TINGEY LAW FIRM

TO BE PATENTABLE A NEW PRODUCT MAY NOT BE OBVIOUS

EXTRACTS FROM THE OPINION OF THE SUPREME COURT ON DETERMINING IF AN NEW PRODUCT OR METHOD IS OBVIOUS. , KSR INT’L CO. V. TELEFLEX INC. (2006)

The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.

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 [obviousness] likely bars its patentability.  For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill .

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.  See In re Kahn, 441 F.3d 977, 988 (CA ed. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statement; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). As our precedents make clear, however, the 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 created steps that a person of ordinary skill in the art would employ.

[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.  Although common sense directs one to look with care at a patent application that claims as innovations 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 invention 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.

[An claimed invention can be proved obvious merely by showing that the combination was “obvious to try.”]  When there is a designed or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has a good reason to pursue the known options within his or her technical grasp.  If this leads to the anticipated success, it is likely thte 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.

DOCTRINE OF EQUIVALENTS

This case required the Federal Court of Appeals to address the relation between two patent law concepts, the doctrine of equivalents and the rule of prosecution history estoppel. The Court in an earlier 1997 case had affirmed that a patent protects its holder against efforts of those who would copy the invention and would seek to evade liability for infringement by making only insubstantial changes to the patented invention. This is covered in the law by the Doctrine of Equivalents, which prevents such a practice. 

The rule of prosecution history estoppel means in summary that if concessions are made during the process of amending claims to make them allowable, then those concessions limit the meaning of the resulting claims.  That is, this prosecution history “estops” him from later arguing that the subject matter covered by the original, broader claim was nothing more than an equivalent.

“When the patentee has chosen to narrow a claim, courts may presume the amended text was composed with awareness of this rule and that the territory surrendered is not an equivalent of the territory claimed. In those instances, however, the patentee still might rebut the presumption that estoppel bars a claim of equivalence. The patentee must show that at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent”

FESTO CORP. V. SHOKETSU KINZOKU KOGYOKABUSHIKI CO. (00-1543)

234 F.3d 558.

FEDERAL CIRCUIT APPEALS COURT ON METHOD PATENTS

In re Bilski, Fed. Cir., holds that a Patent-Eligible Process Must Meet Machine-or-Transformation Test:

Music Search Patent Holder

Microsoft did a whole lot more than acquire talent when they hired Qi Lu to run its online business. Qi Lu holds 20 different patents, one of which is a patent for searching for similar music.

For more on the patent, take a look at the patent at the U.S. Patent and Trademark Office (uspto) online.