Open Government Licence v3. Category : United Kingdom Statutory Instruments. Namespaces File Discussion. Views View Edit History. Main page Welcome Community portal Village pump Help center. Upload file Recent changes Latest files Random file Contact us. Download as PDF Printable version. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
Standard prior art paving machines typically combined equipment for spreading and shaping asphalt onto a single chassis. The patent claim included the well-known element of a radiant-heat burner attached to the side of the paver for the purpose of preventing cold joints during continuous strip paving. The prior art used radiant heat for softening the asphalt to make patches, but did not use radiant heat burners to achieve continuous strip paving. All of the component parts were known in the prior art.
The only difference was the combination of the "old elements" into a single device by mounting them on a single chassis. The Court found that the operation of the heater was in no way dependent on the operation of the other equipment, and that a separate heater could also be used in conjunction with a standard paving machine to achieve the same results. Note that combining known prior art elements is not sufficient to render the claimed invention obvious if the results would not have been predictable to one of ordinary skill in the art.
United States v. Adams, U. In Adams, the claimed invention was to a battery with one magnesium electrode and one cuprous chloride electrode that could be stored dry and activated by the addition of plain water or salt water. Although magnesium and cuprous chloride were individually known battery components, the Court concluded that the claimed battery was nonobvious. The Court stated that "[d]espite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore" the teaching away of the prior art that such batteries were impractical and that water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium electrodes.
The claimed invention in Ruiz v. Chance Co. The prior art Fuller used screw anchors for underpinning existing structural foundations. Fuller used a concrete haunch to transfer the load of the foundation to the screw anchor. The prior art Gregory used a push pier for underpinning existing structural foundations.
Gregory taught a method of transferring load using a bracket, specifically: a metal bracket transfers the foundation load to the push pier. The pier is driven into the ground to support the load. Neither reference showed the two elements of the claimed invention — screw anchor and metal bracket — used together. The court found that "artisans knew that a foundation underpinning system requires a means of connecting the foundation to the load-bearing member.
The nature of the problem to be solved — underpinning unstable foundations — as well as the need to connect the member to the foundation to accomplish this goal, would have led one of ordinary skill in the art to choose an appropriate load bearing member and a compatible attachment. Therefore, it would have been obvious to use a metal bracket as shown in Gregory in combination with the screw anchor as shown in Fuller to underpin unstable foundations.
The invention involved applying enteric coatings to a drug in pill form for the purpose of ensuring that the drug did not disintegrate before reaching its intended site of action. The claimed formulation included two layers of coatings over the active ingredient. Apotex had argued that the claimed invention was obvious because coated omeprazole tablets were known from a prior art reference, and because secondary subcoatings in pharmaceutical preparations generally were also known.
There was no evidence of unpredictability associated with applying two different enteric coatings to omeprazole. This degradation of omeprazole by interaction with the prior art coating had not been recognized in the prior art. Therefore, the district court reasoned that based on the evidence available, a person of ordinary skill in the art would have had no reason to include a subcoating in an omeprazole pill formulation.
Even though subcoatings for enteric drug formulation were known, and there was no evidence of undue technical hurdles or lack of a reasonable expectation of success, the formulation was nevertheless not obvious because the flaws in the prior art formulation that had prompted the modification had not been recognized. Thus there would have been no reason to modify the initial formulation, even though the modification could have been done.
Moreover, a person of skill in the art likely would have chosen a different modification even if they had recognized the problem. Office personnel should note that in this case the modification of the prior art that had been presented as an argument for obviousness was an extra process step that added an additional component to a known, successfully marketed formulation.
The proposed modification thus amounted to extra work and greater expense for no apparent reason. This is not the same as combining known prior art elements A and B when each would have been expected to contribute its own known properties to the final product.
In the Omeprazole case, in view of the expectations of those of ordinary skill in the art, adding the subcoating would not have been expected to confer any particular desirable property on the final product. Rather, the final product obtained according to the proposed modifications would merely have been expected to have the same functional properties as the prior art product.
The Omeprazole case can also be analyzed in view of the discovery of a previously unknown problem by the patentee. If the adverse interaction between active agent and coating had been known, it might well have been obvious to use a subcoating.
