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The need for a clear obviousness framework

In my previous article (link), the murky area of “obviousness” rejections of patent applications under 35 U.S.C. 103 was discussed. Particular attention was given to how the United States Patent & Trademark Office (USPTO) may reject your patent application as being an “obvious” variant of previously published ideas. In continuation, this article suggests some reforms to help provide applicants and Examiners with better guidance as to what may or may not be patentable.

Patent obviousness is the premise that even if an idea has not been previously contemplated by someone else, it cannot be patented if it is “close enough” to what was previously contemplated. After a patent application is filed, “obviousness” is a common reason for rejection by the USPTO.

Why is reform needed for obviousness guidelines?

Obviousness rejections under 35 U.S.C. 103 are often times the biggest impediments that need to be overcome in the patent application process. The same prior art references may be used by Patent Examiners for many months, or even years, to reject a patent application. Yet, this crucially important area of patent law has subjective guidelines, at best.

The Supreme Court in KSR International Co. v. Teleflex Inc. was critical of the teaching, suggestion, motivation (“TSM”) test as “rigid” and called for a “flexible” approach to obviousness that was rooted in common sense. And the common sense approach advocated by the Supreme Court is quite sensible (no pun intended). Yet, the Supreme Court did not provide any type of actionable framework of what the USPTO should be doing instead. All that is clear from KSR is that the Graham Factors, as set forth by the Supreme Court in Graham v. John Deere, were upheld, and the TSM test should not be strictly relied upon.

The TSM Test and Non-Obviousness

  1. Is the prior art instrumental in teaching the reader the method of producing the invention?
  2. Does the prior art suggest any method of producing the invention in question?
  3. Does the prior art talk about problems related to a particular technology motivating an invention in a particular manner?

The TSM test sets a very high hurdle for an obviousness determination.

Given the importance of the obviousness analysis (often make-or-break for many patent applications), shouldn’t there be a clear framework in place? And no, the Graham Factors are not clear enough on their own. For example, after Graham Factor #2 of ascertaining the differences between the prior art and the claims at issue, the Graham Factors do not explain what to do with those differences. How much of a difference is obvious, and how much is not? As another example, Graham factor #3 of determining the level of ordinary skill in the pertinent art has been a long-standing factor that should be quite important, yet when was the last time this factor was given much attention in an Office Action?

Patent Applicants deserve a fair and equitable obviousness analysis of their patent applications, not one that changes according to the subjective viewpoints that vary from Examiner to Examiner, as dictated by human nature. Although some subjectivity will play a role in any obviousness analysis, the purpose of this article is to suggest an obviousness framework that may be implemented with robust criteria to reinforce thorough application of the Graham Factors, allow for the common sense approach dictated by KSR, and minimize inherent subjectivity.

New obviousness framework under 35 u.s.c. 103

To ensure consideration of the actual language of 35 U.S.C. 103, the term “obvious” should be defined. After all, that one word is so central to the patentability of most patent applications. Obvious is defined as “easily seen, recognized, or understood.” Accordingly, one of ordinary skill in the art should be able to easily recognize an invention from a review of the combined prior art references.

With that in mind, the following is a new framework for analyzing whether or not a patent claim is indeed obvious:

Step 1: Establish the level of ordinary skill in the art via evidence

Often times, Office Actions gloss over what the level of ordinary skill in the art is for a given technological field. Yet, that analysis is critical.

A person having ordinary skill in the art (abbreviated PHOSITA), is a fictional person who is considered to have the normal skills and knowledge – no more, no less -- in a particular technical field. He or she mainly serves as a reference for determining whether an invention is obvious or non-obvious.

The language of 35 U.S.C. 103 does not just refer to any skill in the art, but rather “ordinary skill.” Even if a person of extraordinary skill in the art (experienced, extremely knowledgeable, etc.) were to recognize a particular result from a combination of prior art references, that would not necessarily render the patent claims obvious. What is necessary is that one of ordinary skill (medium experience, medium knowledge, etc.) in the art would reach such a conclusion. To render this step as objective as possible, an Office Action should produce a publication evidencing what is entailed for the skill level to be considered “ordinary” in the particular technological field of the patent claims. For example, an article outlining the amount of experience to obtain mediocre knowledge in a particular technological field would suffice for such publication.

As a result, a clear indication will be presented as to who would be considered one of ordinary skill in the art, and what skills would typically be associated with that person. This way, an obviousness analysis may be presented in a spirit that thoroughly reinforces, rather than discounts, the emphasis of the Graham Factors on “ordinary” level of skill in the art.

Step 2A: Determine positive motivation to combine by one of ordinary skill in the art

Although the Supreme Court in KSR criticized a narrow focus of the TSM test to a particular problem, KSR did not dismiss use of the TSM test, especially when considering other problems facing those of ordinary skill in the art. The Federal Circuit has continued using motivation to combine or modify prior art references, as reflected in the Federal Circuit decision of In re Stepan.

