Nonobviousness Under 35 U.S.C. § 103

1. Nonobviousness Under35 U.S.C. § 103 The Requirement and How to Deal with the Same June 2013

2. Table of Contents 2 13 18 20 25 40 KSR Int’l Co. v. Teleflex Inc. ....................................................................................... Combating Obviousness ………….............................................................................. 35 USC § 103 ............................................................................................................. Disqualifying Prior Art ................................................................................................. Rebutting Prima Facie Case ...................................................................................... Example Case ............................................................................................................

3. KSR Int’l Co. v. Teleflex Inc. • Teleflex sued KSR for alleged infringement of U.S. Patent No. 6,237,565, which claims a gas pedal/electronic sensor combination. • District Court granted summary judgment to KSR, saying the invention was obvious. 298 F.Supp2d 581 (E.D. Mich. 2003) • Federal Circuit overruled: no express teaching suggestion, or motivation to combine prior art references. 119 Fed. Appx. 282(Fed. Cir. 2006) • Supreme Court reversed Federal Circuit

4. KSR Int’l Co. v. Teleflex Inc. (Cont.) Facts • Background of Teleflex ‘565 patent: - Conventional pedal assembly includes both an adjustment apparatus and an electronic throttle control - However, these pedal assemblies can be complex with a great number of parts. In addition, these pedal assemblies can be expensive, time consuming to assemble, and require a significant amount of packaging space • Objective of Teleflex ‘565 patent: To design a smaller, less complex, and less expensive electronic pedal assembly

5. KSR Int’l Co. v. Teleflex Inc. (Cont.) Prior Art • Asano, U.S. Patent No. 5,010,782, discloses every element of the claim, except for electronic control • Utilizes a mechanical throttle cable (instead of electronic control) • Includes pivot point that remains constant during adjustment • Not before the USPTO during prosecution • CTS 503 – “off-the-shelf” electronic control • Expert witness • Evidence of Market trend in the 1990’s • Install computers in cars to control engine operation, including electronic-controlled throttles. • Strong incentive to convert mechanical pedals to electronic pedals.

6. KSR Int’l Co. v. Teleflex Inc. (Cont.) Additional Prior Art • Rixon, U.S. Patent No. 5,819,593, discloses: • Electronic control (ETC) attached to the pedal of an adjustable pedal system; • Not a pedal support bracket • As a result, ETC moves during pedal adjustment, which can be undesirable due to the potential for electrical connector wire fatigue failure and/or insulation abrasion • Smith, U.S. Patent No. 5,063,811, discloses: • ETC attached to the pedal support bracket housing in a regular accelerator assembly • As a result, electrical components are located outside of a travel path of a pedal to avoid contamination; and wirings are prevented from chafing and wear since the bracket housing remains stationary during pedal operations • Not an adjustable pedal assembly

7. KSR Int’l Co. v. Teleflex Inc. (Cont.) • District Court applied the suggestion test • Found that the nature of the problem (creating a smaller, less complex, cheaper pedal assembly), combined with the prior art, implicitly suggested this combination. • No finding that this suggestion was in prior art, merely an assertion that was in nature of problem. • Patent invalid for obviousness; granted summary judgment to defendant KSR.

8. KSR Int’l Co. v. Teleflex Inc. (Cont.) • Federal Court vacated and remanded • Reliance on the nature of the problem to “suggest” is not the proper application of the test • Still need to make factual finding that this suggestion is in the prior art as opposed to conclusory statement • The suggestion test requires that the prior art contain specific references that must be cited and there must be factual findings of this suggestion. • Unpublished and informal decision • Did not decide outcome of case

9. KSR Int’l Co. v. Teleflex Inc. (Cont.) • Supreme Court granted Certiorari • Petition for certiorari • Issue is whether there must be evidence in the prior art of a suggestion. • Amicus briefs from Solicitor General and law professors requesting that Supreme Court of the United States get rid of the “suggestion” test.

10. KSR Int’l Co. v. Teleflex Inc. (Cont.) • Precise issue: • Whether the Federal Circuit has erred in holding that a claimed invention cannot be held “obvious”, and thus unpatentable under 35 U.S.C. § 103(a), in the absence of some proven “‘teaching, suggestion, or motivation’ that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.”

11. KSR Int’l Co. v. Teleflex Inc. (Cont.) • No necessary inconsistency between the idea underlying the “TSM” test and the Graham analysis • Federal Circuit’s “TSM” test as helpful insights to determine obviousness. • Endorsed a more flexible application of the “TSM” test, as noted by the Federal Circuit inIn re Kahn, Alza Corporation and DyStar. • Limited criticism to “rigid application” of the Federal Circuit’s “TSM” test in specific case.

