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Obviousness in patent law: the most important rejection of a patent application to understand

What is considered to be obvious?

Let’s start with the basics. If you did not have any knowledge of any patent laws or regulations whatsoever, and I asked you what metric should be used to determine if you should get a patent, what would you answer? A typical response would be “if no one else previously came up with my idea.” And that intuition would be right on. It is something called “anticipation.” If someone has previously come up with your exact idea, and has adequately announced it to the public (as determined by 35 U.S.C. 102), your idea has essentially been “anticipated,” and would likely be rejected by the USPTO when applied for in a patent application.

Getting around patent anticipation rejections

To cope with the possibility of an anticipation rejection, a registered USPTO patent attorney may include not just your exact idea, but a number of variations to your exact idea. By doing so, you are permitted to later amend the language of your patent application to include those variations. As a result, if the USPTO rejects your patent application as being anticipated by someone previously coming up with your idea, as evidenced in a publication (termed a “prior art reference”), you may amend what is called the claims section of the patent application to refocus the patent application on the variation. You can then say that the prior art reference does not anticipate your patent application because the prior art reference does not discuss your variation.

After an anticipation rejection is overcome

After tweaking the patent claim language a bit, you may be able to convince a Patent Examiner that the prior art reference does not exactly teach your invention, and that, therefore, the anticipation rejections should be removed. But that is typically not the end of the story … and is typically where things start to get complicated.

The Patent Examiner may agree that the prior art reference does not exactly teach your invention, but may then issue a different type of rejection called an “obviousness” rejection. In essence, the Examiner may say that although no one has come up with your exact invention before you filed your patent application, your idea is just an obvious variation from ideas that others previously came up with. In other words, you really didn’t invent anything new, even though no one else previously came up with your exact idea, because there wasn’t enough innovation to go beyond what is merely obvious to a person of “ordinary skill in the art.”

To give a specific example, a patent application may be filed for a thermostat that is mounted to a wall. Previous wall-mounted thermostats used were screwed into the wall with screws, whereas the thermostat of the patent application is nailed into the wall with nails. Let’s just presume, for the sake of discussion, that no one previously came up with the exact idea of using nails to mount a thermostat to a wall – just screws. Technically speaking, the claims of the patent application should not be rejected as being anticipated, under 35 U.S.C. 102, by a prior art reference disclosing a wall-mounted thermostat that is screwed to the wall. But what about an obviousness rejection under 35 U.S.C. 103? Putting the legal requirements aside for the moment, let’s consider common sense.

A thermostat technician, who is not brand new or highly experienced, would probably carry both a screwdriver and a hammer, and be quite accustomed to using both on a regular basis. If that technician were to view a first prior art reference that discusses a wall-mounted thermostat being screwed into the wall, and a second prior art reference that discusses general use of nails for other types of devices other than thermostats (such as electrical outlets) that the technician is familiar with, the technician would not have to think much at all about substituting a screw for a nail to mount the thermostat to the wall. In essence, the variation in the patent application is just an “obvious” variation, which although had not been exactly contemplated before, is not considered worthy enough for patent protection – even from a common sense standpoint.

The Graham Factors for obviousness

But common sense alone is not robust enough to give guidance to patent applicants and Examiners as to what subject matter may be patentable as opposed to being too “obvious” to warrant patent protection.

The long-standing approach to determining obviousness, by both the courts and the USPTO, has been termed the Graham Factors, initially set forth by the Supreme Court in Graham v. John Deere, which are as follows:

  1. Determine the scope and contents of the prior art;
  2. Ascertain the differences between the prior art and the claims at issue;
  3. Determine the level of ordinary skill in the pertinent art; and
  4. Evaluate any evidence of secondary considerations.

Excluding the fourth factor of secondary consideration, which is only needed as a way to rebut a finding of obviousness, how does one go about analyzing the first three factors?

The TSM test for patent obviousness

Over time, the Federal Circuit Court of Appeals adopted a test called the Teaching, Suggestion, Motivation test (TSM), which provided a clear standard for when subject matter in a patent application was deemed obvious or non-obvious. In particular, the TSM test required that the prior art references themselves discussed some reason to be combined with one another.

From a patent applicant’s viewpoint, such a clear standard provided helpful guidance as to whether or not to file a patent application. An applicant could have a registered U.S. patent attorney analyze the prior art, and determine with a certain degree of confidence whether multiple prior art references actually rendered the applicant’s subject matter obvious or not.

