7. Obviousness

Patents / Biotechnology / US Biotechnology Practice

7. Obviousness

Again we will confine our discussion to points that may be specific to United States patent law and gloss over points that are common to all patent systems.

The leading decision on the question of obviousness is that of the Supreme Court in Graham v. John Deere .[166] The case related to a modification of the mounting of the shank of a plow which was intended to absorb the shock that occurs when the blade of the plow hits rocks in the ground. The modification involved locating the shank below rather than above the plate on which it was mounted. At trial the patentees argued that this arrangement allowed the shank to flex along its entire length whereas the prior arrangement permitted only a short portion of the shank to flex and that this change reduced the wear on the shank. The Supreme Court noted that no such argument had been used before the Patent Office when the application was examined and concluded that such arguments were an afterthought and held the claimed invention to be obvious. In doing so, the Court set out a tripartite test for obviousness. The court stated:

While the ultimate question of patent validity is one of law, the section 103 condition,...lends itself to several basic factual inquiries. Under section 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined.

The court then went on to consider what it called "secondary considerations" in the following terms:

Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject mater sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

More recent case law has elevated these “secondary factors” to “objective factors” and regards them as being of equal importance to the other three factors set out by the Supreme Court in the Graham case. However, if application of the first three factors points to a conclusion of obviousness, the invention will be said to be prima facie obvious and the burden will shift to the applicant to show that by application of the objective factors, the prima facie case has been overcome. As discussed below, this is a matter of particular importance in dealing with questions of structural obviousness in chemical inventions.

One of the key questions in applying these factors is, of course, the extent to which it is proper to combine the teachings of different pieces of prior art. The Federal Circuit summarized its prior case law on this question to reach a conclusion of obviousness in Ruiz v. A. B. Chance Co. [167]

The reason, suggestion, or motivation to combine may be found explicitly or implicitly: 1) in the prior art references themselves; 2) in the knowledge of those of ordinary skill in the art that certain references, or disclosures in those references, are of special interest or importance in the field; or 3) from the nature of the problem to be solved leading inventors to look to references relating to possible solutions to that problem. While the references need not expressly teach that the disclosure contained therein should be combined with another, the showing of combinability must be clear and particular. (Internal citations omitted.)

However, as was noted in In re Beattie: [168]

As long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references must be combined for the reasons contemplated by the inventor.

Mere optimization of a prior invention by routine experimentation has been held to be prima facie obvious, [169] as has simply changing the order in which a process has been carried out or splitting a single step of the prior art into two. [170] Such prima facie holdings may, however, be overcome in suitable cases, for example by showing non-obvious results.

[166] 383 U.S. 1, 148 USPQ 459 (1966).

[167] 57 USPQ2d 1161 (2000). A generally similar summary was given in Pro-Mold and Tool Inc. v. Great Lakes Plastics, Inc, 75 F.3d 1568, 37 USPQ2d 1626 (Fed. Cir. 1996).

[168] 974 F.2d 1309, 24 USPQ2d 1040 (Fed. Cir. 1992).

[169] Allen v. Coe, 57 USPQ 136.

[170] Ex parte Rubin, 128 USPQ 159 (1959).

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