Novelty to Nonobviousness

Patentability -
Novelty & Unobviousness
criteria
Req.4
nonobviousness

Req.3
Novelty the whole process for patent application

Chen JingFung (Grace)
@csie.ntut.edu.tw
2012/04/26
Chapter 5, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825
2010 KSR Guidelines Update , here

Outline

• The law(Section 102) recognizes 3 types of
novelty + case studies
• Requirement #4: Unobviousness
– Patent law: 35 USC 103
– 35 USC 103 explanations (obviousness)
• History, guidelines, approaches: 1966->2007->2010
• Determine the patentability flowchart

Grace@iii.org.tw & cise.ntut 2

Patentability – 4 legal requirements

4 legal Law
Criteria
requirement section
Can provide new & unexpected results?
Unobiousness 103 Can make of innovation in the specific
technology?
new physical feature?
Novelty 102 new combination of separate old feature?
new use of an old feature?
Utility 101 Can be regarded as a useful one?
5 classifications
Statutory process machine manufacture compositio
101
class n
New use
Patent law 35 USC 101 or 35 USC 102 or 35 USC 103

Grace@iii.org.tw & ntut.edu

Requirement #3: Novelty –
the law criteria
• The law recognizes 3 types of novelty (Section
102)
– (1) Physical (hardware or method),
– (2) New combination &
– (3) New use


Novelty – the law criteria “Physical”

• A physical feature must be a hardware (including
operational) difference as
– a part with shape, material, size, arrangement if the
component …

• Discover a critical condition of a prior art range
A mordant work on dyeing states

Original New discovery: it
temperature range: can work (5 times):
100 – 150 oC 127 – 130 oC
the law still considers
this range novel

Novelty – the law criteria “Physical” -2
• Apply a mordant to improve the dyeing process
US5494491, 1996, Indigo dye process, An improved
nonpolluting method of dyeing fibers/fabric includes
How it work? pre-treating the fibers with a mordant solution,
preferably a natural nonpolluting mordant solution

Fig ref: education.com

• Other applications: Natural Dye
NT$180 NT$160 NT$800

The method comprising,
(a) placing fabric..
(b) displacing oxygen..
(c) introducing…
Ref: http://www.indigoblue.com.tw/; TW indigoblue dye
(d) oxidizing …
… 6
Grace@iii.org.tw & cise.ntut

Novelty: “New combinations” -
bicycle history (1818-1888)
1818, Baron (German): wood frame,
wheels … , pushed by using feet

1839, Kirkpatrick (Scottish): added cranks
pushed by hand to drive the rear wheel

1863, Lallement (French): changed frame
to steel and put pedals on front wheel

1885, Starley (English): added chain drive
to rear wheel

1888, Dunlop (Scottish): changed tires to
pneumatic
Ref: velocipede.net 7

Novelty: 2 examples for “New
combinations”
• Combine old components Ref: stalkbicycles.com

Combine 2 old
concepts = (new) a
frame is made of a
carbon-fiber alloy
novel under section 102
2011 – Tattoo includes Steel,
1870 – bicycle frame Aluminum, Titanium, alloys,..
Carbon fiber
• New arrangement
front wheel
-> rear wheel
Torque converter is
placed after the
gears (novelty!!)
Ref: velocipede.net 8

Novelty – “New combinations”
application

• The advantage of BMW M135i

using Carbon-fiber
– Light weight = low oil
cost (Utility!!)

German specialist “Wheelsandmore”
two piece wheels combine carbon-
fiber rims with ultra light alloy
centers and titanium screws
(~ 40% weight savings compared to
a stainless steel screw).


Novelty – “New combinations”
key point
• Henri Poincare’ :
– “Invention consists
• in avoiding the constructing of useless combinations
and
• In constructing the useful combinations which are in
the infinite minority.
– To invent is to discern, to choose.”


Novelty – the law criteria “New use”
• Section C5 define to satisfy the novelty
requirement (newness!!)
– invent a new use for old item of hardware/old
process Dorie invents a new Copper smelter invented by
vegetable cooker Jaschik (1830)

Will be considered
novel, since it’s for Use same
a different use method

– your invention involves novel physical hardware
• Technically it can’t be a new-use invention
– Generally speaking
• an invention is unobvious == it must be novel!!

