Section 103 of the Patent Act

Understanding Section 103 of the Patent Act: The Doctrine of Obviousness

Section 103 of the Patent Act (35 United States Code Section 103) plays a crucial role in determining whether a patent application meets the criteria for nonobviousness. This section addresses the obviousness requirement, which is essential for ensuring that patents are granted only for truly novel and non-obvious inventions. In this blog post, we will delve into the intricacies of Section 103, including its historical context, key components, relevant case law, and practical implications for patent applications in the United States Patent and Trademark Office.

 

Verna Law, P.C. focuses on patent and intellectual property law.  If you have any questions, please send us e-mail at anthony@vernalaw.com or call us at 914-908-6757.

 

Historical Context and Legislative Evolution

Section 103 of the Patent Act emerged from the evolution of patent law aimed at refining the standards for patentability. The purpose of this section is to prevent the granting of patents for inventions that are obvious to a person of ordinary skill in the relevant field. Understanding the historical context helps clarify the purpose and scope of this provision.

 

The patent law’s evolution reflects a shift towards a more rigorous assessment of patent claims. Prior to the enactment of Section 103, the patentability of inventions was assessed under the broader criteria of novelty and utility. Section 103 was introduced to address concerns that patents were being granted for inventions that, while novel, were not sufficiently inventive or nonobvious.

 

The Nonobviousness Requirement

Nonobviousness is a fundamental criterion for patentability under Section 103. To qualify for a patent, an invention must not be obvious to a person of ordinary skill in the relevant field at the time the invention was made. This requirement ensures that patents are awarded only for inventions that involve an inventive step beyond what was already known, especially between similar devices with structural similarity or a similar composition of matter.

 

Key Components of Section 103

1. Person of Ordinary Skill in the Art (POSITA): The standard for obviousness is evaluated from the perspective of a hypothetical individual with ordinary skill in the relevant field. This person is assumed to be knowledgeable about prior art and capable of combining references to solve technical problems.

2. Effective Filing Date: The obviousness inquiry is conducted with respect to the effective filing date of the claimed invention. This date is crucial as it determines the prior art references that are considered in assessing obviousness.

3. Primary and Secondary References: A patent examiner may use primary and secondary references to assess the obviousness of a claimed invention. A primary reference is a prior art reference that discloses similar features to the claimed invention, while a secondary reference provides additional support or context.

4. Secondary Considerations: Secondary considerations, such as commercial success, failure of others, and unexpected results, can be used to rebut an obviousness rejection. These factors provide evidence that the claimed invention was not obvious, even if the prior art suggests otherwise.

Relevant Case Law

Case law provides valuable insights into how courts interpret and apply Section 103. Here are some key cases:

1. Graham v. John Deere Co. (1966): This landmark Supreme Court case established the framework for determining obviousness, outlining factors to consider, including the scope and content of prior art, differences between the prior art and the claimed invention, and the level of ordinary skill in the art.

2. KSR International Co. v. Teleflex Inc. (2007): The Supreme Court in KSR emphasized the need for a flexible, expansive approach to the obviousness inquiry. The Court rejected a rigid application of the “teaching, suggestion, or motivation” test and endorsed a more holistic approach that considers the inventive step in light of common sense and ordinary creativity.

3. In re Kahn (2006): The Federal Circuit clarified that the combination of prior art references may render an invention obvious if the references themselves suggest the combination. This case underscored the importance of considering whether the references, when combined, would be obvious to someone skilled in the art.

4. In re Kotzab (2004): This Federal Circuit decision highlighted the significance of secondary considerations in the obviousness analysis. The court emphasized that evidence of unexpected results and commercial success can counter a prima facie case of obviousness.

PowerOasis, Inc. v. T-Mobile USA, Inc. (Fed. Cir. 2008) 522 F.3d 129986 U.S.P.Q.2d 1385:

In PowerOasis, the Federal Circuit considered a continuation-in-part (“CIP”) application that claimed priority to an earlier filed application. 522 F.3d at 1304. The matter arose where a defendant had claimed patent invalidity based on prior art—the Federal Circuit found that the patentee “ha[d] conceded that unless the asserted claims are accorded an earlier filing date than [its] 2000 CIP Application,” then the patent at issue would be invalid. Id. at 1305. The patentee contended that “the party asserting invalidity” of a patent “must always bear the burden of proof as to whether claims in a patent are entitled to the priority date of a parent application.” Id. at 1304. The Federal Circuit rejected the patentee’s argument and found that the burden properly lay with the patentee to establish its entitlement to an earlier priority date, because

 

the PTO did not, at any point, make any determination with regard to the priority date of the various claims of the asserted patents. There was no interference in this case related to the asserted patents or the 2000 CIP Application that awarded PowerOasis the benefit of priority for its Original Application nor was there any determination of priority during prosecution incident to a rejection…. In fact, in this case the PTO did not make a determination regarding the priority date for the asserted claims with respect to any reference.

