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The Inventor's Mentor

January 2010

Is Your Invention Too Obvious to Get a Patent?

Patent Law enacted by Congress in 1790 was one of the most significant factors in stimulating technology in the past two centuries. This law rewards inventors for their creation by giving them the right to exclude anyone from making, using, selling, offering to sell or importing their invention - unless licensed by the inventor. The downside of having such a law is that patents sometimes stifle progress when royalties demanded by inventors are too high. Thus, there is a fine line between awarding too many inventions and not enough. How is this difference between the public good and the interest of the inventor resolved?  One solution is to deny awarding patents to concepts that are “obvious.” 

Therefore, the question is“What is obviousness?”Courts have grappled with this issue over the years going back and forth in their rulings, sometimes being lenient in awarding patents and sometimes being strict. Recently a landmark case in front of the US Supreme court, KSR vs Teleflex, addressed the question. The court ruled that the factors determining obviousness and non-obviousness were outlined by the Supreme Court in Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966) and are commonly referred to as the "Graham factors". 

To understand these factors it is helpful to make the analogy of attempting to drive in an ordinary car from a given location to a destination. In this analogy the starting location is the state of the art at the time the invention is conceived; the destination is the invention itself; and the ordinary car is a person having ordinary skill in the art of the invention.

To determine if the invention is “obvious” the US Supreme court held that the following factors should be considered:

Scope and content of the prior art (Where the starting location is situated)

        The state of the prior art is determined in part by researching publications and patents which were filed before the invention was conceived by the inventor. Any publication anywhere in the world since the invention of the alphabet qualifies as prior art.

Level of ordinary skill in the art (Range of “ordinary” car)      

        This factor refers to the capability of an ordinary person versed in the technology of the invention.         

Differences between invention and prior art (Distance between the starting location and the destination)      

        This factor refers to the size of the creative leap performed by the inventor.


According to the analogy, the invention is “obvious” if the destination is reachable by ordinary car: if the invention can be conceived by a person of ordinary skills. It is not “obvious” if the creative leap made by the inventor is so large that a person of ordinary skills cannot bridge it at the time the invention is made.

The KSR court ruling depends on three premises, two of which are solid because they are clearly described in writing: the state of the prior art and the invention as described in its application. The third premise, the person having ordinary skills in the art, is shaky: who is this mythical creature and how is it defined? The inherent ambiguity in this ruling has led to countless arguments and lawsuits.

In attempt to resolve this issue, courts have accepted additional objective evidence of “non-obviousness” such as:

Commercial success

        An enthusiastic acceptance by the market of the invention, demonstrated for example, by skyrocketing sales, can provide its inventor with a resounding proof that the invention is not obvious. 

Long-felt but unsolved needs

        A long standing history of the problem solved by the invention can be proof that the invention is not evident.

Failure of others

        Records showing unsuccessful attempts by other people at solving the problem addressed by the invention demonstrates that the invention is not obvious.

Often, given the current state of the art, an invention may not be “obvious” in a single creative leap. Patent examiners, however, string together prior art documents, in a multi-step technique, each step within the creative capability of an ordinary person. For example, an examiner may declare that an invention is not patentable because of a first prior art X, in view of a second prior art Y and in view of a third prior art Z. Bringing together X, Y and Z makes the invention “obvious.” In so doing, the examiners needs to show that a person of ordinary skill would have some reason for combining this prior art. This is called the Teaching-Suggestion-Motivation (TSM) test. To rebut such an examiner’s rejection, one must show that there is no teaching, suggestion or motivation for bringing the prior art together.


Happy New Year!


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        This newsletter should not be construed as legal advice.                                    ©2010 by George Levy