An obviousness rejection is a determination by a patent examiner that a claimed invention is not patentable because it would have been obvious to combine two or more prior art references together. See Manual of Patent Examining Procedure (MPEP) § 2141. The Low Bar for Obviousness Rejections Rejections based on obviousness is a very low bar for the patent examiner to make. … [Read more...]
LKQ v. GM: Looser Standard Means More Design Patents Will Be Obvious
In LKQ Corp. v. GM Global Technology Operations LLC, the Federal Circuit Court made it harder to secure design patents for minor updates to product updates. In particular, they enlarged the scope of prior art that can render a design patent obviousness. This decision is pivotal, as it sets a new precedent for a broader pool of prior art for design patents that the examiner can … [Read more...]
What are the novelty and nonobviousness requirements?
The novelty requirement states that a claimed invention must be new compared to the prior art. Meanwhile, the nonobviousness requirement states that a claimed invention must not be an obvious variant of the prior art. The U.S. government has no motivation to grant a patent to inventors for old ideas or obvious variations of existing technology. To overcome the novelty and … [Read more...]
Determining Obviousness from the Viewpoint of Ordinary Skill
Obviousness is assessed based on the path a person having ordinary skill in the art (PHOSITA) would take in light of prior art, not the path the inventor actually followed. The following case highlights this principle, where the inventor’s exploration of a known process resulted in a new, nonobvious compound. Case Background: Millennium Pharmaceuticals, Inc. v. Sandoz In … [Read more...]
Detailed explanation for motivation to combine required for obviousness
Summary A proper rejection on obviousness requires that the examiner show how one of ordinary skill in the art would have been motivated to combine two or more prior art references to make the claimed invention. In Personal Web Technologies v. Apple (Fed. Cir. 2/14/17), the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) failed to explain why a relevant … [Read more...]
Common sense used to evaluate obviousness with caveats
In Arendi v. Apple (Fed. Cir. August 10, 2016), the Federal Circuit held that the use of common sense during examination of a patent application is permitted with at least three caveats. To the layperson, this statement may sound strange. In the law, words are defined and have different standards to determine if the facts meet the definition. Obviousness has a legal … [Read more...]
Teach away arguments to show non-obviousness
I. Generic Obviousness Rejection Showing that a prior art reference teach away from a particular combination suggested by an examiner is a way to show the non-obviousness of the invention. During patent prosecution, an examiner may cite two or more references, the combination of which in the examiner opinion makes the inventor’s claimed invention obvious, and thus … [Read more...]
KSR distinguished making it harder to reject a claim
The KSR decision could have been construed very broadly so as to make all inventions obvious. In the opinion, the Supreme Court held that rigid rules cannot override common sense when determining obviousness. In its broadest terms, the examiner could merely state that a modification was obvious based on common sense, and thus deem the claimed invention unpatentable. In … [Read more...]