nun-o | New Useful Non-Obvious

The “non-obvious requirement” for determining if something is patentable is found in 35 USC §103 “Conditions for patentability; non-obvious subject matter”. Specifically, in section (a), “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains” then the subject matter is not patentable. This has been extended through case law to also be interpreted as rendering “non-obvious” the combination of two or more existing subject matter by a known method thus producing known or predictable results. Simply put, 1+1=2 is patently non-obvious.

The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.

Arguably, the most recent path of “innovation” has been to take available technologies, combine them in a novel way, and produce something new and useful. Remember the commercial from the 1970’s? Chocolate? Peanut Butter? Chocolate + Peanut Butter! Many patent applications rely on the combination of two or more different subject matter to create something new as the basis for their claims. Times may be changing, however, with a recent opinion from the Supreme Court. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR v. Teleflex, 127 S. Ct. 1727, 1739 (2007). This narrowing of the definition of obviousness will certainly lead to a lot more PTO rejections and will probably open up a lot of existing patents to challenges on obviousness. In fact, the Court of Appeals for the Federal Circuit (CAFC) has just appled the obviousness definition from KSR to overturn a patent that, upon de novo review, the court found to be an obvious combination of two familiar elements. Agrizap v. Woodstream Corp (Fed. Cir. 2008). Agrizap lost the obviousness claim because it combined one of its own commercial products with a switch commonly found in the cattle prod industry. The CAFC held that this was akin to 1+1=2 and, therefore, obvious.

What, then, is an inventor/company to do? How will the KSR decision affect future patent applications? I think that we’ll have to keep a watchful eye on this one.