State of Innovation

Patents and Innovation Economics

Obviousness – Flow Chart

Novel2This is my second post on the nonobviousness standard for patents (35 USC 103).  The earlier post focused on the practical questions that an inventor and his attorney face when negotiating with the Patent Office (PTO).  This post attempts to provide a rational approach to the nonobviousness requirement.

Once it has been determined that a patent claim is novel, step 10 in the flow chart, there are only two things that can make the invention nonobvious.  One is a new result and the other is a new combination that has provides same result in the prior art.  At step 12, we determine if the invention has a new result.  For instance, Edison’s light bulb had a new result of a high resistance filament.  This result is important because it makes it possible to build an economically feasible power system to power Edison’s light bulb.  A new result may be a solution to a problem in the prior art (low resistance light bulb) or new feature that is useful in the art.  If the invention has a new result, then the next step is to determine if the new result is merely aesthetic at step 14.  If the result is merely aesthetic such as changing the color of a car, then the invention is nonobvious, step 16.  If the new result is not just an aesthetic change, then the invention is nonobvious, step 18.  It does not matter how many references or whether the references come from the same art area as the invention, the invention is nonobvious.  In the case of Edison’s light bulb, all the elements were known and Joseph Swan had the same elements in his light bulb, except Swan’s filament was low resistance.  The point of patents is to protect the investment in new technologies.  If an invention is novel and it has a new result, then it is nonobvious and any attempt to combine references to recreate the invention is just hindsight.

If the invention does not have new result, then it is determined if the invention is a legitimate design around at step 20.  A goal of patent law is to diversify the technology base by encouraging alternative designs.  If an invention is novel and a legitimate design around of an enforceable patent then the invention is nonobvious.  For instance, if Edison claimed a light bulb with a carbon filament and another inventor created a light bulb with a metal filament that has essentially the same result he should obtain a patent.  This is true even if the PTO can find two or more references in the same art area that show all the elements.  If the invention is not a legitimate design around, then it is determined if the invention is nonobvious under the teaching, suggestion, motivation test.  For instance, assume Edison claims a light bulb with any material that has high resistance as the filament, but only discusses a carbon filament.  Then another inventor invents a light bulb with a metal filament having essentially the same properties as Edison’s light bulb.  If nothing in Edison’s patent or a combination of patents in related technology teaches, suggests, or motivates a person to use a metal filament, the inventor should obtain a patent.

The obviousness standard has proven elusive to define.  I have attempted to provide a more rational approach to this problem.  I would greatly appreciate your comments.

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October 20, 2009 - Posted by | -How to, -Philosophy, -Prosecution, Patents, Uncategorized | , , , ,

4 Comments »

  1. “there are *only* two things that can make the invention nonobvious”

    DB,

    I applaud your self-driven attempts to tackle some really complex and slippery questions, such as what is “obviousness” (here) and how do patents affect “the economy” (–in another recent post).

    On the topic of obviousness, may I suggest that the question be restricted to obviousness under the US patent code, 35 USC 103(a)? What are the actual words of section 103 and how do they affect our understanding of obviousness?

    Before leaping blindfolded into the gorge, I think it a good idea to step back and consider obviousness in other contexts:

    Suppose I am telling you a joke or a riddle and in the telling I begin to worry whether the punch line or the solution to the riddle will be sufficiently surprising and sufficiently nonobvious to you so as to make your reaction to the telling of the joke/riddle a satisfactory one.

    Well one problem, is that perhaps you have heard the same joke/riddle before AND you recall a part of it as I am telling it, and therefore the ending is not as surprising as it should have been because you already had a subconscious clue as to where the joke/riddle was going. We can call that a hindsight inkling of obviousness. Obviousness is not a black versus white, yes versus no proposition. There are different flavors of obviousness.

    Perhaps you may want to change your flow chart?

    p.s. As a test of obviousness, consider the punch line to this joke (did you see it coming? why or why not?):
    http://jasonbherald.com/2008/09/25/diggin-it/
    Hope you dig it. 😉

    Comment by step back | October 23, 2009 | Reply

    • Hi step back,

      I actually started a post for 103 based on the definition of the words novel and obvious. Unfortunately, this leads to non-sense. Since something that did not exist cannot be obvious before it was made using the standard dictionary definitions. Since this line of reasoning leads nowhere, the next logical step is to look at the legislative history. This is confused at best. Most people point to Hotchkiss v. Greenwood. Some papers suggest that this case was an outlier for 90 years. This makes me wonder if it was correctly decided. Eventually I decided that I had very little to add in this line of reasoning.

      Comment by dbhalling | October 23, 2009 | Reply

  2. […] Patent law also requires that claims be nonobvious in addition to being novel.  I do not believe that the nonobviousness requirement of patent law is supported by natural rights.  However, under the present law this is an additional requirement for obtaining a patent.  The nonobviousness requirement (“inventive step” in Europe) has caused all sorts of mischief by the courts.  For more information see Understanding the Nonobviousness Requirement and Obviousness – Flow Chart. […]

    Pingback by Explaining Patent Law Through the Lens of Natural Rights « State of Innovation | December 4, 2009 | Reply

  3. […] believe is even more objective, clearer, and more consistent with reality than the TSM test – see Obviousness Flow Chart .  By adopting any of these solutions we will reduce the cost and uncertainty of obtaining a […]

    Pingback by Non-Obviousness: A Case Study in Judicial Activism « State of Innovation | June 18, 2010 | Reply


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