Novelty – the law criteria
“New use” vs. “unobvious”
• The law makes the determination in two-step
process (Sections 102 & 103)
– First, what novel features (§ 102) the invention has
over the closest prior-art reference(s).
• Novelty can be a new physical (hardware) feature, a
new combination or rearrangement of two separate old
features, or a new use of an old feature

– Second, determine if the novelty produces any
new and unexpected results or otherwise
indicates unobviousness (§ 103)

Requirement #4: Unobviousness (1)
• Misconception
– Your invention is different from the prior art
you’re entitled to get a patent on it ??
• Fact
– Your invention should difference over prior art is
considered “unobvious” by PTO or the courts
35 USC 103 Conditions for patentability; non-obvious subject matter

– The differences over prior art should not use the
ordinary (common) skill Section 103
– Patentability shall
• not be negatived manner All patent laws
13

Requirement #4: Unobviousness (2)
• Unobviousness means?
– Foreign countries (including Taiwan) require “an
inventive step”
– the invention products “unusual & surprising results”
– “a synergistic effect”
• The whole > ∑ its parts (Ex. 1 + 1 > 2 )

TV 1.0 broadcast TV TV 2.0 Connected TV TV 3.0 Smart TV
• One-way receiver • TV link to Internet Video • TV links to Service & devices

VHS

Broadcasting TV via Internet Intelligent TV
Watching Catching, Surfing, Playing Sharing, Social Interlink
14

Unobviousness – related law
35 USC 103
• 35 USC 103 Conditions for patentability; non-
obvious subject matter
a) 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 btw 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.
Patentability shall not be negatived by the matter in
which the invention was made
15

Unobviousness: unobvious to Whom?
• PHOSIA: Person Having Ordinary Skill In The
Art
• Section 103 considers “PHOSIA to subject
matter pertains” to measure btw
– in the field of the invention &
– “Ordinary skills” or “all prior art in the field”

Ordinary skills
invention (prior art)

16

The relationships with 2010 KSR guidelines update
35USC103 explanations MPEP §2141& §2143, Replacing
(obviousness) a TSM test to provide a more
complete view of the state
of the law of obviousness
MPEP §2144, support a
citing Fed. Cir. 2008 determination of obviousness
based upon earlier legal
Determination of
precedent as a source of
obviousness is depended
supporting
on the facts of each case
e.g. “structural similarity” in art
2007 KSR guidelines analysis. See MPEP §2144.09
MPEP §2141 (8th ed. MPEP §2143 state the explicit
2001) [Rev. 6, sep. 2007] analysis for a rejection
Noted that teaching-
suggestion-motivation
(TSM) test was but one
possible approach
updating
383 U.S. 1, 1966
MPEP §2141
Remain the foundation to
Manual of Patent Examining Procedure (MPEP)
determine “obviousness” 17

Unobviousness: the examine law
383 U.S. 1 (1966)
• U.S. Supreme Court decreed in the case of
Graham v. John Deere, 383 U.S. 1, 1966; MPEP
2141, that Section 103 is to be interpreted by
those steps:
1. Determine the scope and content of the prior art.
2. Determine the novelty of the invention.
3. Determine the level of skill of artisans in the
pertinent art.
4. Against this background, determine the obviousness
or unobviousness of the inventive subject matter.
5. Also consider secondary and objective factors such
as commercial success, long-felt but unsolved need,
and failure of others.
18

Unobviousness:
2007 KSR Guidelines for obvious
• 2007 KSR Guidelines noted TSM test & identified 6 other
factors as examples of reasonable lines
A. Combining prior art elements according to known methods to yield
predictable results;
B. simple substitution of one known element for another to obtain
predictable results;
C. use of a known technique to improve similar devices, methods, or
products in the same way;
D. applying a known technique to a known device, method, or product
ready for improvement to yield predictable results;
E. “obvious to try” - choosing from a finite number of identified,
predictable solutions, with a reasonable expectation of success; &
F. known work in one field of endeavor may prompt variations of it for use
in either the same field or a different one based on design incentives or
other market forces if the variations are predictable to one of ordinary
skill in the art.
– Any rationale employed must provide a link btw the factual findings
and the legal conclusion of obviousness
19

Unobviousness:
2010 KSR guidelines update (1)
• The Supreme Court in KSR noted that the analysis
supporting a rejection under 35 U.S.C. 103 should be
made explicit.
– Exemplary rationales that may support a conclusion of
obviousness include:
A. ~ F. are as same as 2007 KSR guidelines
G. Some teaching, suggestion, or motivation in the prior art
that would have led one of ordinary skill to modify the
prior art reference or to combine prior art reference
teachings to arrive at the claimed invention.
• See MPEP § 2143 for a discussion of the rationales listed above
along with examples illustrating how the cited rationales may be
used to support a finding of obviousness.
• See also MPEP § 2144 - § 2144.09 for additional guidance
regarding support for obviousness determinations.
Ref: MPEP § 2141 @ uspto.gov, 8th ed.,rev.8 , Jul 2010 20

