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© 2003, Gallagher & Dawsey Co., LPA
October 2003
Rejections based on obviousness are among the most difficult for
inventors and patent attorneys to deal with. The reason lies in the
vagueness of the statute itself. A claimed invention is unpatentable
due to obviousness if the differences between it 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." 35 U.S.C. § 103(a). As a result, patent lawyers must
struggle to determine how far the creative reach of one skilled in the
art may actually extend.
In the recent case Akamai Techs., Inc. v. Cable & Wireless Internet
Serv., Inc., the Court of Appeals for the Federal Circuit took the
opportunity to point out that this inquiry is subject to factual, and
not just speculative, inquiry. These factual inquiries include the
scope and content of the prior art, the level of ordinary skill in the
field of the invention, the differences between the claimed invention
and the prior art, and any objective evidence of nonobviousness such
as long-felt need and commercial success. In particular, when a
rejection depends on a combination of prior art references, there must
be some teaching, suggestion, or motivation to combine the references.
Although the suggestion to combine references may flow from the nature
of the problem, the suggestion more often comes from the teachings of
the pertinent references, or from the ordinary knowledge of those
skilled in the art that certain references are of special importance
in a particular field. Therefore, when determining the patentability
of a claimed invention which combines two known elements, the court
found that "the question is whether there is something in the prior
art as a whole to suggest the desirability, and thus the obviousness,
of making the combination."
Secondary Considerations
The court also reiterated that secondary considerations play an
important role in determinations of obviousness. These considerations
commonly include unexpected results, a combination that is greater
than the sum of the parts (synergism), satisfaction of a long-felt
demand, and commercial success. In the Akamai case, the court found an
infrequent secondary consideration key to rejecting the argument of
obviousness: Copying.
The court found that the record showed that the defendants had
expended significant effort to determine how Akamai's products worked,
and then altered their product to copy Akamai's technology. This
evidence of copying is relevant to an obviousness determination, as
the court noted "The copying of an invention may constitute evidence
that the invention was not an obvious one. . . . This would be
particularly true where the copyist had itself attempted for a
substantial length of time to design a similar device, and had
failed."
A Process for Attacking Obviousness
The findings in Akamai reiterate a good plan for attacking obviousness
arguments; begin with a careful examination of any combined references
to determine whether or not there is a suggestion in the references
themselves that makes the combination reasonable, and then work
carefully through all known secondary considerations to build a
cumulative case for non-obviousness. |
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