Week 6 Blog #1: A Focus on Obviousness

The goal of this week's blog is to examine more into the case of obviousness in the patent world. As discussed in lecture, the non obvious requirement of the patent law looks at multiple pieces of prior art so a person having ordinary skills in the art wouldn't have easily thought of it given the plurality of prior art.

In lecture, an example we went over involved a "glow-in-the-dark toothbrush" invention that was filed to be patented. We noted that while the argument could be made that the invention is obvious when comparing it to the prior art of a glow stick and tooth brush, a case for non-obviousness could be constructed with the defense that the prior art references came from different fields, thus making it less obvious to combine the two prior art than one might conclude. Alternative design cases such as these and whenever an examiner refers to more prior art references has been shown to actually demonstrate the greater non-obvious nature of patent filings.

Bruce Kramer, a patent attorney at Sughrue Mion, PLLC, further delved into the case of obviousness in his article, "Nonobviousness- An Essential Requirement for Patentability". In this article, Mr. Kramer pushes into greater detail about the USPTO's definition of "non-obviousness. The concepts he focuses primarily on include the concepts of prior art, a person having ordinary skill in the art, and the time the invention was made.

In terms of prior art, similar to what we discussed in lecture, Mr. Kramer simply states the definition of what this constitutes, which is prior patents, published patent applications, journal articles, and other references upon which a patent examiner can rely on. When writing on "ordinary skill", Mr. Kramer makes it clear that this does not refer to an expert in the technology, but rather one of an average skill in the technology to which the technology pertains. Ordinary skill however can vary depending on the invention involved. Finally, the time the invention was made is important to consider. Due to the rapidly changing landscape of the technological sphere, it is critical for an examiner to distinguish whether a claimed invention would have been obvious in view of the state of the art at the time the invention was made, not at the time it is being examined. While it may be obvious today, an invention may have not been so obvious at the time it was made.

In the case of Graham v. John Deere Co. (1), the Supreme Court set forth three factual inquiries to be used in considering whether an invention is obvious or non obvious:

1. Determining the scope and content of the prior art
2. Ascertaining the differences between the prior art and the claims at issues; and
3. Resolving the level of ordinary skill in the pertinent art

In essence, when examining obviousness, the following principles ought to be applied in such as analysis:

1. The claimed invention must be considered as a whole 
2. The references must be considered as a whole and must suggest the desirability and thus the obviousness of making the combination
3. The references must be viewed without the benefit of impermissible hindsight afforded by the claimed invention
4. Reasonable expectation of success is the standard by which obviousness is determined 

By fulfilling these principles, non-obviousness can be established when making the case for a patent. While patent law pertaining to obviousness vs. non-obviousness still demonstrates many gray areas, specifically speaking to the broad-based nature of these principles, these factors that are considered in this analysis provide a baseline into determining the obviousness of certain patents when filed.