Id. PowerOasis then went on to “affirm[ ] [a] district court’s grant of summary judgment in favor of defendants, concluding that two [CIP] applications were not entitled to the benefit of the filing date of the original application.” Combined Tactical Sys. Inc. v. Def. Tech. Corp. of Am., 589 F. Supp. 2d 260, 266 (S.D.N.Y. 2008) (citing PowerOasis, 522 F.3d at 1311), aff’d, 402 F. App’x 520 (Fed. Cir. 2010). “The written description of the parent application disclosed a ‘customer interface’ on [a] vending machine,” whereas “[t]he continuation-in-part applications claimed a customer interface located remotely from the vending machine, such as on a customer’s laptop.” Id. (citing PowerOasis, 522 F.3d at 1310). The Federal Circuit held that even if it were “obvious to substitute a customer laptop for a user interface disclosed on a vending machine[,] [o]bviousness simply is not enough[;] [t]he [claimed] subject matter must be disclosed to establish possession.” Id. (citing PowerOasis, 522 F.3d at 1310).

 

Case Summary: Pop Top Corp. v. Nook Digital, LLC

Court: United States District Court for the Southern District of New York
Date: June 18, 2024
Citation: 2024 WL 3043053 (Slip Copy)

Background:Pop Top Corp. (“Pop Top”) sued Nook Digital, LLC (“Nook”) for alleged infringement of its patent related to an innovative container design. The patent in question was for a “resealable beverage container” that purportedly improved user convenience and drink preservation. Nook challenged the patent’s validity on the grounds of obviousness.

Issue:The primary issue was whether the patent held by Pop Top was obvious under 35 U.S.C. § 103. Nook argued that the patented design was an obvious variation of existing designs and thus not patentable.

Analysis:In determining patent obviousness, the court applied the standard set forth in KSR Int’l Co. v. Teleflex Inc., which requires assessing whether the invention would have been obvious to a person having ordinary skill in the art (PHOSITA) at the time the invention was made.

The court considered several key factors:

1. Prior Art: The court reviewed prior art references that Nook presented, including earlier patents and product designs similar to Pop Top’s container. The prior art included designs with similar resealable features but varied in the specific mechanisms or aesthetics.

2. Differences Between Prior Art and Patent: The court analyzed the differences between the patented design and the prior art. It found that while the patented features were present in earlier designs, the combination and specific implementation of these features in Pop Top’s patent presented a unique solution to a known problem.

3. Secondary Considerations: The court evaluated secondary considerations, such as commercial success, long-felt but unsolved needs, and unexpected results. Pop Top argued that its design had achieved commercial success and addressed a specific user need that was not fully met by prior art.

4. PHOSITA Perspective: The court assessed whether a PHOSITA would have been motivated to combine prior art references to arrive at the patented design. Nook’s argument that the design was an obvious modification was countered by Pop Top’s assertion that the combination of features in their patent was not an evident step for someone skilled in the art.

Decision:The court ruled in favor of Pop Top, finding that the patent was not obvious. It determined that while some elements of the patent were known in prior art, the specific combination and arrangement of features in Pop Top’s design involved an inventive step that would not have been obvious to a PHOSITA. The court emphasized the importance of considering the overall innovation rather than individual elements in isolation.

Conclusion:This case underscores the importance of evaluating the entire invention in the context of prior art to determine patent obviousness. It highlights the need for a nuanced analysis of how prior art references interact and whether the patented invention represents a significant enough advance to merit patent protection.

 

Case Summary: PowX Inc. v. Performance Solutions, LLC

Court: United States District Court for the Southern District of New York
Date: June 14, 2024
Citation: 2024 WL 3010040 (Slip Copy)

Background:PowX Inc. (“PowX”) filed a lawsuit against Performance Solutions, LLC (“Performance Solutions”) alleging infringement of its patent for a “high-efficiency energy storage system.” The patent claimed a novel combination of components and features aimed at enhancing energy storage performance. Performance Solutions contested the patent’s validity on the grounds of obviousness.

