CHAPTER 9 Outline

• Jurisdiction: United States

CHAPTER 9

The Nonobviousness Requirement

§9.01 Statutory Basis: 35 U.S.C. §103

§9.02 Historical Background

[A] Hotchkiss v. Greenwood and the Elusive Requirement for "Invention"

[B] The Hotchkiss "Ordinary Mechanic"

[C] Replacing "Invention" with Nonobviousness

[1] Patent Act of 1952

[a] Enactment of §103

[b] "Shall Not Be Negated"

[c] The "Person Having Ordinary Skill in the Art"

[d] "Would Have Been" Obvious

[2] Graham v. John Deere Co. (U.S. 1966)

[a] Constitutionality of §103

[b] Analytical Framework for Nonobviousness Determinations: Overview

§9.03 Graham Factor (1): Scope and Content of the Prior Art

[A] Terminology

[B] What Is Prior Art for §103 Purposes

[C] Section 102/Section 103 Overlap

[1] In re Bass (CCPA 1973)

[2] Section 103(c) Exclusion of Commonly Owned Subject Matter [Pre-America Invents Act of 2011]

[3] Section 103(c) (2006) Exclusion of Joint Research Work [Pre-America Invents Act of 2011]

[4] Use of Temporarily Secret Prior Art to Establish Obviousness [Pre-America Invents Act of 2011]

[D] Analogous Art

[1] Required for Obviousness Under §103

[2] Test of In re Wood

[3] Same Field of Endeavor

[4] Same Problem Addressed

[5] Not Required for Anticipation Under §102

[E] Enablement Requirement for Prior Art

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

§9.05 Graham Factor (3): Level of Ordinary Skill in the Art

§9.06 Graham Factor (4): Secondary Considerations

[A] Evidentiary Weight

[1] Diverging Views

[2] Versus Strength of Prima Facie Case

[3] Need for Explicit Analysis

[B] Nexus Requirement

[1] Generally

[2] Rebuttable Presumption of Nexus

[3] Nexus with Entire Claimed Invention Versus Novel Features

[C] Evidence of Commercial Success

[1] Generally

[2] Nexus Requirement for Commercial Success

[D] Evidence of Long-Felt but Unsolved Need

[E] Evidence of Failure of Others

[F] "Etc."

[1] Evidence of Copying

[2] Evidence of Licensing

[3] Evidence of Industry Praise

[4] Evidence of Skepticism

[G] Potential Impact of Blocking Patents on Secondary Considerations Evidence

§9.07 Combining Prior Art Disclosures

[A] Teaching, Suggestion, or Motivation to Combine

[B] Reasonable Expectation of Success

[1] Degree of "Reasonableness"

[2] Timing of Expectation

[3] Relation to KSR (U.S. 2007)

[C] "Obvious to Try" (Pre- KSR Meaning)

[D] Unexpected Results

[1] Generally

[2]

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