The USPTO's examination guidelines for determining obviousness is listed under 35 USC § 103 (Title 35 of the United States Code Section 103). Apart from the KSR case mentioned in this week's class, it also lists guidelines derived from other cases (only briefly mentioned in class), but they mainly improve the Graham factors.
The Graham factors are some basic questions of fact which should first be determined - the scope and content of prior art, differences between claimed invention and prior art, and the level of ordinary skill in the prior art. These are the main factors used for every obviousness decision by the Supreme Court since the Graham case in 1966. Of course, here we see that it is obvious the factors are important. However, as I mentioned in my earlier post, it is only obvious because we already know it. What was not obvious then though was what was brought up in the KSR case, which again is obvious to us now. Interesting!
Anyway, the section describes in detail what is required in each factor. I will discuss about the "differences between claimed invention and prior art" in this post, that is the claimed invention must be considered as a whole. This stemmed from a case that an invention was argued to be only a structural difference from a prior art, although if considered as a whole it eliminated a problem from the prior art. Another case involved a claim for a three-step process, of which the first two steps were non-obvious while the third was obvious. If we did not consider the claim as a whole, the third step would become invalid then, but it was actually a necessary step in the invented process.
Also, if we distilled the invention down to the "gist" or "thrust" of the invention, it disregards the "as a whole" requirement. What does this mean? Basically, if we focused on the main point, or any point for that matter, of the invention, we are not taking the invention as a whole. I would say that this rule mainly serves as a reminder to judges not to focus on any specific point. In fact, it is a crime we always commit unknowingly.
Sources:
http://www.uspto.gov/web/offices/pac/mpep/s2141.html
http://www.patenthawk.com/blog/2005/03/handling_103_rejections.html
http://www.the-business-of-patents.com/obviousness.html
The Graham factors are some basic questions of fact which should first be determined - the scope and content of prior art, differences between claimed invention and prior art, and the level of ordinary skill in the prior art. These are the main factors used for every obviousness decision by the Supreme Court since the Graham case in 1966. Of course, here we see that it is obvious the factors are important. However, as I mentioned in my earlier post, it is only obvious because we already know it. What was not obvious then though was what was brought up in the KSR case, which again is obvious to us now. Interesting!
Anyway, the section describes in detail what is required in each factor. I will discuss about the "differences between claimed invention and prior art" in this post, that is the claimed invention must be considered as a whole. This stemmed from a case that an invention was argued to be only a structural difference from a prior art, although if considered as a whole it eliminated a problem from the prior art. Another case involved a claim for a three-step process, of which the first two steps were non-obvious while the third was obvious. If we did not consider the claim as a whole, the third step would become invalid then, but it was actually a necessary step in the invented process.
Also, if we distilled the invention down to the "gist" or "thrust" of the invention, it disregards the "as a whole" requirement. What does this mean? Basically, if we focused on the main point, or any point for that matter, of the invention, we are not taking the invention as a whole. I would say that this rule mainly serves as a reminder to judges not to focus on any specific point. In fact, it is a crime we always commit unknowingly.
Sources:
http://www.uspto.gov/web/offices/pac/mpep/s2141.html
http://www.patenthawk.com/blog/2005/03/handling_103_rejections.html
http://www.the-business-of-patents.com/obviousness.html
The difference between the claimed invention and the prior art(s) can be interpreted differently. An invention can be composed of 10 different prior arts, or maybe it can be decomposed into 2 major prior arts. What is missing from the prior arts with respect to the claimed invention is an inventive gap. EPO called it inventive step, and closely examined the technical problem this inventive step tries to solve, whether it obvious or not. I feel like USPTO is still lacking the explanation to narrow down the problem. Pruning the problem space is the first essential step to the solution. Though I might be too scientific about the definition, I think bringing a more engineering-minded approach to the non-obviousness problem will make it less debatable and more definite.
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