Issue:The central issue was whether the patent held by PowX was obvious under 35 U.S.C. § 103. Specifically, Performance Solutions contended that the prior art described every element of the claimed invention, either expressly or inherently, making the patent obvious.

Analysis:To determine patent obviousness, the court applied the framework established in KSR Int’l Co. v. Teleflex Inc., which requires a comprehensive evaluation of whether the invention would have been obvious to a person having ordinary skill in the art (PHOSITA) at the time the invention was made.

1. Prior Art Review: The court examined the prior art references presented by Performance Solutions. The references included earlier patents and technical literature related to energy storage systems. The key question was whether these references, alone or in combination, disclosed every element of the PowX patent.

2. Comprehensive Disclosure: Performance Solutions argued that the prior art collectively described all elements of PowX’s patent, either explicitly or inherently. The court scrutinized whether the prior art references covered the claimed invention’s individual components and their specific combinations.

   • Explicit Disclosure: The court found that while some elements of PowX’s patent were explicitly disclosed in the prior art, there was a significant difference in how these elements were combined and applied in PowX’s invention.

   • Inherent Disclosure: For elements that were not explicitly mentioned in the prior art, Performance Solutions argued that they were inherently present. The court evaluated whether a PHOSITA could have reasonably inferred the presence of these elements from the prior art or whether they were new and non-obvious combinations.

3. Elements of the Claimed Invention: The court emphasized that to invalidate a patent on obviousness grounds, the prior art must describe every element of the claimed invention, either explicitly or inherently. It found that Performance Solutions did not sufficiently prove that the prior art described all elements of the PowX patent in the required detail.

4. PHOSITA Perspective: The court considered whether a PHOSITA would have had a motivation to combine the prior art references to arrive at the claimed invention. PowX’s argument was that the combination of elements in its patent was not an obvious next step for someone skilled in the art.

Decision:The court ruled in favor of PowX, determining that the patent was not obvious. It held that while some elements were disclosed in prior art, Performance Solutions failed to demonstrate that all elements of the claimed invention were described with the necessary specificity. The court found that the combination and specific application of elements in PowX’s patent involved an inventive step that would not have been obvious to a PHOSITA.

Conclusion:This case underscores the requirement that for a patent to be invalidated on grounds of obviousness, the prior art must describe every element of the claimed invention, either explicitly or inherently. It highlights the importance of a detailed analysis of prior art to establish that the invention in question was an obvious development to someone skilled in the relevant field.

 

Case Summary: Hayden AI Technologies, Inc. v. Safe Fleet Holdings LLC

Court: United States District Court for the Eastern District of New York
Date: March 9, 2024
Citation: 2024 WL 1018589 (Slip Copy)

Background:Hayden AI Technologies, Inc. (“Hayden AI”) sued Safe Fleet Holdings LLC (“Safe Fleet”) for infringing its patent related to an “advanced vehicle safety and monitoring system.” The patent covered a system designed to enhance vehicle safety through integrated sensors and data processing technology. Safe Fleet contested the validity of the patent, arguing that it was obvious.

Issue:The primary issue was whether the patent held by Hayden AI was obvious under 35 U.S.C. § 103. Safe Fleet claimed that the patent’s features were obvious in light of prior art, which included earlier patents and publications related to vehicle safety systems.

Analysis:The court examined whether the patent was obvious to a person having ordinary skill in the art (PHOSITA) at the time the invention was made. Key considerations included:

1. Prior Art References: Safe Fleet presented several prior art references, including existing patents and academic articles related to vehicle safety and monitoring systems. These references described various components and techniques used in similar systems.

2. Combination of Prior Art: Safe Fleet argued that the patented system was merely an obvious combination of known elements from the prior art. The court analyzed whether the individual elements of the patent were disclosed in the prior art and if the combination of these elements was an obvious next step for someone skilled in the field.

3. Specificity of Prior Art:

   • Explicit Disclosure: The court reviewed whether the prior art explicitly described each element of Hayden AI’s patent. It found that while individual components were known, the specific arrangement and integration of these components in Hayden AI’s system were not fully disclosed in any single prior reference.
   • Inherent Disclosure: Safe Fleet also contended that the elements of the patent were inherently present in the prior art. The court evaluated whether a PHOSITA could have reasonably inferred the presence of these elements based on the prior art references.

4. Motivation to Combine: The court assessed whether a PHOSITA would have had a reason to combine the prior art references to achieve the patented system. The court found that Safe Fleet failed to demonstrate that there was a clear motivation to combine the prior art in the way described by Hayden AI’s patent.

