Nonobviousness

1. Nonobviousness Intro to IP – Prof Merges 1.27.09

2. Prior Art Claimed Invention porcelain Defining the “Invention” Threshold: Ingenuity wood But this [substitution] can never be the subject of a patent. . . . The difference [between this new manufacture and the prior art is] destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.” [U]nless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application to it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of the degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skilled mechanic, not that of the inventor.” metal Hotchkiss v. Greenwood, 2 U.S. 248 (1850)

3. “flash of creative genius” test Patent Act of 1952 Defining the “Invention” Threshold: Ingenuity Problem: articulating an objective and determinative standard; otherwise subjective and vague “I know it when I see it.” Non-obviousness reqt made express • flash of genius Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 91 (1941)

4. 35 USC Sec 103 § 103. Conditions for patentability; non-obvious subject matter (a)A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made.

5. 35 USC Sec 103 § 103. Conditions for patentability; non-obvious subject matter (a)[Even if novel, no patent], 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.

6. 35 USC Sec 103 (a)[Even if novel, no patent], 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.

7. Bench Scientist 1 year experience Bench Scientist 15 years experience Nobel Laureate Hobbyist Level of Ordinary Skill in the Art Factors that may be considered: • Educational level of the inventor • Type of problems encountered in the art • Prior art solutions to the problems • Rapidity with which innovations are made • Sophistication of the technology • Educational level of active workers in the field But Extraordinary Knowledge: A person of ordinary skill is presumed to know of all relevant prior art.

8. Comparison of Differences • Subject matter sought to be patented must be considered as a whole • Strict identity not required • less precision than §102

9. Upper Plate Hinge Plate Graham v. John Deere Upper Plate Prior Art Hinge Plate Is it obvious to move the hinge plate from under the shank to above the shank? Improved Design Enhanced flexibility

10. Secondary Considerations Economic and motivational factors that may be considered: • Long-felt but unsolved need • Commercial success • Failed efforts of others • Copying by others • Praise for the invention • Unexpected results • Disbelief of experts Nexus Requirement

11. Claim Chart Invention Compared with Prior Art Rotating handle at end of bar Cutting element attached to bar Base, with passageway U-shaped bar Smith Article X X X Jones Patent X X Adams Slicer X X INVENTIONNOT ANTICIPATED; BUT OBVIOUS?

12. Rotating handle at end of bar Cutting element attached to bar Claim Elements Base, with passageway U-shaped bar September 1974 Cheese Industry Today All elements are present when both Reference A and Reference B are considered. The Ultimate Cheese Slicer J. Smith Reference A: Smith Article The popularity of wine and cheese parties has raised interest in cheese slicers that can be handled safely by people who are half-tanked. One promising design is a cutting board featuring a U-shaped bar that holds a tightened wire. A passageway in the cutting board base would ensure that the wire cut cleanly through the cheese. Non-obviousness requirement not met if suggestion, teaching, or motivation to combine elements for multiple references Tightening Handle Reference B: Jones, Cake Slicer Patent Dental Floss

13. Graham’s Spring Clamp • Graham’s second attempt at solution was more successful. • He added a spring mounting so that the clamp would give way when the forces on the shank were too great. • This invention successfully reduced bending and breaking of plow parts in rocky soil. • This invention also produced vibratory action that created alternating pockets and ridges that were capable of storing moisture that could sustain crops during dry periods.

14. Figure 4: Graham ‘811 Spring Clamp. The spring (66) at the front end of the clamp holds the plow shank flat against the I-beam frame. The shank is pivoting against the rear of the clamp and the pivoting compresses the spring.

15. Graham v. John Deere Is it obvious to move the hinge plate from position A under the shank to position 1 above the shank? C 3 2 B 1 A

16. Graham’s ‘811 Patent • Graham began marketing the clamp in the late 1940s or early 1950s, and continued producing it, with some modifications, for at least a decade and a half. • Some flaws became apparent with the design over time: • The shank would rub against the fixed upper plate of the clamp and cause wear. This wear was troublesome because the plate was connected directly to the frame of the plow and was difficult to replace. • The shank was held within the clamp only by the spring rod with a large hole. As it was pulled backwards, it would cause wear and damage in the spring rod.

17. Graham’s ‘798 Patent • Wear against upper plate and spring rod provided impetus for design of new clamp. • This is the patent at issue in Graham’s suit against John Deere. • Changes in the clamp: • Hinge plate has been moved above the shank so that the shank does not come into contact with the fixed upper plate. • The shank is secured to the hinge plate by a nut and bolt arrangement at the forward end and a stirrup at the rear. • Graham conceived of the design in 1950 but did not file patent application until August 27, 1951.

