Patent It Yourself - PDF Archive

108 | Patent it YOURSELF
35 USC 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.
Most of the time a patentability search will produce
one or more prior-art references that show devices similar
to your invention, or that show several, but not all, of the
physical features of your invention. That is, you will find
that your invention has one or more features or differences
that aren’t shown in any one prior-art reference. However,
even though your invention is physically different from
such prior art (that is, it clears Section 102 as Section 103
states), this isn’t enough to qualify for a patent. To obtain a
patent, the physical (or use) differences must be substantial
and significant. The legal term from Section 103 for such
a difference is that it must not be “obvious” or, commonly,
it must be “unobvious” or “nonobvious.” That is, the
differences between your invention and the prior art must
not be obvious to one with ordinary skill in the “art” or
field of the invention. Because this concept is so important,
let’s examine it in detail.
1. Unobvious to Whom?
It doesn’t tell anyone much to say an invention must be
unobvious. The big question is, unobvious to whom?
Under Section 103, you can’t get a patent if a person having
ordinary skill in the field of your invention would consider
the idea of the invention “obvious” at the time you came up
with it.
The law considers “a person having ordinary skill in the
art to which said subject matter pertains” to be a mythical
worker in the field of the invention who has (1) ordinary
skill, but who (2) is totally omniscient about all the prior
art in his or her field. This is a pure fantasy, since no such
person ever lived, or ever will, but realistically there’s no
other way to come even close to any objective standard for
determining nonobviousness.
Let’s take some examples. Assume that your invention
has to do with electronics—say an improved flip-flop
circuit. A Person Having Ordinary Skill In The Art (I
will use the acronym, PHOSITA) would be an ordinary,
average logic-circuit engineer who’s intimately familiar
with all prior-art logic circuits. If your invention relates
to the fields of business or the Internet, say a new method
of detecting phishing (attempted fraudulent discovery of
a password), a PHOSITA would be an Internet software
engineer of ordinary skill. If your invention has to do with
chemistry, say a new photochemical process, a PHOSITA,
a typical photochemical engineer with total knowledge
of all photochemical processes, would be your imaginary
skilled artisan. If your invention is mechanical, such as an
improved cigarette lighter or belt buckle, the PTO would
try to postulate a PHOSITA as a hypothetical cigarettelighter
engineer or belt-buckle designer with ordinary
skill and comprehensive knowledge. If your invention is
a design, say for a computer case, the PTO would invent a
hypothetical computer-case designer of ordinary skill and
full knowledge of all existing designs as the PHOSITA.
2. What Does “Obvious” Mean?
Most people have trouble interpreting Section 103 because
of the word “obvious.” If after reading my explanation you
still don’t understand it, don’t be dismayed. Most patent
attorneys, patent examiners, and judges can’t agree on the
meaning of the term. Many tests for unobviousness have
been used and rejected by the courts over the years. The
courts have often referred to “a flash of genius,” and this
colorful phrase became the title of a 2008 movie about
the efforts of Dr. Robert Kearns to obtain compensation
and recognition from Ford for manufacturing vehicles
with intermittent windshield wipers, which the court
held infringed his patent 3,351,836 (1967). Another
colorful term that has been used is “a synergistic effect
(the whole is greater than the sum of its parts).” One
influential court said that unobviousness is manifested if
the invention produces “unusual and surprising results.”
Foreign countries commonly require “an inventive step.”
Technically (for reasons mentioned below, I stress the term
“technically”), none of these tests is used any longer. This
is because the U.S. Supreme Court, which has final say in
such matters, decreed in the famous 1966 case of Graham
v. John Deere, 383 U.S. 1, 148 USPO 459 (1966); MPEP 2141,
that Section 103 is to be interpreted by taking the following
steps:
1. Determine the scope and content of the prior art.
2. Determine the novelty of the invention.
3. Determine the level of skill of artisans in the pertinent
art.
4. Against this background, determine the obviousness
or unobviousness of the inventive subject matter.
5. Also consider secondary and objective factors such
as commercial success, long-felt but unsolved need,
and failure of others.