35 U.S.C. 103   CONDITIONS FOR PATENTABILITY; NON-OBVIOUS SUBJECT MATTER.

35 U.S.C. 103 CONDITIONS FOR PATENTABILITY; NON-OBVIOUS SUBJECT MATTER.

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.

29 thoughts on “35 U.S.C. 103   CONDITIONS FOR PATENTABILITY; NON-OBVIOUS SUBJECT MATTER.

  1. Does anyone know the reason(s) why there is this long digression about 102 and the “difference” between the claimed invention and the prior art?

    In other words, why don’t we have just this language for 103?

    A patent for a claimed invention may not be obtained if the claimed invention as a whole would have been obvious in view of the analogous prior art before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.

    1. The world of prior art for 102 is NOT the same world of prior art for 103.

      There is a difference because 102 and 103 are meant to be different.

    2. Pika, somebody is thinking here.

      The point of 103 is to determine when the differences are a distinction without any real differences. But there have to be differences.

      As I said, I found reading Rex v. Arkwright (Buller’s jury summary and the final order of Mansfield) is set out in full in the appendix of by Oil States brief. There the court determined that a distinction without a difference in usefulness was no patentable distinction at all.

      I don’t think anything has really changed since this case on the issue of obviousness.

  2. I like the EPO’s “problem-solution” “inventive step” approach better.

    And before he jumps on my stuff, yes, Anon, I recognize our sovereign can and should do things its own way.

    And to be even, MM seems to be a very grumpy person.

    1. I concur with everything said in this post. I really could not have said it better myself.

      1. To be clear, however, I concur with “grumpy” only in its nicest possible sense.

    2. LOL – I have no problem whatsoever with anyone liking a system that another sovereign has.

      It is what is attempted when someone likes such a little TOO much – and engages in obfuscatory and conflating “here, wear my bifocals, they work great for me” – that I find fault with.

      There IS worth in comparative analysis, but all too often the necessary critical thinking and setting up the differences in the sovereigns that impact any such comparative items is not undertaken by those merely advocating a different system.

      For example, thinking that the nigh asymptotic disappearance of the Jepson claim format is something that will “swing back” like a pendulum, paying zero heed to the patent profanity drivers that have emerged (and that have NOT gone away).

      1. Agreed.

        I would have no problem with Jepson/c.i.t. style claims if we, like the EPO, identified the single “closest prior art” reference and stuck with it as the foundation of the inventiveness/nonobviousness analysis. Unfortunately, U.S. obviousness analysis is a moving target and the “closest prior art” changes with each amendment.

        1. But Practitioner, the prior art starting point can also change at the EPO, depending on the amendment you make. Nothing wrong with that. Be happy: you are making progress.

          Suppose you have invented the piston ring. Your illustrated embodiment is an ic engine. but your claim is to a piston and ring, with no limitation to ic engines.

          Examiner blows away your novelty with a cite in the field of gas compressors.

          So what to do? You amend to an ic engine with your inventive piston/ring combination. At the EPO, the Examining Division now needs a “prior art starting point” in the field of ic piston engines.

          The mischief at a PTO is not doing an effective search at the outset. In my hypo, for example, the EPO search would anticipate the narrowing amendment and the EPO search report would already include the art neded to dispose of the narrowed claim.

      2. The law is not like physics. It is not immutable. Patent law is not a scientific fact, waiting to be discovered. It is man-made, and it changes. Argument swing it, this way and that. A good example is the shift that happened this year in the UK. The UK has never had a Doctrine of Equivalents. Most everybody assumed it never would. And then along came Justice Neuberger and handed down an earthquake decision a month ago, which transformed the patent law landscape in England.

        One might think that you, me and just a few other people read Dennis’s threads, anon. I like to think the blog is more influential than that, and in particular on those whose task it is to write or sculpt the patent law of the USA.

        A lot has changed over the last 20 years. Patents last for 20 years. Those claims we write now can be litigated 20 years from now. It is incumbent on those drafting claims now have to look into the far future. Those who shout loudest that things will never change are doomed to have to eat their words, sooner or later.

