UNDERSTANDING §103(a) - Patent law

Obviousness determination relies on §102 prior art so employment of the prior art in an obviousness determination (§103) will possess the same general characteristics as use of the prior art in novelty determination (§102). Thus an obviousness rejection based on §102(a) art can be overcome if the applicant is able to show that he invented the subject matter before the publication or art in question (just as a novelty rejection based on §102(a) can be antedated). Likewise, an obviousness rejection based on art falling under §102(b) prior art could not be antedated by evidence of prior invention because, as we have already discussed, art published more than 1 year before applicant’s filing date is a statutory bar, and prior invention by the applicant is no longer helpful to the applicant. There are two exceptions to the use of §102 prior art for §103obviousness analysis. The first is that the §102 prior art used must be what is called analogous art (defined and discussed later). The second is the narrow but important exception provided for in 35 U.S.C. §103(c), by which obviousness rejections under§102(e), (f), and (g) can be overcome if at the time the claimed invention was made it was subject to an assignment or owned by the same entity or was the subject of avalid research collaboration. This was discussed in Section below.

Reading further into the statute instructs one that a patent will not be granted if the differences between what one intends to patent (one’s claimed invention) and the priorart are such that the subject matter as a whole would have been obvious. The phrase subject matter as a whole refers to the entire subject matter of the claim. This means that an interpreting body cannot pick the elements of a claim apart and find support in the art for each of the claimed elements without considering how the elements themselves combine into the whole to make up the invention. This is especially important when one considers that inventions are often combinations of disparate elements, wherein each element by itself is known in the art, but it is the particular combination that makes up the invention. This rule also prevents an examiner or court from focusing on certain obvious steps or elements of the claim while ignoring other steps that are non obvious. Since infringement of a claim requires that an in fringer make, use, or sell a device or process that includes each and every element of the claimed language (or its equivalent under the doctrine of equivalents), it would be unfair to deny patentability by ignoring one or more of the required claim elements when comparing to the prior art. This principle is well demonstrated in In re Hiraoin which the sole claim at issue was directed to the following three-step process:
1. A process for preparing foods and drinks sweetened mildly, and protected against discoloration, Strecker’s reaction, and moisture absorption, which comprises:adding _-1,6-glucosidase and _-amylase, under such conditions and in a quantity sufficient to produce straight chain amy lose, to enzymatically liquefied starch which consists essentially of amylopectin thereby producing straight-chainamylose;subjecting the resulting amy lose to the action of _-amylase and purifying and drying to obtain high purity maltose in crystalline powder form of 90–95% maltose; and the nadding said high purity crystalline maltose powder to foods and drinks as the essential added sweetener.
This case was on appeal from the USPTO, which denied patentability, asserting obviousness in view of two prior art references. The first prior art reference described how to make high-purity maltose, and the second prior art reference described using high-purity maltose as a sweetener. The USPTO agreed that the first two steps of the process were non obvious over the prior art method of making purified crystalline maltose powder, while the third step of simply adding the purified crystalline maltose powder to food and drinks was an obvious step. In its decision, the CCPA phrased the single issue as whether appellants’ three-step process is obvious, the first two steps being unobvious but forming a known product, and the third step being the use of this known product in an obvious way and concluded “that due to the admitted un obviousness of the first two steps of the claimed combination of steps the subject matter as a whole would not have been obvious to one of ordinary skill in the art at the time the invention was made.”

Reading further in §103(a), we see that the obviousness inquiry must take part from the perspective of a “person having ordinary skill in the art” (a PHOSITA). This is an objective standard, meaning that the fact finder (judge or jury) responsible for making the obviousness inquiry must figuratively put themselves in the shoes of the“person having ordinary skill in the art.” The standard is really a form of legalized fiction (have you ever met a real person named PHOSITA?) that has been instituted to maintain objectivity throughout the obviousness inquiry. In this vein, the PHOSITA is not considered a layman, a judge, a jury, one skilled in remote arts, or a genius in the art at hand. As this standard is applied to the chemical arts, it is generally recognized that the level of skill in the chemical arts is high, but not so high that a person having ordinary skill in the chemical arts would require exceptional insight.
Factors that the federal circuit court have established thus may be considered for what is ordinary skill in the art include the educational level of the inventor, type of problems encountered in the area, prior art solutions to those problems, rapidity with which innovations are made, sophistication of the technology and education level of workers in the area.