18. The Graham Test • Scope and content of the prior art • Difference between the prior art and the claims at issue • Level of ordinary skill in the pertinent art

19. Graham points • “[T]he 1952 [patent law] revision was not intended to change the general level of patentable invention. • Ultimate question of patentability is one of law; lends itself to “several basic factual inquiries”

20. KSR Int’l v. Teleflex The claimed invention at issue in this case is a straightforward combination of (i) a pre-existing type of “adjustable pedal,” and (ii) a pre-existing type of “electronic control” that is commonly used on newer cars.

22. Claim 4 A vehicle control pedal apparatus (12) comprising: a support (18) adapted to be mounted to a vehicle structure (20); an adjustable pedal assembly (22) having a pedal arm (14) moveable in force [sic] and aft directions with respect to said support (18);

23. a pivot (24) for pivotally supporting said adjustable pedal assembly (22) with respect to said support (18) and defining a pivot axis (26); and an electronic control (28) attached to said support (18) for controlling a vehicle system; said apparatus (12) characterized by said electronic control (28) being responsive to said pivot (24) for providing a signal (32) that corresponds to pedal arm position as said pedal arm (14) pivots about said pivot axis (26) between rest and applied positions wherein the position of said pivot (24) remains constant while said pedal arm (14) moves in fore and aft directions with respect to said pivot (24).

25. Federal Circuit opinion The specification of the ’565 patent indicates that prior-art pedal assemblies incorporating an electronic control suffered from being too bulky, complex, and expensive to manufacture. See ’565 patent, col. 1, ll. 48-53. It was this problem that the ’565 patent set out to address. See id. col. 2, ll. 2-5.

26. Fed Cir. We agree with Teleflex that the district court did not apply the correct teaching-suggestion-motivation test. We also agree that, under that test, genuine issues of material fact exist, so as to render summary judgment of obviousness improper. -- Fed Cir case no. 04-1152, slip op at 10.

27. Under our case law, whether based on the nature of the problem to be solved, the express teachings of the prior art, or the knowledge of one of ordinary skill in the art, the district court was required to make specific findings as to whether there was a suggestion or motivation to combine the teachings of Asano with an electronic control in the particular manner claimed by claim 4 of the ’565 patent. See Kotzab, 217 F.3d at 1371; Rouffet, 149 F.3d at 1357. That is, the district court was required to make specific findings as to a suggestion or motivation to attach an electronic control to the support bracket of the Asano assembly.

28. KSR INTERNATIONAL CO. v. TELEFLEX INC. 127 S.Ct. 1727 (April 30, 2007)

29. [T]he Federal Circuit has employed an approach referred to by the parties as the “teaching, suggestion, or motivation” test (TSM test), under which a patent claim is only proved obvious if “some motivation or suggestion to com bine the prior art teachings” can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art.

30. Asano Pedal

31. Sensor prior art • Integrated and freestanding pedal sensors, described and claimed in various prior art patents

32. Engelgau had not included Asano among the prior art references, and Asano was not mentioned in the patent’s prosecution. Thus, the PTO did not have before it an adjustable pedal with a fixed pivot point.

34. Supreme Ct. holding “We begin by rejecting the rigid approach of the Court of Appeals. Throughout this Court’s engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here.”

35. Highlights from opinion • US v Adams and “teaching away”

36. When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.

37. “Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit.”

38. A “court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”

39. In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.

40. 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 has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.

41. A person having ordinary skill in the art could have combined Asano with a pedal position sensor in a fashion encompassed by claim 4, and would have seen the benefits of doing so.

42. Graham v. John Deere Is it obvious to move the hinge plate from position A under the shank to position 1 above the shank? C 3 2 B 1 A

43. Ortho-McNeil v Mylan • 520 F.3d 1358, 86 U.S.P.Q.2d 1196 (Fed Cir 2008) • Enablement issue • Nonobviousness

44. http://www.topamax.com/topamax/index.html

45. Claims for patent relating to anticonvulsive drug topiramate were not obvious; challenges of inventive process would have prevented one of ordinary skill in the art from traversing the multiple obstacles to easily produce the invention in light of the evidence available at the time of invention.

46. [T]his invention, contrary to Mylan's characterization, does not present a finite (and small in the context of the art) number of options easily traversed to show obviousness. The passage above in KSR posits a situation with a finite, and in the context of the art, small or easily traversed, number of options that would convince an ordinarily skilled artisan of obviousness. In this case, the record shows that a person of ordinary skill would not even be likely to start with 2,3:4,5 di-isopropylidene fructose (DPF), as Dr. Maryanoff did.

47. Merges, “Uncertainty and the Standard of Patentability,” 7 [Berkeley] High Tech. L.J. 1 (1993).