In a powerpoint notes by Tom Irving of Finnegan, he summarised the developments in non-obviousness in great detail, listing many post-KSR cases. It is certainly a good albeit long reading. Of particular interest to me was how Irving suggested we could improve our odds of getting our patent claims approved against obviousness arguments by the USPTO.
We could use the "lead compound" case law results, that there are many choices to try prior to the invention, that results are unpredictable when we combine elements together and that knowing the properties does not equate to knowing the process. In other words, we have to show that it was not obvious (to try). Although the case was related to a pharmaceutical patent, the challenge can be used on any other cases.
Firstly, we have to show that there many unpredictable yet possible solutions. We would then require extensive testing to affirm if any are actually viable solutions. If a prior art pointing the general direction is used by the examiner to challenge the claim, it could be argued that it did not show solutions, which were unpredictable. The best would be that the prior art teaches away from the solution for example, by stating it is impossible based on in accurate predictions.
The second argument of unpredictable results when combining elements means that an ordinary skilled worker would not have thought of trying it, since he would not have thought that something unpredictable would happen.
The last point can be explained using a simple analogy. We know about carbon dioxide and oxygen and their properties, but we may not know how to get oxygen from carbon dioxide (of course we now know chlorophyll is a natural solution but this is just an analogy).
In all, I would say that this is a different phrasing on proving non-obviousness, putting the concepts in an easily understood manner.
Sources:
https://law.duke.edu/sites/default/files/centers/judicialstudies/patentlawintensive/wednesday_Irving-May_15_Dev_in_Non-Obviousness.pdf
We could use the "lead compound" case law results, that there are many choices to try prior to the invention, that results are unpredictable when we combine elements together and that knowing the properties does not equate to knowing the process. In other words, we have to show that it was not obvious (to try). Although the case was related to a pharmaceutical patent, the challenge can be used on any other cases.
Firstly, we have to show that there many unpredictable yet possible solutions. We would then require extensive testing to affirm if any are actually viable solutions. If a prior art pointing the general direction is used by the examiner to challenge the claim, it could be argued that it did not show solutions, which were unpredictable. The best would be that the prior art teaches away from the solution for example, by stating it is impossible based on in accurate predictions.
The second argument of unpredictable results when combining elements means that an ordinary skilled worker would not have thought of trying it, since he would not have thought that something unpredictable would happen.
The last point can be explained using a simple analogy. We know about carbon dioxide and oxygen and their properties, but we may not know how to get oxygen from carbon dioxide (of course we now know chlorophyll is a natural solution but this is just an analogy).
In all, I would say that this is a different phrasing on proving non-obviousness, putting the concepts in an easily understood manner.
Sources:
https://law.duke.edu/sites/default/files/centers/judicialstudies/patentlawintensive/wednesday_Irving-May_15_Dev_in_Non-Obviousness.pdf
Thanks Jun Yi! That analogy was actually very helpful.
ReplyDeleteThanks for pointing out the three ways in which one can argue against the ruling that something is obvious. From what we learn in class, in hindsight it is so easy to think that something is the logical next step when it may have not been that clear cut. I think your first point is really interesting. If an inventor has to demonstrate that there are many unpredictable possibilities, it seems like forcing excessive time to be spent on something quite unproductive.
ReplyDelete