        What I see, even now, is an increasingly pervasive influence upon the opinion formers of the USA of the established caselaw of the Boards of Appeal of the EPO. If you were an expert on that caselaw, you would see it too.

        1. What I see are propaganda attempts to shape that very law (quite divorced from – sadly – considerations of what a sovereign has chosen).

          Immutable? Sure. No one is arguing otherwise (that’s a pretty strawman to attempt).

          But at the same time of being mutable, one has to reason. That you want to see some semblance of even a potential “return to prominence” of the Jepson claim form is, quite frankly, delusional.

          There is a huge difference between the chance of a great upheaval and resetting of law that could lead to the Jepson resurrection and the application of critical thinking as to WHY the Jepson has basically (within the probable margin of error) disappeared.

  3. Might as well strike through the last sentence, since that’s how the supreme court interprets this.

    1. Why do you say that? Because the hypothetical person of ordinary skill has all the knowledge in the art and has several base rules which seem to apply in most all situations?

  4. To be more clear, this statute begs for the word “merely.”

    … would have been obvious before the effective filing date of the claimed invention to a person having merely ordinary skill in the art to which the claimed invention pertains.

  5. What?! Not just novel, the invention must be *non-obvious* too! Damn, now I need to go and re-write all those applications…or call my malpractice carrier…

    Seriously, Dennis, why did you post this?

    1. Why? Perhaps Dennis hopes for comments stimulated by the recent Jepson threads.

      Or is he hoping for a debate about the consequences of adding to the Statute in 1952 the words “shall not be negated” by “the manner” in which the invention was “made”?

      1. Re the Jepson threads, I do think there is the potential for an interesting discussion regarding the interplay of Jepson claims with the requirement in 103 that “the claimed invention as a whole would have been obvious”.

        If I was trying to argue that the patent office can’t require an applicant to identify what is innovative in a claim, then I might start with some sort of argument that under 103 the patent office has to establish that the claimed invention as a whole is obvious, and can’t require an applicant to wall off some portion of a claimed invention from consideration.

        That doesn’t change the fact that it feels like an applicant should be able to identify what is innovative in their patent application, but it’s an interesting argument.

        1. No. Engineers find solutions to problems. When they have a solution that they have never seen before, they think, hey, this might be an invention. They don’t study “the art” to determine which particular aspect(s) might be novel and non-obvious.

          You may feel that an inventor should be able to identify what is innovative, and they may feel that they do, but they do not KNOW and the price of being wrong is too high.

          1. Les, I’m interested in this “problem” that you say an inventor engineer addresses. Is it found within a particular technical field? So when a patent attorney writes up the solution to the problem in a patent application, does that attorney fix the field, and then write what the inventor has contributed to it?

            I ask because that is the beginning of the EPO’s objective exploration of patentability, tested objectively, by the PHOSITA and TSM. Like you, the EPC equates a patentable invention with the solution of a problem.

            Do you agree, that what matters is not what was subjectively invented by the named inventor, but whether the claim defines a solution to an objective technical problem for which the prior art offers no TSM.

            1. Nice eyeglasses.

              Now try without the spin of “technical” (as there is NO “technical arts test here in the US sovereign – as you are WELL aware)

          2. >>When they have a solution that they have never seen before, they think, hey, this might be an invention. They don’t study “the art”

            Really? That’s pretty contrary to my experience in industry. If you don’t look for similar solutions, you’re risking repeating someone else’s known mistake.

            Admittedly, an Engineer’s novelty analysis is likely less generous than a patent prosecuter’s. I don’t mind concluding that inventors are not in the best position to know the extent. But any suggestion that inventors don’t look at the prior art is absurd.

          3. Les,

            Speaking in generalities has the disadvantage of sometimes creating the appearance of disagreement where they may be none.

            When I was drafting the comment I recognized that I had not really taken the time to fully flesh out the thought (further, the reality is that these types of issues generally require a lot of time and thought and some real world cases to flesh out).

            I certainly think that describing and claiming a technical solution to a technical problem is a great approach and was not intending to suggest that this isn’t something that should be encouraged.

