VI. Anticipation And Obviousness

If a claim reads on a single item of prior art – a printed publication or a product – then that item of prior art “anticipates” the claim must be rejected under Section 102. Sometimes, however, a claim does not read on a single item of prior art, but instead reads on a combination of two or more items. In that case, the claim may be “obvious” under Section 103:

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. {FN43: 35 U.S.C. §103(a)}

Section 103 bars a claim if it is obvious based on a combination of two or more items of prior art, or differs in an obvious way from an item of prior art. To prevent the hindsight combination of prior art, using the claim as a roadmap of what to combine, there must be some teaching or other motivation in the prior art that would direct someone to combine the references to get the claimed invention if he or she were aware of them.

An examiner, who generally has a degree in science or engineering (and in some cases, even a Ph.D. in the area he or she is examining), can also take notice that something is generally known in the field, although it is preferable to cite to one or more references. The references that the examiner has considered are listed on the first page of the patent.

VI.A. Secondary Considerations

Sometimes an examiner feels something is obvious from the references when it really isn’t. The Supreme Court, in Graham v. John Deere, {FN44: 383 U.S. 1, 148 USPQ 459 (1966)} has stated a number of things that can be considered when determining whether something was obvious at the time of its invention. These include:

· Commercial success caused by the invention, or lack of commercial success of prior art references.

· Long-felt need for something to solve the problem addressed by the invention.

· Unexpected results, such as an efficiency beyond what was felt possible.

· Failure of others to develop a similar invention.

· Copying of the invention by competitors.

There must be a connection between the success of the product using the invention and the invention itself; the success can’t be due to superior marketing or similar considerations. And the independent development of the invention by others is an indication that the invention is obvious to those in its area, particularly when many people come up with the same invention.

VI.B. Rejection of a Claim

If the examiner finds that a claim is obvious or anticipated, the examiner will reject the claim, stating the particular prior art references that anticipate the claim or the multiple references that make the claim obvious, as well as a reason why those references would be combined by somebody with ordinary skills in the art of the invention. If the applicant does not agree with the examiner, he or she can respond with an explanation of why the examiner is mistaken and ask the examiner to reconsider the rejection. If the applicant agrees with the examiner’s rejection but can claim the invention in a way that does not read on the prior art, such as by adding additional elements to the claim, the applicant can amend the claims and ask the examiner to consider the amended claims. Admissions made during the prosecution of a patent application will be held against the applicant when interpreting the claims during infringement litigation, or when determining whether a claim that is not infringed literally is infringed under the doctrine of equivalents.

Generally, an examiner will consider the application twice before making the rejection final. After a final rejection, the applicant can pay an additional fee to have the examiner consider further amendments or arguments for patentability, or can appeal the final rejection by the examiner to the Board of Patent Appeals and Interferences, an administrative review body within the Patent Office. If the decision of the Board is unfavorable to the applicant, he can appeal to the Court of Appeals for the Federal Circuit or can sue in the District of Columbia federal court to order the Patent Office to grant the patent.

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