12. KSR Int’l Co. v. Teleflex Inc. (Cont.) • TSM should not be applied rigidly • Prior art need not explicitly disclose reason to combine references • Any problem known in the art can provide motivation to combine references, not just problem solved by inventor • Emphasized that need to look to all evidence

13. KSR Int’l Co. v. Teleflex Inc. (Cont.) • KSR: Summary • Must provide some reason to combine prior art • Reason need not be expressly stated in the prior art • Some evidence must still be presented

14. Combating Obviousness • Restated Tests for Common Sense and Obvious to try • when there is a design need or market pressure to solve a problem andthere 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. • Test has two parts requiring evidence • 1. Evidence of design need or market pressure of identified problem. • 2. Finite number of solutions. • Pieces of puzzle: only so many ways to put together. • Conversely, if large number of ways, not obvious to try

15. Combating Obviousness (Cont.) • Patent Examiners or judges will likely resort to “common sense” since is easy and conclusory • Problem is lack of evidence to sustain conclusion. • “Common sense” or “common knowledge” can only be applied to analyze the evidence in the record, and cannot substitute hard evidence. • In re Sang Su Lee, 277 F.3d 1338 (Fed. Cir. 2002) • “[c]ommon knowledge and common sense,” even if assumed to derive from the agency's expertise, do not substitute for authority when the law requires authority; and • In re Zurko, 258 F.3d 1379 (Fed. Cir. 2001) • “[T]he Board must point to some concrete evidence in the record in support of these [obviousness] findings [based upon common sense]. To hold otherwise would render the process of appellate review for substantial evidence on the record a meaningless exercise.” • Supreme Court acknowledged this and cited In re Kahnfor this proposition. • Patent owners will need to be aware of need to file evidence and require evidence from Examiners/defendants.

16. Combating Obviousness (Cont.) • Examiner must first provide evidence • Not conclusive, just enough to establish prima facie case • What is a prima facie case? • Evidence that each element exists in the prior art • Evidence as to why the elements would be combined into the recited invention • Must articulate evidence as to obviousness

17. Combating Obviousness (Cont.) • Primary fight is prima facie case • Why: Applicant does not have to submit evidence of nonobviousness • Want to show that the Examiner did not make prima facie case • Example: • Prior art does not show one claim element • Prior Art would not be combined to meet claimed invention • Conflicting prior art teachings • No evidence of reason to make the combination

18. Combating Obviousness (Cont.) • Must be ready to rebut prima facie case • Require evidence of or detailed reasoning of • Problem, • A design need or market pressure to solve a problem, and • There are a finite number of identified, predictable solutions. • Applicants must be ready to supply contradictory evidence • Skepticism and specific criticism of combination • Usually found in Background of Invention sections in applied prior art • Market force not to make combination • Bulky, expensive. • Evidence of teaching away from combination. • Combination becomes unworkable. • Need to ensure that the record as a whole explains why it would not let one market force override other considerations. • Evidence that are not small number of variations, but large numbers of variations • Applicants need to understand KSR is not really a change to the law • Only change is use of existing doctrines.

19. 35 USC 103 (for pre-AIA applications) 35 U.S.C. 103 (pre-AIA) 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 , 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. (b) …………………………… (c) (1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person. (2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if — (A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made; (B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement. (3) For purposes of paragraph (2), the term “joint research agreement ” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

20. 35 USC 103 (post-AIA) • 35 U.S.C. 103 Conditions for patentability; non-obvious subject matter. • A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 , if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

21. Disqualifying Prior Art (Mostly Pre-AIA Methods) • Eliminate portion of combination without making arguments • Most Common Disqualifier (for Pre-AIA) • 35 U.S.C. § 103(c) • Some prior art is not considered in the obviousness inquiry

22. Disqualifying Prior Art (Pre-AIA) • 35 U.S.C. § 103(c): Prior art will not be considered if • Prior art under 35 U.S.C. §§ 102(e),(f),(g) • At the time the invention was made, the prior art and the invention owned by, or subject to an obligation to assign to, the same person (entity) • Does not apply to other prior art • 35 U.S.C. §§ 102(a),(b) • Very powerful since most obviousness rejections involve applicant’s prior invention • Also rebuts prima facie basis of rejection, so no evidence needs to be submitted by applicant • Allows applicants not to construe or criticize own prior art

23. Disqualifying Prior Art (Pre-AIA) • Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act) • Purpose: Exempt Subject Matter Common To Joint Researchers • CREATE Act Splits 35 U.S.C. § 103(c) into two subparts • U.S.C. §(c)(1) is same as old U.S.C. § 103(c) • Commonly owned prior art not eligible unless reference is 35 USC 102(b) (essentially) • U.S.C. §(c)(2) is new • Allows multiple patent application owners to be treated as a common owner

