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Obviousness

Friday, March 26, 2010 9:58 am

35 U.S.C. §103 is no doubt the #1 rejection that an Examiner makes against a patent application. It is more commonly known as the “obviousness rejection.” Unlike beauty which is in the eye of the beholder, obviousness is in the eye of a "person having ordinary skill in the art."

When faced with an obviousness rejection, inventors are tempted to reply: “If it was so doggone obvious why didn’t someone do it already?” Needless to say, that argument doesn’t usually work.

The patent prosecution concept of obviousness can be confusing for both the Inventor and the Patent Attorney/Agent. Basically, the Patent Office can take two or more patents, or published applications or anything in the public domain and then combine pieces and parts of those references together to argue that the invention would be an obvious result for a person with ordinary skill in that field. Obviousness equals not patentable.

Attempting to make obviousness less subjective and more objective was a U.S. Supreme Court decision in KSR International v. Teleflex, Inc. from mid-2007. The KSR ruling had Patent Examiners seeing obviousness everywhere which resulted in a dramatic increase in Final Office Action rejections and Appeals. Rather than clarifying the concept of obviousness, the KSR ruling made things far more complicated.

Fortunately, on New Years Eve 2009 some semblance of sanity returned. The Patent Office’s Board of Appeals ruled that obviousness exists only when a combination of known references results in a predictable outcome. Prior to the appeal ruling, a Patent Practitioner had to guess at the level of skill that the Examiner’s fictional “skilled person in the art” had. Because virtually every invention is really a combination of known features, the Patent Examiner now must show that some trace of Teaching, Suggestion or Motivation (known as the TSM Test) exists to make the combination come together in an expected result in order to reject a patent application for being obvious.

It’s impossible to accurately predict the course that any patent application will take and the challenges that an Examiner will make. Regardless, inventors should always be prepared to answer the obviousness challenge in specific detail. If that challenge occurs, the objective is to show that the invention would not be obvious for someone with skill in the field to construct it from the Examiner’s cited references.

Perhaps obviousness was too easy to defeat before the KSR ruling, but definitely it became way too crazy after KSR; at least beginning in 2010, the rules seem fair and more consistent when dealing with obviousness as defined in 35 U.S.C. §103.

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