Since this week's
assignment was to talk about obviousness, I wanted to go over some of USPTO's
guidelines for determining obviousness.
As Professor Lavian mentioned in class, some law schools, such as
Stanford, have an entire course on obviousness! In 2010, USPTO released a set
of updated guidelines on determining obviousness. In link [1] below, you can
find a table from the Federal Register that talks about "Combining Prior
Art Elements", "Substituting One Known Element for Another",
"The Obvious to Try Rationale",
and "Consideration of Evidence".
Here, I will briefly
summarize some of the facts that I learned:
-- Even when there
exists a general method to make the claimed product and this method can be used
by an ordinary artisan, the claim is still nonobvious if the suggested use of
the method had not been known before.
-- The claimed
invention is likely to be obvious if the inventor combines elements from prior
art that would reasonably have been expected to maintain their respective
properties or functions after they have been combined. While this may seem
self-evident, I think it is good to state explicitly. Here, the question that arises is how one
would define reasonable.
-- "When
determining whether a reference to a different field of endeavor may be used to
support a case of obviousness (i.e. is analogous), it is necessary to consider
the problem to be solved." The professor talked about this in class as
well: For example, a processor can refer to a processor in a laptop or
electronic device or it could refer to a food processor. (this was the example
given in class). So when is it appropriate to link these two completely
separate fields and when is it not appropriate to do so? Here, USPTO is saying
that we need to consider the problem being solved when making the connection.
Another related guideline is: "Analogous art is not limited to references
in the field of endeavor of the invention, but also includes references that
would have been recognized by those of ordinary skill in the art as useful for
applicant's purpose".
When it comes to
learning more about obviousness, I think these tables are a good place to
start-- so definitely take a look at them!
I think a certain level of common sense needs to be applied by the USPTO when evaluating these patents. Yes, I understand that the author in the patent application may have simply referred to a "processor" instead of specifying which type of processor it was. However, given the context of the patent, it should be "obvious" (ha ha ha) what kind of processor he or she was referring to. Worst case scenario, they patent examiner can ask the filer to clarify the meaning of processor in the patent before issuing the patent. I think when the word processor refers to two different items in the same field, then that's valid grounds for rejection (assuming the patent examiner doesn't bother to contact the patent filer for a clarification) because allowing the word processor to slip by without specifying which type of processor it is could result in unnecessary lawsuits (aka patent trolling).
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