To be patentable, an invention must not only be new and useful, it must also have been not obvious to a person of ordinary skill in the field of the invention at the time the invention was made.  The purpose of this additional requirement for patentability is to prevent the granting of exclusionary rights to persons who have made only a trivial or insignificant contribution to the state of the art.  However, assessing whether a particular invention truly would or would not have been obvious to such an ordinarily skilled person is often quite challenging.

 

In a landmark patent case, the Supreme Court established the framework for an objective analysis to be used in determining obviousness.  According to the Supreme Court, obviousness is a question of law based on the following factual inquiries:

 

a)  The scope and content of the prior art must be determined;

b)  The differences between a claimed invention and the prior art must be ascertained; and

c)  The level of ordinary skill in the pertinent technical field must be resolved.

 

Such inquiries by themselves generally do not directly answer the question of obviousness.  Over the years, courts have attempted to develop further guidelines or tests that can assist in making a determination of whether an invention would have been obvious.

 

The Supreme Court has clarified in a recent decision that an expansive and flexible approach to determining obviousness should be followed and cautioned against the adoption of rigid tests that should be applied in every case. (KSR v. Teleflex) However, an invention is likely to be considered obvious, and therefore unpatentable, if it is a combination of known elements or components that does no more than yield predictable results.  If, in fact, the invention yields a surprising or unexpected benefit or advantage, this can be strong evidence of unobviousness. 

 

An obviousness argument made by a Patent Office examiner during examination or by an accused infringer during litigation often will be based on two or more pieces of prior art, e.g., printed publications that were published before the date a claimed invention was made.  Neither of the prior art references by itself exactly describes all aspects of the claimed invention (if it did, then the invention would not even be novel).  However, if when read together it would be obvious to an ordinarily skilled person to combine elements or components so as to arrive at the claimed invention then that invention likely will be found to be unpatentable.  There must be some articulated reason with some rational underpinning to support a legal conclusion of obviousness.  For example, an invention is likely to be found obvious if the prior art teaches or suggests assembling the various components of the invention or provides the motivation to do so.  However, using hindsight to reconstruct the invention from prior art disclosures using an applicant’s claims as a template is impermissable.  If one of the prior art references is in a different technical field than the invention or “teaches away” from the invention (i.e., would have actually discouraged someone from making the combination), then it is more likely that the invention will be held unobvious.

 

Other considerations such as commercial success, long felt but unsolved needs, the failure of others and the like may be relevant as indicia of obviousness or unobviousness.  That is, in a situation where a consideration of the prior art alone suggests that an invention might have been obvious, such other considerations sometimes referred to as "secondary considerations" or "objective evidence" may be relied on by a patent applicant or patent owner to establish that in fact the invention represents an innovation worthy of being afforded patent protection

 

For commercial success to be relied on, a nexus must be established between the commercial success and the claimed invention.  For example, the commercial success must not be due primarily to advertising and marketing.  The willingness of third parties to license the invention may provide evidence of unobviousness.  If others have tried and failed to develop solutions to the problem solved by the claimed invention or if such problem has been long-recognized but has gone unsolved, this suggests that the solution provided by the claimed invention in fact was not obvious to workers in the field even if the various elements of that invention were known and available.   The skepticism of experts (e.g., the expression of doubt as to whether the invention would actually work), praise of the invention by others (e.g., the receipt of an award for the invention as a significant technical advance), and copying of the invention by competitors are additional secondary considerations that can be relied upon in support of a finding of unobviousness.