In the last column, we reviewed what constitutes "prior art" and the requirement that patentable inventions be novel. We now turn to a more complex question—when is an invention obvious and, therefore, unpatentable?
Section 103 of the patent statute builds upon the novelty bars of section 102 and extends them even further. The patent statute prohibits a patent even if the claimed invention is not identically disclosed or described in the prior art. Patentability is prohibited "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." Such an invention would be obvious.
The Supreme Court described the factual inquiries necessary to determine whether an invention is obvious. First, the scope and content of the prior art must be assessed. Second, the differences between the claimed invention and the prior art must be identified. Third, the level of ordinary skill in the pertinent art must be resolved.
A patent claim usually consists of a series of elements defining the invention. For example, a patent claim might recite the parts of a machine, steps of a process, or components of a composition. If a claimed invention is novel, then no single prior art reference or activity describes all elements of a claim. As is frequently the case, however, the invention arises from a combination of elements that already exist in the art, and it is their specific arrangement or combination that imparts novelty. Thus, when an examiner or court looks at the obviousness of a claim, it is usually in the context of combining prior art references because no single reference describes all elements of a claim.
Importantly, prior art references must be analogous to the invention for an appropriate combination. Analogous art arises if it is from the same field of endeavor. Analogous art also arises when it is reasonably pertinent to the problem solved by the invention because design incentives and other market forces can prompt variations of the art whether in the same field or a different one. There must, therefore, be some context for combining references before an invention can be considered obvious.
If a single element of the claim is absent from the prior art, the claim cannot be considered obvious because that element is wholly novel. If combining two or more references discloses all elements of a claim, there is a prima facie case of obviousness, and the burden shifts back to the applicant to demonstrate why the invention would be unobvious.
The Supreme Court also identified evidence inventors can use to support the nonobviousness of an invention. This evidence is sometimes referred to as "secondary considerations" and includes: (1) the commercial success of products or processes arising from the invention, (2) long-felt but unsolved needs that are met by the invention, (3) failure of others to solve problems the invention achieves, and (4) unexpected results and superior properties imparted by practicing the invention. One or more of these secondary considerations can be persuasive to the patent office or a court that the invention yielded a result that would have been unrealized or unexpected without the inventor's efforts.
The level ordinary skill and predictability in a pertinent art can be important factors tipping the balance toward or away from patentability. For example, in unpredictable fields like the chemical and cosmetic arts, inventions tend to be less obvious because one of ordinary skill may not have a reasonable expectation that the invention will result in successful, desired outcome. While in more predictable fields requiring less skill, obviousness is more commonly found because there is a reasonable expectation of success.
In summary, patentable inventions must not only be novel, they must be nonobvious over the prior art. Because obviousness is a factual question, reasonable minds frequently disagree on what is a patentable invention. This leaves much room for effective advocacy on the part of both inventors and those challenging patent validity.
Originally published in Intermountain West Society of Cosmetic Chemists Newsletter.
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