President Obama initiated his new Strategy for American Innovation to create sustainable growth and quality jobs, restore American leadership in fundamental research and harness technology that will address the "grand challenges" of the 21st century. The strategy calls for the United States Patent and Trademark Office (USPTO) to "issue high-quality patents on innovative intellectual property, while rejecting claims that do not merit patent protection."
Those of us who work with patents should be encouraged by the President's endorsement of our efforts to promote "the inherent ingenuity of the American people." We should also find it especially timely to review the objective distinctions between quality inventions and those that do not merit patent protection.
Patentability of Inventions
To be patentable, an invention must be useful, novel, and not obvious. Inventions are denied patentability most often for being obvious, even if they are both useful and novel. Specifically, under Section 103 of the United States Patent Act, an invention is not patentable if "...it would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains."
Inventors and patent attorneys sometimes complain that examiners at the USPTO think everything is obvious. Even Albert Einstein, as a former examiner at the Swiss Patent Office, frequently used the term "obviously" in Relativity, The Special And General Theory. But as we look back in hindsight to the early twentieth century, we know that whatever was obvious to Professor Einstein was not so obvious to anyone else at the time. Inventors currently applying for patents might well ask "obvious to whom?" and "obvious when?" We thus need an objective analysis for obviousness under Section 103 of the Patent Act.
According to the Supreme Court of the United States, we have just such an analysis. The Supreme Court requires each application of Section 103 to determine 1) the content of the prior art, 2) the differences between the prior art and the claimed invention, and 3) the level of ordinary skill in the art. Secondary considerations of commercial success, long felt but unsolved need, and failure of others might also apply. These are known as the Graham factors. "Against this background the obviousness or nonobviousness of the subject matter is determined." Graham v. John Deere of Kansas City, 383 U.S. 1, 17-18 (1966). According to a more recent Supreme Court decision, the Graham factors "continue to define the inquiry that controls," and "[t]he analysis is objective." KSR International Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
Content of the Prior Art
The prior art is nearly always found in patents and other publications, so its content is typically not in dispute. However, the question of "obvious when?" can sometimes arise in this context. This is because Section 103 applies "at the time the invention was made."
In the case of In re Foster, 343 F2d. 980, 145 USPQ 166 (C.C.P.A. 1966), the U.S. Court of Customs and Patent Appeals explained that hindsight should be avoided when deciding whether an invention is patentable. Obviousness must be determined as of the time the invention was made, and without utilizing "after-acquired knowledge." For instance, after-acquired knowledge might arise from trials establishing predictable results of an invention. A proper analysis must exclude that predictability from the body of knowledge available at the time in question. For any particular content of the prior art, this exclusion of hindsight helps to impose an objective constraint on what could have been obvious.
Differences Between the Prior Art and the Claimed Invention
The subjective nature of the 'differences' factor originates with the patent application itself. The application describes the invention with reference to the drawings, and concludes with claims defining the scope of the invention. Unlike the written description, the claims do not describe the invention at length, but merely recite the elements thought to distinguish the invention from the prior art. Elements that are not needed to have the claims allowed and granted in a patent should be omitted because the patent can be infringed only if every element of a claim is misappropriated by an accused infringer.
By including only selected elements of the invention and omitting others, claim drafting strategy compels a difference of opinion between the attorney and the examiner. Their conflict can be resolved in the USPTO by appeal to the Board of Patent Appeals and Interferences and ultimately in the United States courts. Regardless of the outcome, the prevailing party might be the only one to believe that objectivity prevailed.
Ordinary Skill in the Art
The third Graham factor, namely the level of ordinary skill in the art, effectively asks the question "obvious to whom?" Since the Patent Act refers to a "person having ordinary skill in the art to which the subject matter pertains" the third Graham factor seeks objectivity by deference to that prophetic person.
