In the world of patents, the law of obviousness plays a substantial role in determining whether an invention is eligible for patent protection. The idea behind obviousness seems simple enough: an invention cannot be patented if it would have been obvious to a person skilled in the relevant field at the time of invention. However, as with many legal concepts, the devil is in the details. Applying the law of obviousness in practice, especially during patent prosecution at the United States Patent and Trademark Office (USPTO), can be a complex and challenging endeavor. In this post, we explore one of the intricacies of the law of obviousness as it relates to the motivation to combine, and how examiners sometimes take a shortcut that can provide a winning position on appeal before the PTAB.
The law of obviousness has some commonalities to the law of negligence. Both legal principles share a common foundation - they consider what a hypothetical person would do. In negligence cases, a person's actions are considered negligent if a hypothetically reasonably prudent person would not have acted in the same way under similar circumstances. Similarly, in patent law, an invention is deemed obvious if a hypothetical person skilled in the relevant field would have arrived at the same invention, considering the existing prior art at the time.
However, while the core idea is similar, the complexity in applying these laws arises due to the unique set of facts in each case. In negligence cases, seemingly minor details can significantly influence the outcome. Likewise, when it comes to patent prosecution, even small differences in the facts of an application can lead to different results in the assessment of obviousness.
One significant aspect of the law of obviousness is that the examiner must provide a reason to combine the prior art references in order to reject a patent application on obviousness grounds. This requirement stems from the Supreme Court's decision in Graham v. John Deere Co., which established a framework for determining obviousness. According to the Graham factors, an examiner must consider the scope and content of the prior art, the differences between the prior art and the claimed invention, the level of ordinary skill in the relevant field, and any relevant secondary considerations (e.g., commercial success, long-felt but unresolved need, failure of others) before reaching an obviousness determination. As part of this inquiry, the courts have observed that obviousness concerns whether a skilled artisan not only could have made the combination, but also whether the skilled artisan would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.
In practice, examiners often face the challenge of finding a solid reason to combine prior art references. As a shortcut, some may rely on simply providing a beneficial result that the combination of prior art elements would achieve. While this may seem like a reasonable approach, it falls short of meeting the burden of establishing obviousness. A recent PTAB case illustrates this point.
Appeal 2023-000259 (Application 15/255,198) concerns device that retains medication in a secure, convenient, and protected manner, and fits within a wallet credit card slot. Claim 6 on appeal is below:
A medication information and storage device comprising:
a first card having a front surface, a rear surface opposite said front surface, and edges disposed along said perimeter of said first card;
a second card having a front surface, a rear surface opposite said front surface, and edges disposed along said perimeter of said second card; said first card and said second card being connected together in a hinging manner so that said front surface of said second card can fold into contact with a portion of said front surface of said first card, and wherein said first card and said second card may pivot with respect to one another between an open and closed position;
at least one sealed cavity, for housing medication, disposed on a top third of said first card and protruding outwardly from at least one of said surfaces of said first card creating a raised protrusion away from said first card wherein said front surface and said rear surface of said second card are flat and said second card includes a cut-out portion that corresponds to a position of said cavity so that when said first card and said second card are folded together, said cavity protrudes through said cut-out portion of said second card and said first and second cards lie flat against one another, and wherein said rear surface and bottom two thirds of said front surface of said first card are flat so that said medication information and storage device may slide into a pocket of a wallet so that said cavity protrudes outwardly above said pocket; and
information regarding said medication printed on at least one of said front surfaces of said cards.
This was the second trip to the PTAB for this application (the first resulting in a reversal). Again, the PTAB found the rejection lacking.
The examiner maintained that a first reference, Alonso, substantially taught the subject matter of independent claim 6, but was missing a second card having a cutout portion, among other things. The Examiner relied on a secondary reference (Brandow) to help remedy the deficiency of Alonso’s disclosure. According to the examiner:
The inventions of Alonso and Brandow are both drawn to the field of containers that are capable of holding items such as medication. Each container includes a first card with a cavity and a second card that folds together. Therefore, it would have been obvious to one having ordinary skill in the art . . . to have modified the second card in Alonso by providing a cut-out as taught by Brandow for the purposes of allowing the cavity to extend through the second card when it is folded.
The Appellant argued that the Examiner’s rejection of claim 6 fails to articulate any reason to modify Alonso’s second card to include the cutout of Brandow. The PTAB agreed:
We determine that the Examiner’s determination that one of ordinary skill in the art would have modified the second card in Alonso in view of the teachings of Brandow “for the purposes of allowing the cavity to extend through the second card when it is folded” only describes a result of the
combination and not a reason one of ordinary skill in the art would have sought to modify Alonso’s second card in view of Brandow’s teaching. Merely because one of ordinary skill in the art may have been able to modify Alonso’s second card in view of Brandow’s teaching is inadequate to support the conclusion of obviousness.
The critical distinction that practitioners should recognize is that merely stating the result of a combination is not the same as providing a valid reason to combine. A beneficial result, normally does not, by itself, sufficiently support a motivation for the combination.
The law of obviousness is a fundamental aspect of patent law that aims to strike a balance between incentivizing innovation and preventing the grant of patents for obvious inventions. However, its application in practice is far from simple. Patent practitioners should look out for examiners taking short cuts on motivation to combine. Recognizing the distinction between a beneficial result and a valid reason to combine prior art is vital, as it can significantly impact the outcome of a patent application. Always scrutinize an examiner's rationale and ensure that it meets the required legal standard of obviousness.