5. Inventive Step: The court considered whether the patented system represented a non-obvious improvement over the prior art. It concluded that the integration and functionality of the components in Hayden AI’s system provided a novel approach that was not obvious from the prior art references.

Decision:The court ruled in favor of Hayden AI, holding that the patent was not obvious. It determined that Safe Fleet did not meet its burden of proving that the prior art described every element of the claimed invention, either explicitly or inherently. The court also found that the combination of elements in Hayden AI’s patent involved an inventive step that was not apparent to a PHOSITA.

Conclusion:This case highlights the requirement that to invalidate a patent on obviousness grounds, the prior art must describe each element of the claimed invention, either explicitly or inherently. It also underscores the importance of demonstrating that the combination of prior art references would have been obvious to someone skilled in the art and that the patent in question represents a genuine advance over existing technology.

 

Case Summary: Deckers Outdoor Corporation v. Next Step Group, Inc.

Court: United States District Court for the Southern District of New York
Date: February 29, 2024
Citation: 2024 WL 1077875 (Slip Copy)

Background:Deckers Outdoor Corporation (“Deckers”) filed a lawsuit against Next Step Group, Inc. (“Next Step”) for allegedly infringing its patent related to an “innovative footwear sole design.” The patent claimed a unique sole construction aimed at enhancing comfort and durability. Next Step challenged the patent’s validity, asserting that it was obvious.

Issue:The key issue was whether the patent held by Deckers was obvious under 35 U.S.C. § 103. Next Step contended that the patent’s sole design was an obvious modification of prior art, which included earlier patents and design publications related to footwear.

Analysis:To determine patent obviousness, the court used the criteria established in KSR Int’l Co. v. Teleflex Inc., focusing on whether the invention would have been obvious to a person having ordinary skill in the art (PHOSITA) at the time of invention.

1. Review of Prior Art: Next Step presented various prior art references, including previous patents and design patents for footwear soles. These references described different aspects of sole designs and materials.

2. Disclosure of Elements:

   • Explicit Disclosure: The court examined whether the prior art explicitly described the elements of Deckers’ patented sole design. It found that while some elements were present in earlier references, the specific combination and configuration of these elements in Deckers’ patent were not fully disclosed in any single prior art reference.
   • Inherent Disclosure: Next Step argued that the prior art inherently disclosed the elements of Deckers’ patent. The court assessed whether a PHOSITA could have deduced the patented design from the prior art or if it required an inventive leap.

3. Motivation to Combine: The court analyzed whether there was a motivation for a PHOSITA to combine the prior art references to arrive at Deckers’ patented design. It found that Next Step did not sufficiently demonstrate that such a motivation existed. The court considered whether the combination of known features would have been an obvious improvement or merely a predictable variation.

4. Inventive Step: The court evaluated whether Deckers’ patent involved an inventive step beyond what was known in the prior art. It concluded that the specific arrangement and features of the sole design provided a novel solution that was not an obvious extension of existing technology.

Decision:The court ruled in favor of Deckers, determining that the patent was not obvious. It held that Next Step failed to prove that the prior art described every element of the claimed invention, either explicitly or inherently. The court also found that the combination of elements in Deckers’ patent demonstrated an inventive step that would not have been apparent to a PHOSITA.

Conclusion:This case illustrates the importance of a thorough analysis of prior art to determine patent obviousness. It emphasizes that to invalidate a patent on obviousness grounds, the prior art must describe every element of the claimed invention with sufficient detail, either explicitly or inherently. The decision also underscores the need for a clear motivation to combine prior art references and the significance of the inventive step in the patent’s design.

 

The Obviousness Inquiry Process

The process for assessing obviousness involves several steps:

1. Identifying the Relevant Prior Art: The patent examiner reviews prior art references that are relevant to the claimed invention. These references include patents, publications, and other public disclosures.

2. Comparing the Prior Art to the Claimed Invention: The examiner compares the prior art references to the features of the claimed invention. This comparison helps determine whether the claimed invention is obvious in light of what was known at the time.

3. Evaluating the Level of Ordinary Skill: The examiner assesses the level of ordinary skill in the relevant field to determine whether the claimed invention would have been obvious to someone with that skill.

4. Considering Secondary Factors: Secondary factors, such as commercial success and unexpected results, are evaluated to determine whether they provide evidence against the obviousness of the claimed invention.

