Secondary Considerations

(i.e., Objective Evidence of Nonobviousness)

PHOSITA

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 §103: The Nonobviousness Requirement

“[T]he § 103 condition . . . lends itself to several basic factual

inquiries. Under § 103, the scope and content of the prior art are to
be determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness or
nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented. As indicia of obviousness or
nonobviousness, these inquiries may have relevancy.”

Graham v. John Deere Co., 383 U.S. 1, 17 (1966)

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 The Modern §103 Framework

The five-step inquiry:

1. Determine the scope and content of the prior art

2. Ascertain the differences between the claimed invention and the prior art
3. Ascertain the PHOSITA’s level of skill
4. Make the nonobviousness determination
5. Evaluate objective evidence of nonobviousness (rebuttal evidence)
• Unexpected results
• Teaching away
• Skepticism or failure by others
• Praise by others
• Commercial success
• Long-felt but unresolved need
PHOSITA
• Copying

Graham v. John Deere Co., 383 U.S. 1 (1966)

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 IRON GRIP BARBELL V. USA SPORTS
392 F.3d 1317 (Fed. Cir. 2004)
¡ Teaching away
¡ Unexpected results
¡ Commercial success
§ Rationale
§ What’s required?
§ What about licensing/acquiescence?
¡ Long felt but unmet need
§ Rationale?
§ What’s required?
¡ Copying
§ Rationale?
§ What’s required?

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Transocean Offshore v. Maersk
699 F.3d 1340 (Fed. Cir. 2012)

§ The patents-in-suit recite a derrick with both a

main and an auxiliary advancing station, each
of which can separately assemble drill strings
and lower components to the seafloor – dual
activity.

§ This advancement in the art makes the process

of creating a borehole and drilling more
efficient because each component does not
have to be assembled and disassembled each
time a component is lowered.

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 Available Prior Art
and
The Analogous Art Doctrine

PHOSITA

273
 WHAT DOES IT MEAN TO BE
”REASONABLY PERTINENT”?
¡ Clay: Even if art is in a different field, it is REASONABLY PERTIENT “if it is
one which because of the m atter with which it deals, logically would have
com m ended itself to an inventor ’s attention in considering his problem .”

¡ KSR: “[F]am iliar item s m ay have obvious uses beyond their prim ary purposes”

¡ Kahn (Fed. Cir. 2006):

§ “References are selected as being reasonably pertinent to the problem based on
the judgment of a PHOSITA.”
§ “[I]t is necessary to consider ‘the reality of the circumstances,’—in other words,
common sense—in deciding in which fields a [PHOSITA] would reasonably be
expected to look for a solution to the problem facing the inventor.”

PHOSITA
274
 MORE ON THE ANALOGOUS ART
DOCTRINE
¡ How does the “analogous” art lim itation help patent applicants?

¡ W hat is the statutory justification for im posing such a lim itation on the prior
art considered for purposes of obviousness analysis?

¡ The policy justification for the doctrine is to ensure that references aren’t
TOO REM OTE to be prior art.

¡ AVAILABLE ART
§ Recall that SOURCES of PA for § 103 come from §§ 102(a), (b), (e), (g)
§ Thus, § 102 has a DUAL FUNCTION:
§ Anticipation re: novelty and statutory bar
§ Defining the universe of prior art for § 103

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