Unobviousness:
2010 KSR guidelines update (2)
• This 2010 KSR Guidelines Update provides a
‘‘teaching point’’ for each discussed case (2007-
2010)
– Teaching point can quickly determine related cases
– Presented >1 line of reasoning that can properly be
applied to a particular factual scenarios e.g. the
overlapping cases …
• Combining Prior Art Elements: 6 cases
• Substituting One Known Element for Another: 7 cases
• The Obvious To Try Rationale: 7 cases

– Other 4 cases offer “consideration of evidence”

Unobviousness:2010 KSR Guidelines
Update-Combining Prior Art Elements(1)
case yr Teaching point obvious case
In re Omeprazole Fed. A general method could apply to make the claimed product
Patent Litigation, Cir. within the level of skill(the ordinary artisan), the claim may
536 F.3d 1361 2008 nevertheless be nonobvious if the problem which had
suggested use of method had been previously unknown
Sundance, Inc. v. Fed. A claimed invention is likely to be obvious if it is a combination
DeMonte Cir. of known prior art elements that would reasonably have been
Fabricating Ltd., 2008 expected to maintain their respective properties or functions
550 F.3d 1356 after they have been combined.
Ecolab, Inc. v. Fed. A combination of known elements would have been prima
FMC Corp., 569 Cir. facie obvious if an ordinarily skilled artisan would have
F.3d 1335 2009 recognized an apparent reason to combine those elements
and would have known how to do so.
Non-obvious case
Crocs, Inc. v. U.S. Fed. A claimed combination of prior art elements may be
Int’l Trade Cir. nonobvious where the prior art teaches away from the
Comm’n., 598 2010 claimed combination and the combination yields more than
F.3d 1294 predictable results. 22

Update-Combining Prior Art Elements(2)
Wyers v. Master Fed. The scope of analogous art is to be construed broadly
Lock Co., No. Cir. and includes references that are reasonably pertinent to
2009–1412, — July 22, the problem that the inventor was trying to solve.
F.3d—, 2010 WL 2010 Common sense may be used to support a legal
2901839 conclusion of obviousness so long as it is explained with
sufficient reasoning.
Non-obvious case
DePuy Spine, Inc. Fed. Predictability as discussed in KSR encompasses the
v. Medtronic Cir. expectation that prior art elements are capable of being
Sofamor Danek, 2009 combined, as well as the expectation that the
Inc., 567 F.3d combination would have worked for its intended purpose.
1314 An inference that a claimed combination would not have
been obvious is especially strong where the prior art’s
teachings undermine the very reason being proffered as
to why a person of ordinary skill would have combined
the known elements.
23

Unobviousness:2010 KSR Guidelines Update-
Substituting One Known Element for Another(1)
case yr Teaching point
In re ICON Fed. When determining whether a reference in a different field
How to use reference

Health & Fitness, Cir. of endeavor may be used to support a case of obviousness
Inc., 496 F.3d 2007 (i.e., is analogous), it is necessary to consider the problem
1374 to be solved.
Agrizap, Inc. v. Fed. Analogous art is not limited to references in the field of
Woodstream Cir. endeavor of the invention, but also includes references
Corp., 520 F.3d 2008 that would have been recognized by those of ordinary
1337 skill in the art as useful for applicant’s purpose.
Muniauction, Fed. Because Internet and Web browser technologies had
Inc. v. Thomson Cir. become commonplace for communicating and displaying
Corp., 532 F.3d 2008 information, it would have been obvious ...
1318

Example for obviousness


Aventis Fed. A chemical compound would have been obvious over a
Pharma Cir. mixture containing that compound as well as other
Deutschland v. 2007 compounds where it was known or the skilled artisan had
Lupin, Ltd., 499 reason to … claimed compound, and separating the
F.3d 1293 claimed compound from the mixture was routine in the art.
Eisai Co. Ltd. v. Fed. A claimed compound would not have been obvious where
Dr. Reddy’s Cir. there was no reason to modify the closest prior art lead
Labs., Ltd., 533 2008 compound to obtain the claimed compound … but prior art
F.3d 1353 had been mention …
obvious case

Non-obvious case
Any known compound may serve as a lead compound
when there is some reason for starting with that lead
compound and modifying it to obtain the claimed
compound.
A+B ??

