Patent office rejections based on obviousness are the most common, but most misunderstood, hurdles during prosecution of United States patent applications. Unfortunately this is an area where most business people generally ‘don’t know what they don’t know.’ Consequently, for patenting purposes one cannot conclude from a glance that specific subject matter is obvious. In fact, this conclusion is not possible even if the subject matter is directly compared to other previously existing objects or methods.
If patent eligible subject matter is sufficiently similar to previously existing tangible objects or methods, then that new subject matter is obvious and not entitled to patent protection. What exactly is sufficiently similar? The standards for obviousness (sufficiently similar) have changed over the years, and especially after a recent United States Supreme Court decision. In addition to this recent change in obviousness evaluations, there are many other tests for obviousness although in many instances a conclusive remains rife with subjectivity. However, everyone agrees that obviousness is NOT a lack of ‘newness’ and so subject matter can be new and yet so similar to something else that it does not qualify for a patent.
The business person also should not confuse patent eligibility with rejection of an invention based upon obviousness. Patent eligibility must be decided prior to obviousness and a very important recent United States Supreme court decision—In re Bilski— provides insight into the complexity of s patent eligibility. Assuming that the subject matter is patent eligible, the patent practitioner must then navigate the most recent Supreme Court test that addresses primarily new combinations of old components. Even if subject matter is patent-eligible, subject matter cannot be merely a new combination of old components that operates in a predictable manner and without unexpected or improved properties. For this test, one might immediately think of mechanical or electrical subject matter, but this test is also important in other technologies.
With the new combination test, patent examiners can consider whether unrelated technical areas experienced similar difficulties and solved a problem in a manner comparable to the inventor. They will also review whether it would have been ‘obvious to try’ solving a problem from a finite group of parameters, as well as possible experimental and field test solutions. Examiners may also now rely upon evidence of market or design pressures that would have led persons skilled in industrial sectors to inevitably produce the same changes as those of the inventor. Even if there are new parts within the old components of a new combination, the fact finders will ask whether that new part was used as a simple substitution for known components, and whether the new part functions in a particular and non–noteworthy manner.
As you may be concluding by now, the combination of old parts test is very tough, and makes rebuttal to an obviousness rejection extremely challenging. Formerly prior devices, described in patents and used to demonstrate obviousness by the examiner, required a teaching or suggestion from the patents that would lead one of ordinary skill to combine features within those patents. Now, the scope of where the fact finder may look, and what he or she may consider, is much broader and need not be within the references used to challenge the subject matter. However, the good news is that other tests survive that can lead to overcoming an obviousness rejection if the inventor is savvy and preserves the crucial evidence.
© 2011 Adrienne B. Naumann
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