24. Disqualifying Prior Art (Pre-AIA) • Summarization of Qualification for CREATE Exemption • Three Basic Requirements • Needs there to be joint research agreement in effect when application filed • Needs to be a written agreement • Claimed invention resulted from joint research • Application amended to name agreement • Allows applicants not to construe or criticize own prior art

25. Disqualifying Prior Art (Pre-AIA) • Use Declaration under 37 CFR 1.131 • Used to disqualify a U.S. patent or U.S. patent application publication as prior art in an obviousness rejection under 35 USC 103 (see MPEP 718). • Antedate one of the references • Evidence of prior conception • Evidence of diligence • Evidence of reduction to practice

26. Rebutting Prima Facie Case • Two ways to present evidence to rebut • 1. Evidence of record • Applied prior art • Prior art submitted in IDS • 2. Expert testimony • Introduced by 37 CFR 1.132 Declaration

27. Rebutting Prima Facie Case (Cont.) • 37 CFR 1.132 Declaration • Used to submit many different kinds of evidence to remove reference as prior art or support patentability (see MPEP 716) • Subject matter of reference is attributable to inventors, shown by • declaration by authors of reference • evidence of communications between authors and inventors prior to publication

28. Rebutting Prima Facie Case (Cont.) • What evidence to submit in Declaration under Rule 132 • Any indicia of nonobviousness for Graham v. John Deere evaluation • Comparative test results • State of prior art • Response to invention • What is obvious to try in art • Unexpected Results

29. Rebutting Prima Facie Case (Cont.) • The more potential solutions, the less likely the attempt will be obvious • Takeda Chemical Industries Ltd. v. Alphapharm Pty., 83 USPQ 2d 1169 (Fed. Cir. 2007) • Mere evidence that known technique could be used does not mean would be obvious if no expectation of improvement and large number of combinations resulting • Need evidence that not finite number of solutions • Evidence combats obvious to try

30. Rebutting Prima Facie Case (Cont.) • Best evidence of nonobviousness: • Is there express evidence in prior art as to why combination would NOT be made? • Gold standard for proving obviousness • Example: find academic paper saying that should not try adding new element

31. Rebutting Prima Facie Case (Cont.) • Usually criticism comes in the form of Background of invention saying not to use reference in way alleged by Examiner or Defendant • Example: • Claim is to A+B+C • Prior Art A Teaches A+C • Prior Art B Teaches B+C, but warns that use of A in A+C has safety problems • Result is one skilled in the art would not use A+B+C

32. Rebutting Prima Facie Case (Cont.) • Evidence of Praise in industry is evidence of nonobviousness • Praise in the industry for a patented invention, and specifically praise from a competitor tends to “indicat[e] that the invention was not obvious” • Allen Archery, Inc. v. Browning Mfg. Co., 819 F.2d 1087, 1092 (Fed. Cir. 1987) • Other evidence can be industry awards • Similar to commercial success • More persuasive since competitors acknowledging nonobviousness, not consumers or academia

33. Rebutting Prima Facie Case (Cont.) • Caution: Commercial Success • Evidence of commercial success can actually provide motivation to make combination • Evidence of desirability • Ritchie v. Vast Resources, Inc., 563 F.3d 1334 (Fed Cir. 2009) • Best evidence is long-felt need, doubt of experts, unexpected results • Need evidence everyone thought the invention was a bad idea • Hard since inventor believes invention is good • Important to prove that such a combination was generally thought to be a bad idea

34. Rebutting Prima Facie Case (Cont.) • Evidence of Copying Invented Solution • Is evidence of copying patent evidence of non-obviousness? • Not always, but can be a form of praise and acknowledgement of newness

35. Rebutting Prima Facie Case (Cont.) • Power-One, Inc. v. Artesyn Technologies, Inc., 599 F3d 1343 (Fed. Cir. 2010) • Power-One put into evidence that Artesyn had • Copied Power-One’s patented design, • Artesyn then touted as an advancement in the industry on introduction of its copied product. • “Artesyn’s contemporaneous reaction to Power-One’s invention, and the industry’s reaction, demonstrate the unobviousness of the invention disclosed in the ’125 patent.” • The evidence of copying, as well as Artesyn’s own advertising represented an admission usable as a secondary consideration of nonobviousness.