Accordingly, a Patent Examiner should have the burden of proof in establishing a positive motivation to combine the prior art references at hand determined by one of ordinary skill in the art independently of Applicant’s Specification. The burden should not be on the Applicant to show that motivation to combine is not present, such as the prior art references teaching away from use with each other. In other words, a Patent Examiner should be allowed to use prior art references in the same, or similar, field as the patent claims of a patent application, but one of ordinary skill in the art should have some meaningful reason for doing so.

As an example, the previous article (link to previous article) discussed an invention having a thermostat that is wall-mounted via nails, as opposed to the conventional method using screws. Instead, the thermostat may be wall-mounted via magnets to allow the thermostat to be detachable; such use of a different attachment mechanism allows for the meaningful detachment of the thermostat to prevent adjustments to temperature controls in various environments (office buildings, schools, etc.).

A Patent Examiner may find a first prior art reference that discloses a wall-mounted thermostat that is mounted via screws, and a second prior art reference that discloses magnets that are adhered to a digital clock. A Patent Examiner could state that all of the claim elements are found in the prior art references, but why would one of ordinary skill in the art want to combine those elements? That it could be easily done (replacing screws with magnets) should not be enough of a reason. The benefit of preventing tampering was recognized by the Applicant, but may not have been easily recognized by one of ordinary skill in the art.

Therefore, the first Step should require that an Office Action provide a thorough reason as to why one of ordinary skill in the art even cares to combine the prior art references. Patent Examination should not simply be a scavenger hunt for different patent claim elements in multiple prior art references – there should be some meaningful connection. If one of ordinary skill would not have any good reason to combine the prior art references, an obviousness rejection should not be issued.

Step 2B: Determine if a motivated combination is obvious to one of ordinary skill in the art

After determining that one of ordinary skill in the art would be motivated to combine or modify multiple prior art references, the question becomes whether or not the claimed elements in the patent application are an “obvious” (easily recognized) result of the combination of the prior art references.

To answer that question, a hypothetical isolation of the prior art references should be considered. The person of the established ordinary level of skill, when viewing the prior art references in isolation of the patent claims in the patent application, should easily recognize the claims based on viewing the prior art references for a determination of “obviousness.” No bias should be present, which would naturally occur if that person was viewing the claims of the patent application at the same time as the prior art references.

To be more specific in the context of the thermostat examples, evidence may be provided that a thermostat technician takes about two to three years of training to acquire an ordinary level of skill. Further evidence may be provided to establish that thermostat technicians with two to three years of experience typically use a screwdriver and a hammer on a regular basis, but are not familiar with other attachment mechanisms. As a result, the thermostat technician, when presented with a first prior art reference discussing a thermostat being mounted to a wall with screws and a second prior art reference that uses nails to mount other types of similar devices other than thermostats, may easily recognize that nails could be used instead of screws for mounting the thermostat to a wall without any bias from viewing the patent application claims. That result should be obvious.

Conversely, the thermostat technician, when presented with a first prior art reference discussing a thermostat being mounted to a wall with screws and a second prior art reference that uses magnets for a digital clock, would mostly likely state that he or she is not familiar with using magnets in the context of thermostats. He or she may have a hammer and a screwdriver on his or her work belt, but would not know much about magnets. That result should not be obvious.

It is entirely possible that the thermostat technician may have a supervisor, who is considered to have an extraordinary level of skill (more than ten years’ experience), that would be so familiar with the intricacies of thermostats that a tweak to include magnets would be easily recognized by himself or herself. That result may be obvious to one of extraordinary skill in the art, but not to one of ordinary skill in the art.

Could the thermostat technician experiment and try to learn about magnets? Sure, but the language of 35 U.S.C. 103 is “obvious,” not “can be derived through experimentation.” Any type of experimentation is really inconsistent with “obviousness” (easily understood). If the result is not readily apparent to one of ordinary skill in the art from the prior art references, then the result isn’t obvious, but rather requires that person start inventing, which is the path of the patent applicant.

Providing clarity for obviousness is beneficial to the public

The above-mentioned obviousness framework is intended to provide more objective criteria, consistent with the Graham Factors, for patent applicants and Examiners. So much time and resources are expended by patent applicants and Patent Examiners trying to determine obviousness, which can mostly be attributed to the current subjective approach to obviousness. By implementing an obviousness framework, such as indicated above, the goal is to provide a more predictable and fair patent system.





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

Samuel K. Simpson is a USPTO Registered Patent Attorney and the founder of Patent Ingenuity P.C. He holds a J.D. from The George Washington University Law School and has obtained over 100 granted patents.


Patent Ingenuity is a patent law firm based in San Francisco, Silicon Valley, and Los Angeles, which has extensive experience in preparing Responses to Office Actions, as well as Appeals. A seasoned patent attorney at Patent Ingenuity can be available to provide you with guidance as to the best path forward to getting your patent application granted.

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