On the flip side, the common sense approach was sometimes in conflict with the TSM test. Using the thermostat example, two prior art references would have had to have some specific teaching, suggestion, or motivation for being combined to render a substitution of a screw with a nail obvious. But what if neither reference had such specific teaching, suggestion, or motivation? The thermostat mounted to the wall with a nail, as opposed to a screw, would have been deemed patentable – even though common sense dictates that such variation is clearly “obvious” to a thermostat technician with a decent modicum of experience.

Enter KSR: Landmark Case In Patent Law

In KSR International Co. v. Teleflex Inc., the Supreme Court recognized the TSM as a “helpful insight,” but admonished against use of the TSM text in a restrictive manner. For example, the Supreme Court held that an obviousness analysis should not be limited to the particular problem on which applicant’s patent claims are focused, but may also involve looking to other problems in the same, or similar, technological field. All in all, the Supreme Court upheld use of the Graham factors in an obviousness analysis, but called for a more flexible, common sense based approach than a rigid use of the TSM test in an obviousness analysis.

Referring again to the thermostat example, the approach of KSR would clearly dictate that, unlike use of the KSR test, a substitution of a nail for a screw in mounting a thermostat to a wall is an obvious variant, and should not be patentable.

If only all obviousness analyses were so simple. Although use of the TSM test in the thermostat example results in classifying subject matter that really is obvious as non-obvious, the TSM test was less subjective and easier to apply in more complex scenarios that involve more intricate prior art combinations than a substitution of one mounting mechanism for another. Although not always correct, strict application of the TSM test resulted in clarity for obviousness analysis.

The common sense approach of KSR worked well based on the facts presented there, placement of sensor on a pedal. But when the combination of prior art references presented by an Examiner get more intricate, such as making significant modifications to prior art references to make a combination work, the approach of KSR becomes quite subjective.

Patent applications in a KSR world

Given the inherent subjectivity in use of the flexible KSR test, as opposed to the more formulaic TSM test, navigating a patent application through the USPTO from filing to potential issuance can be challenging. With the leeway given by KSR, one patent Examiner may combine prior art references one way, while another patent Examiner may combine prior art references in a completely different way.

Guidelines for avoiding the obviousness rejection

So what is the answer? At the outset, prepare a strong, solid patent application that differentiates the subject matter from the prior art in a cogent manner. Although not exhaustive, the below guidelines are some helpful tools to use in preventing, or arguing for the withdrawal of, an obviousness rejection:

  1. Highlight Unpredictable Results in Patent Application - KSR discussed how obvious variants may do “no more than yield predictable results.” Accordingly, a patent application may be prepared to emphasize results that are not predictable, such as benefits that would not normally be appreciated by those of ordinary skill in the art as stemming from the claimed subject matter of the patent application.
  2. Argue Motivation to Combine Prior Art References – Although KSR disbanded with strict reliance on the TSM test, KSR did not disband use of the TSM test at all. Given the common sense based approach of KSR, an obviousness analysis that questions the motivation of one of ordinary skill in the art to combine prior art references is typically appropriate. For example, modifying a first prior art reference based on a second prior art reference may lead to practical ramifications that diminish use of the first prior art reference for its intended purpose. In other words, one of ordinary skill in the art in the real world looking at a first prior art reference likely wouldn’t be motivated to modify that prior art reference if such changes render it unsatisfactory for its intended purpose, as specifically provided for by the Federal Circuit in In re Gordon.
  3. Argue Results of Combination of Prior Art References – Often times, when an Office Action cites multiple prior art references, it is taken as a foregone conclusion that the claim elements of your patent application are actually taught by the combination of the prior art references. Yet, in many instances, that is not the case. At the most basic level, one prior art reference may teach some of the claim elements, and the other may teach the remainder to alleviate the deficiencies of the first. Yet, arguing that an element is missing from one of the references may not be enough. Patent Examiners may try to argue that the combination of references would somehow suggest the missing element. Therefore, what is typically necessary is to argue that a particular claim element is not present within any of the prior art references, and that one of ordinary skill in the art would not find it “obvious” to magically create that missing element based on just combining those prior art references.




  4. by Samuel K. Simpson
    USPTO Registered Patent Attorney, Patent Ingenuity, P.C.

    Patent Ingenuity is a patent law firm based in San Francisco, Silicon Valley, and Los Angeles, which has extensive experience in overcoming obviousness rejections throughout a wide range of patent applications spanning different technologies. A seasoned patent attorney at Patent Ingenuity can be available to provide you with an initial assessment as to the potential obviousness or non-obviousness of your invention.

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