[Federal Register: October 10, 2007 (Volume 72, Number 195)]
[Notices]
[Page 57526-57535]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr10oc07-39]
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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.
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\25\ See MPEP Sec. 904.02.
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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\
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\28\ See MPEP Sec. 2111.
\29\ See MPEP Sec. 2141.02.
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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, 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.
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\36\ Dann v. Johnston, 425 U.S. 219, 230, 189 USPQ 257, 261
(1976).
\37\ Id.
\38\ 35 U.S.C. 103(a).
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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.
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\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.
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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\
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\41\ 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
\42\ KSR, 550 U.S. at --, 82 USPQ2d at 1396.
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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 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.
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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.
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\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.
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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.
---------------------------------------------------------------------------
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.
---------------------------------------------------------------------------
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\
---------------------------------------------------------------------------
\66\ Id. at 230, 189 USPQ at 261.
[[Page 57532]]
---------------------------------------------------------------------------
Example 2: The fact pattern in In re Nilssen \67\ is set forth
above in Example 1 in subsection III.C.
---------------------------------------------------------------------------
\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.
---------------------------------------------------------------------------
\68\ Id. at 1403, 7 USPQ2d at 1502.
---------------------------------------------------------------------------
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.
---------------------------------------------------------------------------
\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'').
---------------------------------------------------------------------------
\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.
---------------------------------------------------------------------------
\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.
---------------------------------------------------------------------------
\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.
---------------------------------------------------------------------------
\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\
---------------------------------------------------------------------------
\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.
---------------------------------------------------------------------------
\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 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 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.
---------------------------------------------------------------------------
\77\ 550 U.S.--, 82 USPQ2d 1385 (2007).
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
[[Page 57534]]
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.
---------------------------------------------------------------------------
\78\ Id. at--, 82 USPQ2d at 1399.
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.
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\79\ 83 USPQ2d 1569 )Bd. Pat. App. & Int.
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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:
(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.
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\80\ DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1360, 80 USPQ2d 1641, 1645 (Fed. Cir.
2006).
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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\
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\81\ Id. at 1366, 80 USPQ2d at 1649.
\82\ Id. at 1368, 80 USPQ2d at 1651.
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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) 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 Sec. 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:
\83\ Graham v. John Deere Co., 383 U.S. at 17, 148 USPQ at 467.
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(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.
[[Page 57535]]
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 Sec.
706.07(a) are to be followed in determining whether an action may be
made final.
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\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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See MPEP Sec. 2145 concerning consideration of applicant's
rebuttal evidence. See also MPEP Sec. 716 to Sec. 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]
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