Patents - Nonobviousness

Graham v. John Deere

P invented clamp for plowing, obtained second patent claiming improved arrangement. Court found elements present in prior art, alleged improvement was obvious.
Rule of Law: A patent cannot be granted for an obvious rearrangement of known elements; non-obviousness, judged from the perspective of a person of ordinary skill in the art, is essential for patent validity under §103.

Nonobviousness serves as a policy check to prevent…

granting broad monopolies for trivial improvements.

Novelty test for anticipation vs Nonobviousness

Prior art reference has to disclose all parts under novelty, but single reference need not disclose the entire invention to bar patent

What does the test of anticipation for nonobviousness ask?

Whether researcher who is aware of all the prior art would think to create the claimed invention?

KSR International v. Teleflex

P held pedal patent that combined a sensor and pedal, D did the same thing.
Key Takeaway: Combining known elements in a predictable way is obvious under §103, and patents cannot claim ordinary design solutions that any skilled person could implement.

When is the combination of familiar elements obvious?

whether a PHOSITA could predict the invention’s outcome from prior art.

When is the combination of familiar elements nonobvious?

if the result is unpredictable, e.g., Adams (battery) worked far better than expected.

How do courts treat PHOSITA’s in terms of their level of creativity?

PHOSITA is creative and can combine prior art beyond formal teachings. Can consider industry trends, product specs, prior art citations, design incentives, market forces, range of needs

What is the federal circuit’s 3-prong test in testing obviousness in pharma patents?

• Lead compound selection

• Motivation to modify

• Reasonable expectation of success

“obvious to try” with unexpected results can still be nonobvious in certain circumstances

AI and Obviousness

if a PHOSITA could use AI to reach the invention, it may render the invention obvious.

What do secondary considerations include?

Commercial success (weak according to John Deere case)
Long-felt need and failure by others
Awards and praise

Skepticism, “teaching away”, and unexpected results

Licensing activity

Copying

Advances in collateral technology

Near-simulaneous invention

What does two things does the federal circuit require in regards to secondary considerations?

1. It be used in analysis

2. A nexus between the secondary consideration and claimed invention
   ex: inventor claims commercial success, they must show that the success was directly attributable to the unique features of the invention

What is the date used for determining obviousness?

before effective filling date of the claimed invention