The following case is a precedential decision by the BPAI on the issue of whether an invention is obvious. In Ex parte Jella 2008-1619 (Nov. 3, 2008 BPAI), the claims were directed to a three panel garage door with each panel being 28 inches in height. Typically, garage doors are 7 feet tall and have four panels with each panel being 21 inches. The Patent Office contends that the change is obvious in light of the decision by the United States Supreme Court in KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727 (2007), a seminal case in relation to obviousness.

In KSR, the Supreme Court noted that “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 likely bars its patentability.” In applying the holding of KSR to the case of Ex parte John F. Jella, the BPAI held that “changing a conventional seven foot high overhead garage door from a four panel section door to a three panel section door is nothing more than a predictable variation sparked by design incentives. The inventor acknowledged that market pressure existed to update the look of garage doors to spur additional sales in the industry. The inventor hoped that a new look to the door would result in increased sales.

If you are interested in other examples of obviousness, please read “what types of inventions are obvious?”.

You may also want to read my original KSR post “Supreme Court Broadens Obviousness”.

Should you have any further questions, please feel free to contact me.

The issue of novelty is a much simpler issue compared to the issue of non-obviousness. The non-obviousness issue is an objective issue based on the scope and content of the prior art, the level of ordinary skill in the art, the difference between the claimed invention and the prior art and objective evidence of nonobviousness. Nonetheless, the obviousness issue is open to wide variance based on which person you ask. For example, the sophisticated person might determine that an invention is obvious due to its simplicity, whereas the less sophisticated person might determine that the same invention is non-obvious due to its complexity.

A couple of years ago, the U.S. Supreme Court reviewed the issue of what types of inventions are non-obvious in KSR Int. Co. v. Telefex Inc., et al. (S. Ct. 2007). In that case, the Supreme Court reshaped the then existing obviousness test which was characterized as rigid to one that is more flexible. In one aspect of the opinion, the Supreme Court rejected an obvious to try test which stood for the proposition that a combination is not obvious merely because it is a variation that is obvious to try. Rather, the Supreme Court stated that 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 is 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 SECTION 103.

On April 3, 2009, the Federal Circuit provided further commentary on the “obvious to try” test in In re Kubin (Fed. Cir. 2009). In a nutshell, the Federal Circuit re-emphasized the principles of obviousness that the U.S. Supreme Court laid out in KSR in that (1) an invention is obvious if a person of ordinary skill is pursuing known options from a finite number of identified, predictable solutions or (2) an invention is non-obvious if the improvement is more than the predictable use of prior art elements according to their established functions.

The Federal Circuit further made clear that the KSR decision is not limited to predictable arts but also applies to the unpredictable arts such as biotech inventions without categorical exceptions to types of inventions.

The Supreme Court rejected this rigid approach but not the TSM test itself. Thus the TSM test remains and can be used, as long as it is properly applied. Also, the Supreme Court reaffirmed the “functional approach” that Graham reaffirmed and that the Hotchkiss decision explained. The Supreme Court, citing from Great Atlantic and Pacific T Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152 (1950), restated 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.”

The Supreme Court identified the first error of the Federal Circuit as limiting the motivation or suggestion to solving the specific problem the patentee was trying to solve. Rather, “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.”

The second error of the Federal Cirecuit was to view the extent of the prior art too narrowly by excluding prior art directed to similar items but solving different problems. Rather, the Supreme Court noted that “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.”

The third error of the Federal Circuit was the view that patent claims cannot be proved obvious merely by showing that the combination of elements was “obvious to try.” Rather, the Supreme Court states that “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 [is] not of innovation but of ordinary skill and common sense.”

Finally, the Supreme Court said that the Federal Circuit drew the wrong conclusion by attempting to mitigate the risk of courts and patent examiners falling prey to hindsight bias. Rather, the Supreme Court said that “rigid preventive rules that deny fact finders recourse to common sense, however, are neither necessary under our case law nor consistent with it.”

In sum, the Supreme Court brought the obviousness evaluation back to the original Graham analysis, namely, determining the scope and content of the prior art; ascertaining the differences between the prior art and the claims at issue; resolving the level of ordinary skill in the pertinent art; and determining obviousness or non-obviousness against this background. Moreover, secondary considerations should also be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. KSR International Co. v. Teleflex, Inc., et al., 550 U.S. ____ (2007).