Patent It Yourself - PDF Archive

ChaPter 5 | Is It PATENTABLE? | 109
Unfortunately, while in theory the Supreme Court has
the last word, in practice it added nothing to our understanding
of the terms “obviousness” and “unobviousness”—
in the crucial step (#4), the court merely repeated the very
terms (obvious and unobvious) it was seeking to define.
Therefore, most attorneys and patent examiners continue
to look for new and unexpected results that flow from the
novel features when seeking to determine if an invention is
obvious.
Despite its failure to define the term “obvious,” the
Supreme Court did add an important step to the process
by which “obviousness” is to be determined. In Step
#5, the court made clear that objective circumstances
must be taken into account by the PTO or courts when
deciding whether an invention is or isn’t obvious. The
court specifically mentioned three such circumstances:
commercial success, long-felt but unsolved need, and failure
of others to come up with the invention.
So, although your invention might not, strictly speaking,
produce “new and unexpected results” from the standpoint
of one with “ordinary skill in the art,” it still may be
considered unobvious if, for instance, you can show that the
invention has enjoyed commercial success.
Normally, before you file a patent application you won’t
be able to consider commercial success as a factor in
determining patentability, since I recommend (Chapter 7,
Section H) that you don’t sell the invention before you file.
However, you can argue commercial success later to the
examiner during the prosecution phase (Chapter 13) if your
invention is commercially successful by then. Also, you
can even consider commercial success before filing if you
disregard my advice and take advantage of the “one-year
rule” (Section E, above) by test-marketing your invention
before filing.
Under the reasoning of the John Deere case, then, to
decide whether or not your invention is obvious, you first
should ask whether it produces “new and unexpected
results” from the standpoint of one skilled in the relevant
art. If it does, you’ve met the test for patentability. However,
if there’s still some doubt on this question, external
circumstances may be used to bolster your position.
Tip
If you feel your head spinning, don’t worry. It’s
natural. Because these concepts are so abstract, there’s no
real way to get a complete and comfortable grasp on them.
However, if you take it slowly (and take a few breaks from
your reading), you should have a pretty good idea of when
an invention is and isn’t considered “unobvious.” In Section
3, directly below, I discuss examples of “unobviousness”
and “obviousness.” Then, in Section 4, I cover the types of
arguments based on external circumstances (called “secondary
factors”) that can be made to bolster your contention that your
invention is unobvious. I also provide a flowchart (Fig. 5C) that
puts it all together in concise form.
3. Examples of Obviousness and Unobviousness
First, for some examples of unobvious inventions, consider
all of the inventions listed in Chapter 2: the magnetic pistol
guard, the buried plastic cable, the watch calendar sticker,
“Grasscrete,” the Wiz-z-er top, the shopping cart, etc. These
all had (Section 102) physically novel features that (Section
103) were considered unobvious because they produced
new, unexpected results—that is, results that weren’t
suggested or shown in the prior art.
Although generally you must make a significant physical
change for your invention to be considered unobvious, often
a very slight change in the shape, slope, size, or material
can produce a patentable invention that operates entirely
differently and produces totally unexpected results.
EXAMPLE: Consider the original centrifugal vegetable
juicer composed of a spinning perforated basket with
a vertical sidewall and a nonperforated grater bottom.
When vegetables, such as carrots, were pushed into the
grater bottom, they were grated into fine pieces and
juice that were thrown against the cylindrical, vertical
sidewall of the basket. The juice passed through
the perforations and was recovered in a container
but the pieces clung to the sidewalls, adding weight to
the basket and closing the perforations, making the
machine impossible to run and operate after a relatively
small amount of vegetables were juiced. Someone
conceived of making the side of the basket slope
outwardly so that while the juice was still centrifugally
extracted through the perforated side of the basket,
the pulp, instead of adhering to the old vertical side of
the basket, was centrifugally forced up the new sloped
side of the basket where it would go over the top and be
diverted to a separate receptacle. Thus the juicer could
be operated continuously without the pulp having to
be cleaned out. Obviously, despite the fact that the
physical novelty was slight—that is, it involved merely
changing the slope of a basket’s sidewall—the result
was entirely new and unexpected, and therefore was
considered unobvious.
In general such a relatively small physical difference
(changing the slope of the wall of a basket in a juicer) will
require a relatively great new result (ability to run the juicer