However, since the problem had not been previously known, there would have been no reason to incur additional time and expense to add another layer, even though the addition would have been technologically possible.
This is true because the prior art of record failed to mention any stability problem, despite the acknowledgment during testimony at trial that there was a known theoretical reason that omeprazole might be subject to degradation in the presence of the known coating material. The case of Crocs, Inc. Int'l Trade Comm'n, F. Patent No. The strap was attached via connectors that allowed it to be in contact with the base section, and to pivot relative to the base section.
Because both the base portion and the strap were made of foam, friction between the strap and the base section allowed the strap to maintain its position after pivoting.
In other words, the foam strap did not fall under the force of gravity to a position adjacent to the heel of the base section. The International Trade Commission ITC determined that the claims were obvious over the combination of two pieces of prior art. The second was the Aguerre patent, which taught heel straps made of elastic or another flexible material.
The Federal Circuit disagreed. The Federal Circuit stated that the prior art did not teach foam heel straps, or that a foam heel strap should be placed in contact with a foam base. The Federal Circuit pointed out that the prior art actually counseled against using foam as a material for the heel strap of a shoe.
The record shows that the prior art would actually discourage and teach away from the use of foam straps. An ordinary artisan in this field would not add a foam strap to the foam Aqua Clog because foam was likely to stretch and deform, in addition to causing discomfort for a wearer. The prior art depicts foam as unsuitable for straps.
The Federal Circuit continued, stating that even if — contrary to fact — the claimed invention had been a combination of elements that were known in the prior art, the claims still would have been nonobvious. The Federal Circuit pointed out that this combination "yielded more than predictable results.
Aguerre had taught that friction between the base section and the strap was a problem rather than an advantage, and had suggested the use of nylon washers to reduce friction. Thus the Federal Circuit stated that even if all elements of the claimed invention had been taught by the prior art, the claims would not have been obvious because the combination yielded more than predictable results. If results would not have been predictable, Office personnel should not enter an obviousness rejection using the combination of prior art elements rationale, and should withdraw such a rejection if it has been made.
Sundance, Inc. DeMonte Fabricating Ltd. The claim was found to be obvious over the prior art applied. A first prior art reference taught that a reason for making a segmented cover was ease of repair, in that a single damaged segment could be readily removed and replaced when necessary. A second prior art reference taught the advantages of a mechanized cover for ease of opening.
The Federal Circuit noted that the segmentation aspect of the first reference and the mechanization function of the second perform in the same way after combination as they had before. The Federal Circuit further observed that a person of ordinary skill in the art would have expected that adding replaceable segments as taught by the first reference to the mechanized cover of the other would result in a cover that maintained the advantageous properties of both of the prior art covers.
Thus, the Sundance case points out that a hallmark of a proper obviousness rejection based on combining known prior art elements is that one of ordinary skill in the art would reasonably have expected the elements to maintain their respective properties or functions after they have been combined. In the case of Ecolab, Inc. FMC Corp.
The invention in question was a method of treating meat to reduce the incidence of pathogens, by spraying the meat with an antibacterial solution under specified conditions. The parties did not dispute that a single prior art reference had taught all of the elements of the claimed invention, except for the pressure limitation of "at least 50 psi. FMC had argued at the district court that the claimed invention would have been obvious in view of the first prior art reference mentioned above in view of a second reference that had taught the advantages of spray-treating at pressures of 20 to psi when treating meat with a different antibacterial agent.
Disagreeing with the district court, the Federal Circuit stated that "there was an apparent reason to combine these known elements — namely to increase contact between the [antibacterial solution] and the bacteria on the meat surface and to use the pressure to wash additional bacteria off the meat surface.
When considering the question of obviousness, Office personnel should keep in mind the capabilities of a person of ordinary skill. In Ecolab, the Federal Circuit stated:. The answer is yes. If optimization of the application parameters had not been within the level of ordinary skill in the art, the outcome of the Ecolab case may well have been different. In the case of Wyers v. Master Lock Co. The court discussed two different sets of claims in Wyers, both drawn to improvements over the prior art hitch pin locks.
