Section 103 – Obviousness
Section 103 rejections are often a real pain to get around. Section 103 will deny patent protection where the subject matter of the patent would have been obvious before the filing date of the patent claims at issue. In making a 103 rejection the examiner combines references, taking elements from one reference and adding elements from other references to arrive at the claimed invention at issue.
Due to the fact that the examiner combines references, overcoming a 103 rejection can be difficult simply for the fact that not every element must be present in a single reference (unlike § 102 rejections). This makes the pool of potential invalidating prior art much broader, and therefore more difficult to bypass.
Here is the text of the statute:
“A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.” 35 U.S.C. § 103 (emphasis added).
The factors used in determining whether an invention is obvious come from Graham v. John Deere Co., a case involving a shock absorber for a plow. The case provided the following steps when determining obviousness:
1. Determine the scope and contents of the prior art;
2. Ascertain the differences between the prior art and the claims at issue;
3. Resolve the level of ordinary skill in the pertinent art; and
4. Evaluate the evidence of secondary considerations.
Key in the evaluation process is that the examiner is not permitted the benefit of hindsight; the examiner must consider the state of the art at as of the filing date of the claims at issue. The examiner is looking for a reasonable expectation of success in order to find obviousness.
The Supreme Court in KSR elaborated on the obviousness inquiry, providing seven key rationales when looking for obviousness. I will not list each and every one here, but essentially the Court’s rationales boil down to whether the claims were predictable given the prior art.
Secondary considerations "may include evidence of commercial success, long-felt but unsolved needs, failure of others, and unexpected results." MPEP § 2141.
103 rejections are often difficult to overcome, given that the examiner can combine multiple references. To get around a 103 rejection, the applicant typically must show that the results obtained through the combination of elements were unpredictable, not taught in the prior art, or that the art used is non-analogous.
Traversing a 103 rejection is best left to a patent practitioner well-versed in the law and prior art. If you have any questions about getting a patent, you can contact me here.