In Daiichi Sankyo. Ltd. v. Apotex, Inc., 501 F.3d. 1254, 1256, 84 USPQ2d 1285 (Fed. Cir. 2007), the invention was a method for treating ear infections by administering a particular antibiotic. Although a general practitioner or pediatrician might prescribe or use the invention, such a medical professional would be unable to develop that particular antibiotic unless he or she had the same specialized training as the inventors. For this reason the court found that a person of ordinary skill in the art would be a specialist in ear treatments who also has training in pharmaceutical formulations. The court then ruled that such a person would have found the claimed invention to be obvious, even if it were not obvious to a typical medical practitioner.
One might argue that Daiichi applied an elevated level of skill instead of the ordinary level mentioned in Section 103 of the Patent Act. However, Section 103 addresses ordinary skill in the technology where the invention is thought to advance the state of the art. In that context, the population of qualified persons grows larger as the technology becomes widespread, but contracts as the technology becomes more specialized. Either way, it is that group of qualified personnel from whom we seek the hypothetical individual with an objective view of what is obvious.
When an inventor submits a patent application to the USPTO, the examiner has the evidentiary burden to show that the invention is not patentable. The examiner can meet that evidentiary burden with facts gathered under the three Graham factors discussed above. If those facts make a sufficient case for obviousness, the burden shifts to the inventor. The inventor may respond with evidence in rebuttal, including evidence to show the accomplishments and advantages of the invention over the prior art. As explained in Ex parte Anderson, 21 USPQ2d 1241 (Bd. Pat. App. & Int. 1991), the examiner's case for obviousness is then weighed against the rebuttal evidence to reach a final conclusion of patentability. This is the purpose of secondary considerations under Graham.
In Ex parte Casagrande, 36 USPQ2d 1860 (Bd. Pat. App. & Int. 1995), the USPTO Board of Patent Appeals and Interferences reversed the examiner's finding that the claimed invention was obvious. The examiner had considered the invention to be an obvious substitution of compounds that were expected to have the same properties. The inventors responded with affidavits declaring that the claimed compound was unexpectedly superior to the prior art. According to the Board, the inventors' evidence directly controverted the examiner's premise for considering the invention obvious.
Another notable example is Rothman v. Target Corp., 556 F3d 1510, 89 USPQ2d 1897 (Fed. Cir. 2009), in which a long list of secondary considerations included commercial success, praise in the industry, and copying. However, that extensive body of evidence in Rothman was insufficient to rebut the evidence gathered under the first three Graham factors, and the claimed invention was found to be obvious. This shows that secondary considerations are not always conclusive evidence that an invention is patentable. On the other hand, Rothman might actually bolster an inventor's credibility by calling for secondary considerations as "objective evidence" of nonobviousness. Id. at 1905.
The Conclusion of Law
The KSR decision assures us that given all the facts of the Graham factors, we are fully informed and prepared to make an objective decision of whether or not an invention is obvious. Yet despite such assurance from the Supreme Court, at least an element of subjective judgment seems to linger. This is because the ultimate conclusion is derived from the facts but is not a fact itself. There might be complete agreement on 1) the content of the prior art, 2) the differences between the prior art and the claimed invention, and 3) the level of ordinary skill in the art, with or without secondary considerations, but those facts help us only to predict whether our hypothetical person of ordinary skill would find the invention obvious.
As the prediction of obviousness is made by inventors, patent attorneys, examiners and judges, we will rarely find a case, as Einstein once found, "sufficiently obvious to ensure that differences of opinion are scarcely likely to arise." Instead, we know that differences of opinion are certain to arise. As we strive for the high quality of patents sought by President Obama's Strategy for American Innovation, we should thus strive equally to avoid subjective judgments of what does or does not qualify as a patent-worthy invention.
Stephen Scanlon is of counsel at the Cleveland office of Jones Day. Stephen Scanlon oversees the mechanical patent prosecution practice in the Cleveland office of Jones Day, including all phases of preparation and prosecution of patent applications through the U.S. Patent and Trademark Office and other national patent offices worldwide. http://www.jonesday.com/Home.aspx
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