The first improvement was a removable sleeve that could be placed over the shank of the hitch pin lock so that the same lock could be used with towing apertures of varying sizes. The second improvement was an external flat flange seal adapted to protect the internal lock mechanism from contaminants. Wyers had admitted that each of several prior art references taught every element of the claimed inventions except for the removable sleeve and the external covering.
Master Lock had argued that these references, in combination with additional references teaching the missing elements, would have rendered the claims obvious. The court first addressed the question of whether the additional references relied on by Master Lock were analogous prior art. The reference teaching the sealing improvement dealt with a padlock rather than a lock for a tow hitch. However, the court also observed that even if sealed padlocks were not in the same field of endeavor, they were nevertheless reasonably pertinent to the problem of avoiding contamination of a locking mechanism for tow hitches.
The court then turned to the question of whether there would have been adequate motivation to combine the prior art elements as had been urged by Master Lock. The court recalled the Graham inquiries, and also emphasized the "expansive and flexible" post-KSR approach to obviousness that must not "deny factfinders recourse to common sense. The court stated:. KSR and our later cases establish that the legal determination of obviousness may include recourse to logic, judgment, and common sense, in lieu of expert testimony.
Thus, in appropriate cases, the ultimate inference as to the existence of a motivation to combine references may boil down to a question of "common sense," appropriate for resolution on summary judgment or JMOL. InfoUSA, Inc. After reviewing these principles, the court proceeded to explain why adequate motivation to combine had been established in this case.
With regard to the sleeve improvement, it pointed out that the need for different sizes of hitch pins was well known in the art, and that this was a known source of inconvenience and expense for users. The court also mentioned the marketplace aspect of the issue, noting that space on store shelves was at a premium, and that removable sleeves addressed this economic concern.
As to the sealing improvement, the court pointed out that both internal and external seals were well-known means to protect locks from contaminants. The court concluded that the constituent elements were being employed in accordance with their recognized functions, and would have predictably retained their respective functions when combined as suggested by Master Lock. Office personnel should note that although the Federal Circuit invoked the idea of common sense in support of a conclusion of obviousness, it did not end its explanation there.
Rather, the court explained why a person of ordinary skill in the art at the time of the invention, in view of the facts relevant to the case, would have found the claimed inventions to have been obvious. The Court quoting In re Kahn, F. Office personnel should continue to provide a reasoned explanation for every obviousness rejection. The claim in DePuy Spine, Inc. Medtronic Sofamor Danek, Inc. A prior art reference Puno disclosed all of the elements of the claim except for the compression member.
Instead, the screw head in Puno was separated from the receiver member to achieve a shock absorber effect, allowing some motion between receiver member and the vertebrae. The missing compression member was readily found in another prior art reference Anderson , which disclosed an external fracture immobilization splint for immobilizing long bones with a swivel clamp capable of polyaxial movement until rigidly secured by a compression member.
In conducting its analysis, the Federal Circuit noted that the "predictable result" discussed in KSR refers not only to the expectation that prior art elements are capable of being physically combined, but also that the combination would have worked for its intended purpose. In this case, it was successfully argued that Puno "teaches away" from a rigid screw because Puno warned that rigidity increases the likelihood that the screw will fail within the human body, rendering the device inoperative for its intended purpose.
In fact, the reference did not merely express a general preference for pedicle screws having a "shock absorber" effect, but rather expressed concern for failure and stated that the shock absorber feature "decrease[s] the chance of failure of the screw of the bone-screw interface" because "it prevent[s] direct transfer of load from the rod to the bone-screw interface.
In view of this teaching and the backdrop of collective teachings of the prior art, the Federal Circuit determined that Puno teaches away from the proposed combination such that a person of ordinary skill would have been deterred from combining the references as proposed. Secondary considerations evaluated by the Federal Circuit relating to failure by others and copying also supported the view that the combination would not have been obvious at the time of the invention.
The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. The claimed invention in In re Fout, F. The prior art Pagliaro method produced a decaffeinated vegetable material and trapped the caffeine in a fatty material such as oil. The caffeine was then removed from the fatty material by an aqueous extraction process. Applicant Fout substituted an evaporative distillation step for the aqueous extraction step.
The prior art Waterman suspended coffee in oil and then directly distilled the caffeine through the oil. The court found that "[b]ecause both Pagliaro and Waterman teach a method for separating caffeine from oil, it would have been prima facie obvious to substitute one method for the other.
Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious. Although the prior art Polisky article authored by two of the three joint inventors of the application had explicitly suggested employing the method described for protein synthesis, the inserted heterologous gene exemplified in the article was one that normally did not proceed all the way to the protein production step, but instead terminated with the mRNA.
A second reference to Bahl had described a general method of inserting chemically synthesized DNA into a plasmid. Thus, it would have been obvious to one of ordinary skill in the art to replace the prior art gene with another gene known to lead to protein production, because one of ordinary skill in the art would have been able to carry out such a substitution, and the results were reasonably predictable.
This is not a situation where the rejection is a statement that it would have been "obvious to try" without more. Here there was a reasonable expectation of success. The fact pattern in Ruiz v. AB Chance Co. The prior art showed differing load-bearing members and differing means of attaching the foundation to the member. The prior art Wyant disclosed at least one pocket formed by folding a single sheet and securing the folder portions along the inside margins using any convenient bonding method.
The prior art Wyant did not disclose bonding the sheets to form a continuous two-ply seam. The prior art Dick disclosed a pocket that is made by stitching or otherwise securing two sheets along three of its four edges to define a closed pocket with an opening along its fourth edge.
In considering the teachings of Wyant and Dick, the Board "found that 1 each of the claimed elements is found within the scope and content of the prior art; 2 one of ordinary skill in the art could have combined the elements as claimed by methods known at the time the invention was made; and 3 one of ordinary skill in the art would have recognized at the time the invention was made that the capabilities or functions of the combination were predictable.
On reexamination, the examiner rejected the claims as obvious based on a combination of references including an advertisement Damark for a folding treadmill demonstrating all of the claim elements other than the gas spring, and a patent Teague with a gas spring.
Teague was directed to a bed that folds into a cabinet using a novel dual-action spring that reverses force as the mechanism passes a neutral position, rather than a single-action spring that would provide a force pushing the bed closed at all times. The dual-action spring reduced the force required to open the bed from the closed position, while reducing the force required to lift the bed from the open position. The Federal Circuit addressed the propriety of making the combination since Teague was in a different field than the application.
Teague was found to be reasonably pertinent to the problem addressed in the application because the folding mechanism did not require any particular focus on treadmills, but rather generally addressed problems of supporting the weight of such a mechanism and providing a stable resting position.
The court also considered whether one skilled in the art would have been led to combine the teachings of Damark and Teague. Appellant argued that Teague teaches away from the invention because it directs one skilled in the art not to use single-action springs and does not satisfy the claim limitations as the dual-action springs would render the invention inoperable.
The Federal Circuit considered these arguments and found that, while Teague at most teaches away from using single-action springs to decrease the opening force, it actually instructed that single-action springs provide the result desired by the inventors, which was to increase the opening force provided by gravity.
As to inoperability, the claims were not limited to single-action springs and were so broad as to encompass anything that assists in stably retaining the tread base, which is the function that Teague accomplished. Additionally, the fact that the counterweight mechanism from Teague used a large spring, which appellant argued would overpower the treadmill mechanism, ignores the modifications that one skilled in the art would make to a device borrowed from the prior art.
One skilled in the art would size the components from Teague appropriately for the application. ICON is another useful example for understanding the scope of analogous art. The art applied concerned retaining mechanisms for folding beds, not treadmills. When determining whether a reference may properly be applied to an invention in a different field of endeavor, it is necessary to consider the problem to be solved. It is certainly possible that a reference may be drawn in such a way that its usefulness as a teaching is narrowly restricted.
However, in ICON, the problem to be solved was not limited to the teaching of the "treadmill" concept. ICON is also informative as to the relationship between the problem to be solved and existence of a reason to combine.
An assessment of whether a combination would render the device inoperable must not "ignore the modifications that one skilled in the art would make to a device borrowed from the prior art. Agrizap, Inc. Woodstream Corp. The only difference between the claimed device and the prior art stationary pest control device was that the claimed device employed a resistive electrical switch, while the prior art device used a mechanical pressure switch.
