Chapter §9.04 Graham Factor (2): Differences Between Claimed Invention and Prior Art

• Jurisdiction: United States

§9.04 Graham Factor (2): Differences Between Claimed Invention and Prior Art

This factor is at the heart of a nonobviousness analysis under 35 U.S.C. §103. There must be some identifiable difference(s) between the prior art and the claimed invention; otherwise, the invention has been anticipated under §102. The USPTO should clearly identify these differences in issuing any §103 rejection, as should the courts in evaluating an issued patent for obviousness.

For example, the identifiable differences between the claimed plow shank of the '798 patent at issue in Graham v. John Deere Co.¹⁷⁶ and the prior art plow shank (in that case, disclosed in Graham's own earlier '811 patent¹⁷⁷) included moving the hinge plate from below to above...