An important consideration is that a person having ordinary skill in the art is charged with the knowledge of all prior art “to which the subject matter of their invention pertains,” but not every teaching in every art (in other words, a PHOSITA in chemistry will know everything that has ever been published in the chemical arts but will not be expected to know aeronautical engineering). Thus it might not be appropriate to apply working knowledge or techniques known to a person of ordinary skill in one art to those of another art.9 This is known as the analogous art requirement and is a distinction from the novelty requirement, where there is no such limitation; though as we will see, this distinction has not made much of a difference.
Furthermore, it is impermissible to apply the teachings of the patent application itself to indicate the ordinary skill in the art. This rule works to discourage applying hindsight gleaned from the applicant’s disclosure itself against the applicant when considering the non obviousness of the claimed invention in question.
Two case swill help explain the analogous art requirement as it pertains to chemical inventions. In Ex parte Bland the applicant for patent argued that references cited by the USPTO to support an obviousness rejection were non analogous art and thus should not be cited against applicant. The applicant’s claimed invention related to the adsorption of propionic acid onto expanded perlite or verxite (a purified vermiculite)having a particular particle size range, where those compositions were useful for the inhibition of bacterial and fungal growth in a foodstuff while being nontoxic to the animals. The cited art that the applicant objected to included (1) a reference where propionic acid had been adsorbed onto silica for use as a food preservative; (2) a reference stating that the food additive verxite could safely be used in animal feed;
(3) a reference that stated that verxite was a carrier for such agricultural products as fungicides and fumigants; (4) a reference disclosing a composition containing propionic acid and a suitable adsorbent such as perlite (the reference did not specify expanded perlite or the same particle size as applicant), and (5) the bacteriostaticand fungostatic use of such a composition for application to corn fodder and other agricultural products. The Board disagreed with the applicant’s position that the cited prior art was non analogous, indicating that all the prior art references were concerned with absorbing biologically active materials onto carriers. The Board further noted that the teachings in each of the references would have been ertinent to each other as well as to the problem solved by applicant’s invention.Like wise, in In re Mlot-Fijalkowski, the CCPA upheld the Board’s rejection of the applicant’s claimed invention as un patentable for obviousness.13 The applicant’s claimed invention involved the use of penetrating dyes for the detection of surface imperfections, where the penetrating dye included a substance that undergoes a color change when treated with a developer. Two of the cited prior art references (Skelly and Vincent) described the use of color formers or dye intermediates with clay developer particles, but did not disclose the use of such dyes for the imagining of surface imperfections. An additional reference (Sockman) described the use of a colored dye for the detection of surface imperfections. The Board noted in upholding the ejection
of the patent application for obviousness in view of the cited art that “the concepts fairly contained in the examiner’s references . . . would suggest to one skilled in the art . . . (the) substitution of the color former-activator systems of either Skelly or Vincent into the processes of Sockman.” The applicant objected to the use of tensely and Vincent dye references and asserted that they were non analogous art. In particular, the applicant noted that the uses of the dyes in the Skelly and Vincent references were not related to the use that the applicant claimed for his dye but we refocused on the duplicating paper art. The CCPArejected this logic and instead pointed out that the applicant misplaced the focus onto the process the dye was going to be used for, rather than on the substitution of one dye for another. The CCPA agreed with the applicant’s contention that the problem confronted by the applicant was the“enhancement and immobilization of dye penetrant indications” but characterized the problem as one of dye chemistry, and accordingly, one’s search for a solution would not be limited to the field of dye penetrant inspection but would include the dye arts in general. As these two representative cases indicate, analogous art has been broadly construed, and it is not likely one will succeed in overcoming an obviousness rejection or challenge on the basis of the cited art being non analogous.
Finally we turn to the second sentence of §103(a): “Patentability should not be negatived by the matter in which the invention was made.” Between the time the U.S. Supreme Court first required something akin to a non obviousness requirement and the time Congress codified that requirement in 35 U.S.C. §103 approximately one century later, it appeared to Congress that the judiciary had begun to impose a subjective test that looked at the mental state of the inventor rather than the traits of the invention itself. In particular, the Supreme Court instructed that to be patentable adevice must reveal “the flash of creative genius, not merely the skill of the calling.” Due to this language, Congress asserted the last sentence of §103(a) to make it clear that the patentability of the invention would be judged by the invention itself and not the state of mind of the inventor. Thus presumably it would not matter (one way or the other) whether the inventor had a flash of genius or just simply a brief and dimglimmer of routine recognition; the invention stands or falls on its own merits and not the state of mind or the actual process by which the invention was discovered.

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