36. Rebutting Prima Facie Case (Cont.) • Comparative test results include • comparison with closest prior art • show unexpected properties or unexpectedly superior results • explanation by expert of why differences significant (in kind, not merely degree) and unexpected • tests may be separate—may compare invention with published specifications of prior art

37. Rebutting Prima Facie Case (Cont.) • State of prior art, by providing evidence of • Level of ordinary skill defined by person with knowledge of art • Problem solved by invention discovered by inventors (solution may be obvious once cause of problem is known) • Expressions of desirability of features provided by invention • Others' unsuccessful search for solution provided by invention • Conventional wisdom discouraged solution used by invention • Explaining why another field of technology would not be considered for solution by person of ordinary skill in pertinent art

38. Rebutting Prima Facie Case (Cont.) • Response to invention including evidence of • Commercial success of invention not caused by market factors • Displacement of competing device • Copying by others • Licensing prior to issuance • Expressions of incredulity followed by praise

39. Rebutting Prima Facie Case (Cont.) • Evidence of what is obvious to try in art including • Extent of possible variations in question • Is it truly finite and small, or large numbers of variations • Extent of predictability • Market factors dissuading use • Too costly, not practical, etc. • Extent of testing on variations done in industry • Cost and time needed to perform tests of variations • And what is norm in industry • Non-documentary expressions of doubt by others

40. Rebutting Prima Facie Case (Cont.) • Evidence of market force not to make combination • Bulky, expensive. • Evidence of teaching away from combination. • Combination becomes unworkable. • Market moving in different direction • E.g., invention uses silver but market moving towards gold • Need to ensure that the record as a whole explains why it would not let one market force override other considerations.

41. Example Case • United States v. Adams, 383 U.S. 39, 148 USPQ 479 (1966). • Adams invention - non-rechargeable wet, electric battery having some truly extraordinary properties. • Adams battery - used electrodes of cuprous chloride and magnesium, a combination of electrodes never before found in a single battery.

42. Example Case (Cont.) • In Adams, The Prior Art Taught • Cuprous chloride electrodes were "equivalent" to silver chloride electrodes. • Magnesium electrodes were the "equivalent” of zinc electrodes. • Both zinc and silver chloride used in the prior battery art as electrode material.

43. Example Case (Cont.) • Considerations By Court • Classic secondary considerations • The properties and operating characteristics of the Adams battery were: • “Unexpected“ • “Far surpassed then existing … batteries"  • Took a long time for those of even expert skill in the art to believe that the Adams battery operates as it does.

44. Example Case (Cont.) • Known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness. • Invention achieved tremendous commercial success. • Permitted activity and scientific research that had been impossible.

45. Example Case (Cont.) • Supreme Court applied new Graham Factual Inquiries • Scope and content of prior art • Differences between prior art and claims at issue • Level of ordinary skill in the art • Secondary considerations (long felt need, failure of others, etc.)

46. Example Case (Cont.) • Based upon these factors, found the battery nonobvious • “This is not to say that one who merely finds new uses for old inventions by shutting his eyes to their prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness.”

47. Example of Arguments in Actual Case

48. Example Case (Cont.) • Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Yamamoto et al., (U.S. Publication No. 2008/0212846) in view of Saito, U.S. Pub. No. 2002/0018637. • The examiner cites Saito for teaching displaying size ratios of captured video, and asserts that it would have been obvious to one of ordinary skill in the art at the time of the invention for the displayed error message of Yamamoto to include a size ratio as taught by Saito to all the user to visually see exactly how much fingerprint was acquired. • The examiner goes on to say Yamamoto and Saito are combinable because they are from the same field of endeavor. The applicant strongly disagrees and fails to see how these two references are from the same field of endeavor. Yamamoto’s field of endeavor is tools and techniques for obtaining biologic information input which is to be accepted or rejected as being input from a user, thereby providing a method of biometric authentication. Saito’s field of endeavor is providing a capture section to acquire a video signal in accordance with capture timing and capture time of a selected procedure information and storing the video signal in a digest temporary section as a digest video signal. After the signal recording is ended, the digest video signal is recorded on a magnetic tape section. Saito has nothing to with biologics in any way or authentication in any way. The disclosure at paragraph 0078 relates to a percentage represented by the cursor position at a position of a capture timing indicator, and the capture time at that percentage is displayed at the position of the capture time indicator. There is no mention of any metrics related to a human or even an authentication of any kind. • On top of the foregoing, Yamamoto et al. makes no mention of indicating the error in the fingerprint acquisition, so there is no motivation in Yamamoto et al. to even display whatever results Saito determines on a display, let alone one which shows the size ratio of a fingerprint. • The examiner asserts that displaying a size ratio would help guide the user to move the fingerprint to a correct position. The applicant does not dispute that in the least. However, that is one of the nice advantages of the present invention. Just because something would be helpful, does not mean that it would have been obvious to combine Saito with Yamamoto to obtain the invention as specified in claim 2. Under that reasoning, almost nothing would be patentable, because the examiner could almost always find something which would improve something else, but if there is no teaching or motivation, beyond it simply being helpful, then it would not have been obvious to combine those references.