Chapter §9.01 Statutory Basis: 35 U.S.C. §103

• Jurisdiction: United States

§9.01 Statutory Basis: 35 U.S.C. §103

This chapter considers the ultimate, most difficult condition of patentability: the requirement that the invention be nonobvious.¹ An applicant for patent must take a "large step" forward,² establishing that its advance would not have been obvious to a hypothetical person having ordinary skill in the pertinent technology before the effective filing date of the claimed invention representing the advance.³ The current, America Invents Act of 2011-implemented version of the Patent Act provides:

§103. Conditions for patentability; non-obvious subject matter

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. ⁴

which the AIA repealed⁵ and the other which the AIA shifted elsewhere in the statute.⁶ Pre-AIA subsections 103(b)⁷ and 103(c)⁸ were more recent and specialized provisions.⁹

First codified in 1952 at Section 103 of Title 35, United States Code,¹⁰ the nonobviousness requirement was implemented in response to dissatisfaction with nineteenth-century efforts to gauge patent-worthiness via a nebulous test of "invention."¹¹ The historical development of the invention test and its subsequent rejection in favor of the current statutory requirement of nonobviousness are traced below.¹²

Today's statutory standard of nonobviousness reflects longstanding judicial recognition that a patentable device, substance, or process must involve something more than novelty.¹³ An invention may be novel in the patent law sense, meaning that none

This chapter focuses on the current, AIA-implemented version of 35 U.S.C. §103. Before the 2011 enactment of the AIA, the text of 35 U.S.C. §103 was considerably longer because it included three subsections,¹⁴ one of which the AIA repealed¹⁵ and the other which the AIA shifted elsewhere in the statute.¹⁶ Pre-AIA subsections 103(b)¹⁷ and 103(c)¹⁸ were more recent and specialized provisions.¹⁹

First codified in 1952 at Section 103 of Title 35, United States Code,²⁰ the nonobviousness requirement was implemented in response to dissatisfaction with nineteenth-century efforts to gauge patent-worthiness via a nebulous test of "invention."²¹ The historical development of the invention test and its subsequent rejection in favor of the current statutory requirement of nonobviousness are traced below.²²

Today's statutory standard of nonobviousness reflects longstanding judicial recognition that a patentable device, substance, or process must involve something more than novelty.²³ An invention may be novel in the patent law sense, meaning that none of the novelty-destroying or loss of right provisions of 35 U.S.C. §102 have been triggered.²⁴ But to be patentable, the invention also must represent enough of a qualitative advance over earlier technology to justify what Thomas Jefferson termed "the embarrassment of an exclusive patent."²⁵ This determination has been deemed a question of law,²⁶ but it is ultimately a question of public policy, based on underlying factual inquiries²⁷—namely, which inventions merit a patent and which do not.²⁸

The introductory clause of 35 U.S.C. §103 states that "[a] patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if. . . ."²⁹ This qualifying language indicates that nonobviousness is an additional condition that must be satisfied for patentability, even if the invention is not anticipated under one or more subsections of §102.³⁰ The "identically disclosed" phrase also reinforces that the test for anticipation under §102 is one of "strict identity"; that is, each and every limitation of the claimed invention must be disclosed in a single prior art reference for it to be considered anticipated under §102.³¹

Analyzing nonobviousness is a challenging exercise, but one frequently encountered in U.S. patent law. The decision maker must step back in time to the effective filing date of the claimed invention (for pre-AIA patents, to the date the claimed invention was made³²), while adopting the mindset and knowledge base of a hypothetical person having ordinary skill in the technology of the invention. Through that lens, the decision maker must evaluate the state of the prior art, the difference(s) between that prior art and the claimed invention, and other factors in order to reach a conclusion whether the claimed invention would have been obvious. Each of these steps is further examined below. The mental gymnastics required to analyze nonobviousness are better understood if the decision maker first appreciates the historical background of the nonobviousness requirement.

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Notes:

^[1] See generally Nonobviousness: The Ultimate Condition of Patentability (John F. Witherspoon ed., 1980).

^[2] Alan Latman, Protection for Designs 15 (Feb. 1959) (pamphlet prepared for the National...