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May 9, 2007

Ordinary Skill in the Art

In 1941, the Supreme Court required a "flash of genius" for a patent to stand. Congress lowered that high standard in 1952 to non-obviousness to one with "ordinary skill in the art." Now again, more than interpretation, the Supreme Court exceeded the law in its KSR v. Teleflex decision. In its own flash of unpatentable creative insight, SCOTUS redefines the statutory "person having ordinary skill in the art" into someone omnificent and possessing comprehensive technical expertise.

35 U.S.C. §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.

The SCOTUS ruling in KSR -

The Court of Appeals failed to recognize that the problem motivating the patentee may be only one of many addressed by the patent's subject matter. The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.

§ 103(a) specifies a "a person having ordinary skill in the art to which said subject matter pertains." The subject matter is that of the claimed invention: "the subject matter sought to be patented." Obviousness, by statute, relates to the "the subject matter as a whole."

In a broadening of legislative definitions by sly substitution, SCOTUS substitutes its own, significantly broader "field of endeavor" and "addressed by the patent" for the statutory "subject matter sought to be patented": "any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed."

By statute, the scope for obviousness is limited to the "subject matter sought to be patented." In accordance with the law, the CAFC had used as a guideline "the nature of the problem to be solved," logically figuring the claimed invention as a problem solved. SCOTUS belittled that concept, whereupon slipping in a scope broader than defined by statute.

MPEP 706.02(j) Contents of a 35 U.S.C. 103 Rejection

To establish a prima facie case of obviousness, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. The teaching or suggestion to make the claimed combination and the reasonable expectation of success must both be found in the prior art and not based on applicant's disclosure. In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991). See MPEP § 2143 - § 2143.03 for decisions pertinent to each of these criteria.

The "field of endeavor""addressed by the patent" is much broader, covering more than even the disclosed "field of the invention," a previous toss-off in a patent specification (MPEP 601) that may now act as a hint to "the field of endeavor," though don't count on the patent agency or courts to be so scrupulous. Note the non-coincidental parallel between the statutory "subject matter sought to be patented" and a patent specification's "field of invention." In line with statutory requirements, MPEP 2106 goads examiners to focus on "what applicant has invented and is seeking to patent." Prior art anticipation, prior to KSR, had the same focus. Not anymore.

Congress has a well established knack for leaving loopholes in laws, offering them up for interpretive twisting by the courts. In an all-too-typical vagueness, § 103 fails to qualify "a person having ordinary skill in the art." So SCOTUS in its KSR ruling defined "a person having ordinary skill in the art" as being a highly creative technological researcher with an encyclopedic knowledge of the field. As illustrated by the post-KSR Leapfrog v. Fisher-Price & Mattel, "common sense" becomes a codeword that cuts a broad swath of anticipation.

A person of ordinary skill is also a person of ordinary creativity, not an automaton.

We build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius. These advances, once part of our shared knowledge, define a new threshold from which innovation starts once more. And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws.

Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.

[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.

[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.

Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle... A person of ordinary skill is also a person of ordinary creativity, not an automaton.

[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.

How savvy do you feel upon tackling a jigsaw puzzle with a few known missing pieces? According to SCOTUS, we are all now short of ordinary, my friend.

Though cautioning against hindsight bias, the Court's guidance to identify a reason for obviousness combination amounts to nothing more than rephrasing that the inventor thought it was a good idea. SCOTUS does not even pay lip service to the idea of requiring a motivation for combination of the prior art, and denigrates the requirement for evidence as "overemphasis on the importance of published articles and the explicit content of issued patents." If the invention seems a product of common sense, as most do in hindsight, it was obvious.

A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning... Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.

The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.

Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.

In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under §103. One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims.

Most patents have been combinations and incremental improvements hitherto uncombined. What doesn't work anymore in arguing non-obviousness: [1] citing long-sought need; [2] something requiring considerable experimentation, as everything is now "obvious to try"; [3] combinations without a change in function; [4] substitutions that yield a predictable result - this aspect of the new obviousness smacks a lot of drug & chemical patents.

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.

That it might have been obvious to try the combination... was likewise irrelevant, in the court's view, because . . "'"[o]bvious to try" has long been held not to constitute obviousness.'"

For over a half century, the Court has held that a "patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men." Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 152 (1950).

[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.

The Supreme Court identified two possible blind spots in the peripheral vision of the ordinary one with common sense: [1] prior art teaching away, which seldom happens, because most writers do so constructively, not by denigration of approaches that may later prove out; and [2] a hazy "more than predictable utility" - a beckoning to declare an inventive step, like the European patent regime requirement, but fraught with ambiguity and no guidance, leaving "predictable" as a crap shoot.

[W]hen the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious.

[A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.

Posted by Patent Hawk at May 9, 2007 2:50 PM | Prior Art

Comments

Maybe ordinary in the skill in the KSR decision should read Extrodinary skill in the art.

Posted by: James Acevedo at May 10, 2007 6:30 AM