Intellectual Property Law for Engineers, Scientists, and Entrepreneurs. Howard B. Rockman
some new structure or function evolves from the change of size.
Conversely, a combination of elements in your invention that produces an improved and unexpected result will lead to patentability, since the invention would be non‐obvious. Also, if your invention omits one or more of the elements that are shown in the prior art devices, but still retains the function of those missing elements in the resulting combination, you may have a patentable invention.
6.5 THE 2007 U.S. SUPREME COURT CASE OF KSR V. TELEFLEX
In 2007, the U.S. Supreme Court had before it a patent case decided previously by the Court of Appeals of the Federal Circuit (CAFC), involving criteria for determining whether a claimed invention was non‐obvious in view of the prior art. The CAFC had applied the single test it had been using in previous non‐obviousness cases:
“Is there some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference, or to combine a plurality of prior art reference teachings, to arrive at the claimed invention?”
The Supreme Court held that, while this “teaching, suggestion, or motivation” test could be used to determine the obviousness or non‐obviousness of an invention in view of the prior art, this was not the only test to be applied. The Supreme Court then set out six additional rationales that an inventor, a Patent Examiner, or a court or jury, could apply to support a conclusion that a claimed invention is “obvious,” or “lacks an inventive step.” These six additional rationales are listed below, and any one or more could be applied in an obviousness analysis:
1 Combining prior art elements according to known methods to yield predictable results.
2 Simple substitution of one known element for another to obtain predictable results.
3 Use of known techniques to improve similar devices, methods, or products in the same way.
4 Applying a known technique to a known device, method, or product ready for improvement to yield predictable results.
5 “Obvious to try”—Selecting from a finite number of previously identified, predictable solutions, with a reasonable expectation of success.
6 Known work in one field of endeavors may prompt variations of the known work for use in either the same field or a different field, based on design incentives or other market forces, if the variations would have been predictable to one of ordinary skill in the art.
6.6 ILLUSTRATIVE NON‐OBVIOUSNESS ANALYSIS
It is apparent from the preceding comments that a determination of whether your novel and useful invention would ultimately be declared as non‐obvious over the prior art, and therefore worthy of a patent, is one that is not easily arrived at. Therefore, one of the services that you should solicit when engaging a patent attorney is that the patent attorney carefully look at all of the related prior art and provide you with an opinion about whether your invention is both novel and unobvious. You should ensure that any report on patentability that your attorney submits to you includes an analysis of the question of non‐obviousness as well as novelty. It would not be wise to spend the time and money to prepare a patent application where there is a high risk that the USPTO will reject the application on grounds of obviousness. Do not try this at home—leave it to the professionals!
Having said all of this regarding the fitful test of non‐obviousness, I feel it prudent to provide you at this point with a hypothetical example illustrating how a determination of non‐obviousness works through one’s thought processes. Assume that someone invents a general‐purpose, programmable, digital computer, and that this computer is colored green. The inventor files a patent application claiming a green digital computer. Assume also that the physical structure of the computer is old in the art, but never had a computer been colored green before, and that there is not a single prior art reference or patent showing a green computer. Consider also that dozens of other colors and shades in the visible spectrum were used as colors for the same kind of computer.
The first question is whether the claimed green computer is novel over the prior art. This determination must be made first, because the question of unobviousness becomes moot if there is no novelty. In this particular situation, the green computer is novel, since it is not identically described in any single item of prior art. For purposes of our analysis, a green computer must be considered structurally different from a computer of any other color. Therefore, it is now appropriate to examine the “green” technology embodied in this computer to determine whether it is an unobvious advance over the prior art.
At first glance, you may determine that using the color green surely would be obvious as compared to computers using all the other colors of the visible spectrum. However, further analysis in my hypothetical may show that this answer is not correct. For example, given the same set of facts assume that, when the computer is green, the frequency band of the green color serves to absorb and concentrate ambient cosmic and ultraviolet rays that, in combination, change the static electrical charge in all of the components of the computer, including the conductive and semi‐conductive elements in the computer. As a consequence, all the electrical and electronic operations are speeded up by a factor of 1.2, wherein the computer literally operates 1.2 times as fast, and also is possibly 1.2 times more valuable than a computer that is not colored green. Given all of these new and unexpected results of using a green computer, the subject invention also passes the test of non‐obviousness, since no one else has ever used the color green to obtain these results in a computer.
The preceding example points out the fact that no structural or functional difference between your invention and the prior art may be ignored in determining questions of novelty and unobviousness. The differences may be slim; however, the subject matter as a whole may still be unobvious over the prior art to a person of ordinary skill in the relevant technology.
INVENTORS AND INVENTIONS
Louis Pasteur
PASTEURIZATION PROCESS
Throughout human history, physicians have struggled with the problem of determining what cause diseases. In the mid‐19th century, many people believed in Miasma, the concept that disease was caused by polluted air. However, the milestone work leading to understanding the causes of diseases was not made by a doctor, but by a chemist, Louis Pasteur. Pasteur destroyed the widely held myth of spontaneous generation as the cause of diseases, thus setting the direction for modern biochemistry and biology.
Louis Pasteur was born on December 27, 1822, in Dole, Jura, France, and grew up in the nearby town of Arbois. As a child, Pasteur showed an interest in chemistry, and the headmaster of the local college convinced Louis and his father that Louis should try to enter the École Normale Suprieure in Paris, a highly regarded French university specifically created to train students for university careers in science and the arts. Pasteur began his successful journey as a scientist in the École Normale.
When Pasteur was 26 years old, crystallography was a new branch of chemistry. One of his first projects while working at the École Normale was attempting the crystallization of tartaric acid, an organic acid that exists in the sediments of fermenting wine. A second acid, paratartaric acid or racemic acid, was also found in the sediment in wine barrels. At the time of the beginning of his studies, science had already determined that tartaric and paratartaric acids had identical chemical compositions; however, tartaric acid rotated a beam of polarized light passing through it to the right, and paratartaric acid did not rotate the light at all. Pasteur was determined to find out what caused this difference. Upon microscopic examination, Pasteur discovered that the paratartrate crystals comprised two types of optically asymmetric crystals, one being the mirror image of the other.
Pasteur