons why a particular product may enjoy commercial success, such as a great marketing campaign or superior access to distribution channels.  In those situations the invention itself is not responsible for the commercial success, rather there is something else at play.  In order for commercial success to be useful there needs to be something typing commercial success to the innovation. One particularly strong secondary consideration is long-felt but unresolved need.  If there has been a well documented need or desire in an industry that has gone unanswered or unmet how is it intellectually honest to say that that a resulting solution is obvious?  It wouldn’t be at all intellectually honest.  That is why a long felt, well documented need that becomes met is excellent evidence to demonstrate that an invention is non-obvious.