Non-obvious
case yr Teaching point case
Procter & Gamble Fed. Cir. It is not necessary to select a single compound as a
Co. v. Teva 2009 ‘‘lead compound’’ in order to support an obviousness
Pharmaceuticals rejection. However, where there was reason to select
USA, Inc., 566 and modify the lead compound to obtain the claimed
F.3d 989 compound, but no reasonable expectation of success,
the claimed compound would not have been obvious.
Altana Pharma AG Fed. Cir. Obviousness of a chemical compound in view of its
v. Teva 2009 structural similarity to a prior art compound may be
Pharms. USA, Inc., shown by identifying some line of reasoning that would
566 F.3d 999 have led one of ordinary skill in the art to select and
modify a prior art lead compound in a particular way to
produce the claimed compound.
This claim is It is not necessary for the reasoning to be explicitly
obvious found in the prior art of record, nor is it necessary for
the prior art to point to only a single lead compound.


Update-The Obvious To Try Rationale(1)
In re Kubin, Fed. A claimed polynucleotide would have been obvious over the
561 F.3d Cir. known protein that it encodes where the skilled artisan would
1351 2009 have had a reasonable expectation of success in deriving the
claimed polynucleotide using standard biochemical techniques,
and the skilled artisan would have had a reason to try to isolate
the claimed polynucleotide.

KSR applies to all technologies, rather than just the ‘‘predictable’’
arts.
Takeda Fed. A claimed compound would not have been obvious where it
Chem. Indus. Cir. was not obvious to try to obtain it from a broad range of
v. 2007 compounds, any one of which could have been selected as the
Alphapharm lead compound for further investigation, and the prior art
Pty., Ltd., taught away from using a particular lead compound, and there
492 F.3d was no predictability or reasonable expectation of success in
1350 making the particular modifications necessary to transform the
Non-obvious lead compound into the claimed compound.
case Grace@iii.org.tw & cise.ntut
27

Non-obvious
case yr Teaching point case
Ortho-McNeil Fed. Where the claimed anti-convulsant drug had been
Pharmaceutica Cir. discovered somewhat serendipitously in the course of
l, Inc. v. Mylan 2008 research aimed at finding a new anti-diabetic drug, it would
Labs, Inc., 520 not have been obvious to try to obtain a claimed compound
F.3d where the prior art did not present a finite and easily
1358 traversed number of potential starting compounds, and
there was no apparent reason for selecting a particular
starting compound from among a number of unpredictable
alternatives.
Bayer Schering Fed. A claimed compound would have been obvious where it
Pharma A.G. v. Cir. was obvious to try to obtain it from a finite and easily
Barr Labs., Inc., 2009 traversed number of options that was narrowed down from
575 F.3d 1341 a larger set of possibilities by the prior art, and the
outcome of obtaining the claimed compound was
reasonably predictable.
obvious case

case yr Teaching point Non-obvious case
Sanofi- Fed. A claimed isolated stereoisomer would not have been
Synthelabo v. Cir. obvious where the claimed stereoisomer exhibits
Apotex, Inc., 2008 unexpectedly strong therapeutic advantages over the prior
550 F.3d 1075 art racemic mixture without the correspondingly expected
toxicity, and the resulting properties of the enantiomers
separated from the racemic mixture were unpredictable.
Perfect Web Fed. Where there were a finite number of identified,
Techs., Inc. v. Cir. predictable solutions and there is no evidence of
InfoUSA, Inc., 2009 unexpected results, an obvious to try inquiry may properly
587 F.3d 1324 lead to a legal conclusion of obviousness. Common sense
may be used to support a legal conclusion of obviousness
obvious case
so long as it is explained with sufficient reasoning.
Rolls-Royce, PLC Fed. An obvious to try rationale may be proper when the
v. United Cir. possible options for solving a problem were known and
Technologies 2010 finite.
Corp., 603 F.3d However, if the possible options were not either known or
1325 finite, then an obvious to try rationale cannot be used to
support a conclusion of obviousness.
29

Update - Consideration of Evidence (1)
PharmaStem Fed. Cir. Even though all evidence must be considered in
Therapeutics, 2007 an obviousness analysis, evidence of
Inc. v. ViaCell, nonobviousness may be outweighed by
Inc., 491 F.3d contradictory evidence in the record or by what is
1342 in the specification.
Although a reasonable expectation of success is
needed to support a case of obviousness,
absolute predictability is not required.
In re Sullivan, Fed. All evidence, including evidence rebutting a prima
498 F.3d Cir. facie case of obviousness, must be considered
1345 2007 when properly presented.

Consider the evidence as possible
as you can


Update - Consideration of Evidence (2)
Business consideration
Asyst Techs., Inc. v. Fed. Cir. Evidence of secondary considerations of obviousness
Emtrak, Inc., 544 2008 such as commercial success and long-felt need may be
F.3d 1310 insufficient to overcome a prima facie case of
obviousness if the prima facie case is strong.