To determine whether a patent has non-obvious difference when compared to preexisting technology (i.e., “prior art”), courts must consider four factors: “1) the scope and content of the prior art; 2) the level of ordinary skill in the art; 3) the differences between the claimed invention and the prior art; and 4) secondary considerations of nonobviousness,” including “commercial success, long-felt but unresolved need, failure of others, copying, and unexpected results.” Ruiz, 234 F.3d at 662–63.

 

Obviousness can be reviewed during the examination process or in any legal proceedings such as a patent infringement lawsuit in district court or in an invalidation hearing in the Paten Trial and Appeal Board (PTAB). Obviously, a patent owner must be the plaintiff in legal proceedings.

 

Examination Process in the US Patent and Trademark Office

• Office Action: During patent prosecution, a patent examiner at the U.S. Patent and Trademark Office (USPTO) reviews the patent application and issues an Office Action. If the examiner finds that the claimed invention is obvious in view of the prior art, they will reject the claims based on obviousness.
• Rejection: The examiner will cite prior art references and explain why they believe the claimed invention would have been obvious to a person having ordinary skill in the art (PHOSITA). The rejection will detail how each element of the claim is either disclosed or suggested by the prior art. Obviousness is one of the most common rejections of patent applications.

Arguments and Amendments:

• Response: The applicant can respond to the Office Action by arguing against the obviousness rejection. This may involve showing that the prior art does not fully disclose the claimed invention, or arguing that the claimed invention provides unexpected results or advantages.
• Amendments: Applicants may amend the claims to narrow their scope or to clarify features that distinguish the invention from the prior art. Amendments can help address concerns about obviousness by emphasizing novel aspects of the invention.

Obviousness Analysis:

• Combination of Prior Art: The examiner may argue that the invention is obvious because it combines known elements in an obvious way. Applicants need to demonstrate that such a combination would not have been obvious to a PHOSITA or that the combination provides a surprising or unexpected result.
• Secondary Considerations: Factors such as commercial success, long-felt but unsolved needs, and the failure of others to solve the problem can be used to argue against an obviousness rejection. These are known as secondary considerations or objective indicia of non-obviousness.

Appeal:

• If the applicant cannot overcome the obviousness rejection through amendments or arguments, they may appeal the decision to the Patent Trial and Appeal Board (PTAB). The PTAB will review the examiner’s decision and the applicant’s arguments to determine if the patent application should be allowed.

Impact of Obviousness:

• Patent Scope: Claims found to be obvious are not patentable. Applicants must ensure that their claims are sufficiently distinct from prior art and represent a genuine advancement in the field.
• Strategic Considerations: Understanding the nuances of obviousness can guide applicants in drafting their claims and preparing their responses to office actions. This includes careful analysis of prior art and strategic arguments to highlight the inventive aspects of the application.

 

Practical Implications for Patent Applicants

For patent applicants, understanding Section 103 and its implications is crucial for preparing a strong patent application. Here are some practical tips:

1. Provide Detailed Descriptions: Ensure that your patent application includes a detailed description of the claimed invention, including how it differs from prior art references.

2. Highlight Secondary Considerations: If applicable, emphasize secondary considerations such as commercial success and unexpected results to strengthen your case against an obviousness rejection.

3. Work with a Patent Attorney: Collaborate with a patent attorney who can help navigate the complexities of Section 103 and address any obviousness rejections effectively.

4. Understand the Prior Art: Conduct thorough prior art searches to identify relevant references and address any potential obviousness issues proactively.

 

Section 103 and International Patent Systems

International Applications: Section 103 is specific to U.S. patent law, but similar principles apply in other jurisdictions. For example, the European Patent Convention (EPC) has a comparable provision for non-obviousness, and international applications must meet similar criteria for patentability.

Comparative Analysis: Understanding how different patent systems approach the obviousness inquiry can provide valuable insights for applicants seeking protection in multiple jurisdictions. For instance, the UK’s approach to obviousness involves a similar but distinct analysis compared to U.S. law.

Conclusion

Section 103 of the Patent Act is a critical component of patent law that ensures patents are granted only for truly inventive and non-obvious inventions. By understanding the key elements of Section 103, relevant case law, and practical implications, patent applicants can better navigate the patent application process and address potential obviousness issues effectively. Whether you are a patent applicant, patent attorney, or someone interested in patent law, a thorough understanding of Section 103 is essential for success in the patent system.

Also see: Section 102 of the Patent Act

Verna Law, P.C. focuses on patent and intellectual property law.  If you have any questions, please send us e-mail at anthony@vernalaw.com or call us at 914-908-6757.