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 the shank, to provide the shank with greater flexing ability. This structural rearrangement is depicted in Figure 9-2.

The Graham "differences" factor (2) should not be confused with the overall evaluation of nonobviousness. The ultimate question to be answered under 35 U.S.C. §103 is not whether the differences themselves would have been obvious to the PHOSITA.¹⁷⁸ Rather, §103 asks whether the subject matter as a whole (i.e., the claimed invention as a whole) would have been obvious, at the time the invention was made, in view of the identified differences plus the other factors required by the Graham analysis.

FIGURE 9-2. Differences (Flex Comparison) Between Claimed Invention ('798 Patent) and Prior Art ('811 Patent) in Graham v. John Deere Co., 383 U.S. 1 (1966)

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Notes:

^[176] 383 U.S. 1 (1966).

^[177] Graham's '811 patent issued on January 10, 1950, more than one year before Graham filed the application on August 27, 1951, that led to his '798 patent. Thus, the '811 patent was available as a §102(b) (pre-AIA) reference for use in a §103 challenge by John Deere Co. to the validity of...