An argument for nonobviousness based on
commercial success or long-felt need is undermined
when there is a failure to link the commercial success
or long-felt need to a claimed feature that
distinguishes over the prior art.
Hearing Fed. Cir. Evidence that has been properly presented in a timely
Components, Inc. 2010 manner must be considered on the record.
v. Shure Inc., 600
F.3d 1357 Evidence of commercial success is pertinent where a
nexus btw the success of the product and the claimed
invention has been demonstrated.
31

A. Is invention in a
statutory class
The patentability
(machine, article,
process, composition,
flowchart
or new use)?
N Y E. Does it have one or more of the
B. Is it useful? secondary indications of
N unobviousness?
Y
C. Does it have novelty
(new physical feature,
new combination or F. If the invention is a combination of
N arrangement of old individually old features, continue with
feature, or new use box G; otherwise go directly to the end.
of old feature)?
Y
D. Would the novelty Y
G. The results achieved by the
be unobvious to a combination > ∑ (the results of the
PHOSITA – that is, possibly
N prior-art reference), i.e. synergism
does the novelty exists.
produce any new &
N Y
unexpected result?
Y N H. PTO is very
J. PTO is I. PTO is likely to
× PTO probably will refuse to grant a patent. See if probably likely to grant a
you can use another from of offensive rights, grant a grant a patent
market as a trade secret, or invent something else. patent patent 32

E. Does it have one or more of the
secondary indications of unobviousness?
(the more the better)
 It succeeds where others failed
 It successfully solves a problem never before even recognized
 It successfully solves a problem previously thought or found
insolvable
 It has attained commercial success
 It’s classified in a crowded art where a small advance carries great
weight
 It omits an element in a prior art arrangement without loss of
capability
 It contains a modification not suggested in the prior art
 It provides an advantage which never before was appreciated
 It provides an operative result where before failure prevailed
 It successfully implements an ancient, but never implemented, idea
 It solves a long-felt, long-existing, and unsolved need
 It is contrary to the teachings of the prior art
33

G. The results achieved by the combination
> ∑ (the results of the prior-art reference),
i.e. synergism exists.

 The combination is not expressly suggested or implied by the prior
art
 The prior-art references could not be combined physically
 The references would not show the invention, even if physically
combined
 The prior-art references would not operate if combined
 > 3 references would have to be combined to show the invention
 The references themselves teach they should not be combined
 Awkward, separate, or involved steps are required to combine the
references
 The references are from different technical fields than each other
or from the invention
 It provides synergism (results > ∑ (the results of references))

34

Summary
• The law(Section 102) recognizes 3 types of
novelty
– Physical (hardware or method), New combination
& New use
– Talk two-step process (Sections 102 & 103) btw
novel features (§ 102) & unobviousness (§ 103)
• Survey patentability req.4 unobviousness
(section 103)
– start 383 U.S. 1 (1966) -> 2007 KSR Guidelines for
obvious -> 2010 KSR guidelines update
• summary The patentability flowchart

Homework
• Go to http://www.wipsglobal.com/ to search the
related articles by your idea & group idea (at least
2 cases)
– One for your idea; the other for group idea
– 2 articles for group idea if your idea has been
combined
– Hint:
• extend idea to show the “unusual & surprising” results
• Try to describe “an inventive step”
• Team work
– Determine those 2 cases by using the check lists at
patentability flowchart (P.32) - box E (P.33) & box G
(P.34)

Improve “team” innovations
• Sometimes when you innovate, you make
mistakes. It is best to admit them quickly, and
get on with improving your other innovations
– Steve Jobs(1955-2011)
3D printer

Inventor: Jake Zien, Pivotable Surge Protection,
Ref: technow.com.hk
Invented Together at Quirky.com.
37

Reference

• David Pressman, chapter 5, “Patent It Yourself: Your Step-by-Step
Guide” to Filing at the U.S. Patent Office, 2011, 15th edition, ISBN-
10: 1413313825
– Reference by “Previous Course Slide” record set: introduce invention,
evaluate invention, WM2Patent, Patent Requirement (novelty)
• 2010 KSR Guidelines Update, here

• Blog: http://fungsiong.blogspot.com/
– Introduce hybrid TV/Smart TV (hbbTV) including widget design,
Android technology (API), system, ecosystem, framework, service,
application…,
– Agile for progressing:
http://fungsiong.blogspot.com/search/label/Agile
• About how to teamwork
– Some programming info. as Apache wookie, refactoring tech, CE-HTML,
a solution about removing a backdoor “Trojan” & surveillance paper
38

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