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A bar to patentability with OBJECTION or a REJECTION from the patent office examiner’s office.

…what every lawyer should know

The Patent Guys, attorneys from the law office of Gertner Mandel, wrote this article about obvious bars to patentability for the Bergen County Bar Association Intellectual Property Committee.

Once a patent application is filed and eventually reaches a patent office examiner, the next step is for the examiner to issue an office action. These generally fall into two categories: an objection and a rejection.

An objection is directed to the form of the claim or other parts of the application as distinct from its substance. A rejection is directed to the merits of the patent application. A rejection, in essence, is the refusal to grant claims because the subject matter as claimed is considered unpatentable.

A rejection may be based on 35 U.S.C. §101 (threshold determination of patentability), section 102 (prior art reference discloses the same invention), §112 (patent application disclosure fails to enable – show how to make and use) and §103 (patent application is obvious in light of prior art references) or a combination of some or all of these criteria. In this edition, we will focus on the tests to be applied to determine obviousness – one of the more frequent rejections faced by patent practitioners.

Section 103 provides that a claimed invention (patent application) is not patent eligible if it would have been obvious to one of ordinary skill in the relevant art at the time of the invention. The determination of “nonobviousness” is made after establishing the scope and content of the prior art, the differences between the prior art and the claims at issue, and the level of ordinary skill in the pertinent art. Graham v. John Deere Co. of Kan. City, 383 U.S.1; 86 S.Ct. 684; 15 L. ed. 2d 545 (1966). Section 103 focuses on the differences between the subject matter sought to be patented and the prior art (what was known before as described in §102). If this difference is such that the subject matter as a whole would have been obvious at the time to a person skilled in the art, then the subject matter cannot be patented. Id.

So, the procedure to be followed to ascertain obviousness is first, determine the scope and content of the prior art; second, ascertain the differences between the prior art and the claimed invention and third, determine the level of ordinary skill in the art. Secondary considerations (e.g., commercial success, long felt but unresolved needs, failure of others) may be used to give light to the circumstances surrounding the origin of the subject matter sought to be patented. Once these inquiries have been resolved, then an obviousness determination can be made in considering the claimed invention in light of the prior art. Id.

The Court of Appeals for the Federal Circuit in an apparent attempt to employ the Graham factors with more uniformity and consistency employed the “teaching, suggestion, or motivation” (TSM) test under which a patent claim is only proved obvious if the prior art, the problem’s nature, or the knowledge of a person having ordinary skill in the art reveals some motivation or suggestion to combine the prior art.

In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398; 127 S. Ct 1727; 167 L. Ed. 2d 705 (2007), the Court held that the courts and patent examiners should not limit what is included as prior art against which the claimed invention should be compared for obviousness to the problem the inventor was looking to solve. The Court observed that the Court’s Graham holding provided an expansive and flexible approach to the obviousness question that is inconsistent with the way the Federal Circuit applied the TSM test. When a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another. If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, §103 likely bars its patentability. Moreover, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill. The inquiry is whether the improvement is more than the predictable use of prior art elements according to their established functions.

The KSR Court went on to note that to determine whether there was an apparent reason to combine the known elements in the way a patent claims, it will often be necessary to look to interrelated teachings of multiple patents; to the effects of demands known to the design community or present in the marketplace; and to the background knowledge possessed by a person having ordinary skill in the art. However, precise teachings are not required; consideration of the inferences and creative steps a person of ordinary skill in the art would employ is sufficient.

The KSR Court held that the TSM test may offer helpful insight into the obviousness inquiry as long as it is not applied in a rigid formulaic way. The Court observed, granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, for patents combining previously known elements, deprive prior inventions of their value or utility.

In short, courts and patent examiners are directed to apply the Graham factors in analyzing obviousness as follows: (i) consider prior art from beyond the problem the inventor was looking to solve; (ii) look beyond those prior art elements designed to solve the same problem; and (iii) obvious to try will result in an obviousness determination when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp.


The Patent Guys are attorneys in the Intellectual Property Practice Group of the law firm of Gertner Mandel LLC providing legal support for legal, technical & business issues.