A resistive electrical switch was taught in two prior art patents, in the contexts of a hand-held pest control device and a cattle prod. In determining that the claimed invention was obvious, the Federal Circuit noted that "[t]he asserted claims simply substitute a resistive electrical switch for the mechanical pressure switch" employed in the prior art device. In this case, the prior art concerning the hand-held devices revealed that the function of the substituted resistive electrical switch was well known and predictable, and that it could be used in a pest control device.
According to the Federal Circuit, the references that taught the hand-held devices showed that "the use of an animal body as a resistive switch to complete a circuit for the generation of an electric charge was already well known in the prior art. Finally, the Federal Circuit noted that the problem solved by using the resistive electrical switch in the prior art hand-held devices — malfunction of mechanical switches due to dirt and dampness — also pertained to the prior art stationary pest control device.
The Federal Circuit recognized Agrizap as "a textbook case of when the asserted claims involve a combination of familiar elements according to known methods that does no more than yield predictable results. Agrizap exemplifies a strong case of obviousness based on simple substitution that was not overcome by the objective evidence of nonobviousness offered.
The invention at issue in Muniauction, Inc. Thomson Corp. A municipality could offer a package of bond instruments of varying principal amounts and maturity dates, and an interested buyer would then submit a bid comprising a price and interest rate for each maturity date.
It was also possible for the interested buyer to bid on a portion of the offering. The claimed invention considered all of the noted parameters to determine the best bid. It operated on conventional Web browsers and allowed participants to monitor the course of the auction. The only difference between the prior art bidding system and the claimed invention was the use of a conventional Web browser.
Thomson argued that the claimed invention amounted to incorporating a Web browser into a prior art auction system, and was therefore obvious in light of KSR. Muniauction rebutted the argument by offering evidence of skepticism by experts, copying, praise, and commercial success. Although the district court found the evidence to be persuasive of nonobviousness, the Federal Circuit disagreed.
It noted that a nexus between the claimed invention and the proffered evidence was lacking because the evidence was not coextensive with the claims at issue. The Federal Circuit analogized this case to Leapfrog Enters. Fisher-Price, Inc. In Leapfrog, the court noted that market pressures would have prompted a person of ordinary skill to use modern electronics in the prior art device.
Similarly in Muniauction, market pressures would have prompted a person of ordinary skill to use a conventional Web browser in a method of auctioning municipal bonds. In Aventis Pharma Deutschland v. Lupin Ltd. The 5 S stereoisomer is one in which all five stereocenters in the ramipril molecule are in the S rather than the R configuration. A mixture of various stereoisomers including 5 S ramipril had been taught by the prior art. The question before the court was whether the purified single stereoisomer would have been obvious over the known mixture of stereoisomers.
The record showed that the presence of multiple S stereocenters in drugs similar to ramipril was known to be associated with enhanced therapeutic efficacy. For example, when all of the stereocenters were in the S form in the related drug enalapril SSS enalapril as compared with only two stereocenters in the S form SSR enalapril , the therapeutic potency was times as great. There was also evidence to indicate that conventional methods could be used to separate the various stereoisomers of ramipril.
The district court saw the issue as a close case, because, in its view, there was no clear motivation in the prior art to isolate 5 S ramipril. However, the Federal Circuit disagreed, and found that the claims would have been obvious. Requiring an explicit teaching to purify the 5 S stereoisomer from a mixture in which it is the active ingredient is precisely the sort of rigid application of the TSM test that was criticized in KSR. The Aventis court also relied on the settled principle that in chemical cases, structural similarity can provide the necessary reason to modify prior art teachings.
The Federal Circuit also addressed the kind of teaching that would be sufficient in the absence of an explicitly stated prior art-based motivation, explaining that an expectation of similar properties in light of the prior art can be sufficient, even without an explicit teaching that the compound will have a particular utility. In the chemical arts, the cases involving so-called "lead compounds" form an important subgroup of the obviousness cases that are based on substitution.
The Federal Circuit has had a number of opportunities since the KSR decision to discuss the circumstances under which it would have been obvious to modify a known compound to arrive at a claimed compound. The following cases explore the selection of a lead compound, the need to provide a reason for any proposed modification, and the predictability of the result. Eisai Co. Proof sent to secretariat or FDIS ballot initiated: 8 weeks.
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