            I don’t think many are suggesting that every innovation is suitable for claiming in a Jepson format, or that every disclosure and claim should make clear what is new and what is prior art; the idea is more that it seems like it would be nice for an applicant to make a good faith effort to call out what the applicant feels is innovative in a patent application. This may involve an in-depth discussion of known prior art, or it may involve a discussion of a problem that a disclosed solution solves. Often times, these may be one and the same.

            1. JCD,

              Are you really that pollyanna? Are you aware of this thing called “patent profanity?”

              Your statements here and elsewhere related to Jepson claim formats and “wouldn’t it be nice” smacks of someone who has long been out of the trenches.

              While your demeanor is indeed refreshing (a sincere thanks for that), such demeanor should not be confused with having any level of import to the message provided. Kindness is just not the same as “critical thinking” (and that type of thoughtfulness is NOT the type of thoughtfulness that these issues require). If anything, and not saying that you are purposefully being misleading, the type of thoughtfulness you are using makes the issues even more muddy. Far better (FAR better) would it be to be brusque and accurate and show critical thinking then to be pleasant and inaccurate (on important matters, even as one might be accurate on unimportant matters) and show a lack of critical thinking.

              Which path does the Socratic method (used in law school training – IF it is still used in law school training) more resemble?

              On any day when discussing matters of legal import, give me someone in my face with accurate and important elements than someone collegial but with either inaccurate or unimportant elements.

              1. anon,

                I take the pollyanna comment as a compliment, so thank you.

                As a quick tangent, with respect to “patent profanity”, I personally am not a big fan of that phrase. I think it’s an overused catch phrase, and its use risks covering up the underlying reality that these issues are really complicated, and risks fostering an environment where attorneys may not properly look into and understand these issues.

                As I noted recently in another comment thread, when you can’t trust a young attorney to understand exactly what they can and can’t say then it’s much easier to create a hard and fast rule labeling certain language as “patent profanity”, but I maintain that it’s preferable to understand the issues involved and be able to make informed decisions about what it makes sense to include in a patent disclosure.

                More topically, although oversimplified hard and fast rules may be useful for some things, I don’t think they are useful for a candid discussion among experienced practitioners regarding these types of issues. If I’m discussing an invention disclosure with a client, or reviewing a draft put together by a younger attorney, then I might be inclined to mention these types of issues at a higher level without diving into as much detail. On the other hand, if I’m discussing the use of Jepson claiming with other experienced practitioners, then I am presuming that everyone is intelligent and sophisticated enough to understand that the generality of “characterize something as prior art = bad” is just an oversimplification, not the whole enchilada.

                It’s been a long time since I have read Socrates, but my recollection is that he was generally pretty skeptical of hard and fast rules, and loved to ask probing questions designed to expose flaws in oversimplifications.

                One thing that I definitely recall from Socrates that I try always to remember is his belief that it’s better to be aware of your ignorance than to pretend to know the answers. I bring this up not to cast a stone at anyone else, but just to note that these are very complicated issues, and I don’t pretend to have all the answers.

                Instead, I just try to offer my own thoughts and comments. This is partly based on my own experiences (to answer your implied question, I am not sure where the trenches are, but I do mostly patent prosecution and ex parte PTAB appeals with some IPR and CAFC work thrown in), but also partly based on my own feeble attempts to grapple with larger policy issues.

                I have traditionally stayed away from diving into policy issues, viewing them as above my pay grade, but more and more often when I have time I do occasionally find myself thinking a bit more about these types of policy issues than I used to. As a semi-topical anecdote you may want to skip over, I’ll always remember that the first time I argued an appeal in front of the CAFC I spent a lot of time preparing legal arguments focusing on case law that I felt was directly on point, only to find myself during oral argument faced with questions from the bench regarding whether from a policy standpoint the precedent I was citing made sense and should be upheld.

                So now I sometimes try to take a step back and think about some of the issues I’ve seen with the current systems and processes in place, and occasionally offer some comments if I have a perspective that I haven’t seen expressed.

                As I’ve noted in other threads recently, I am very sympathetic to the patent office because I think that patent examination is a very difficult problem, but I also think that there are currently some major examination quality issues that need to be addressed. These examination quality issues result in both too many bad allowances and too many bad rejections. Unfortunately, I think that some current attempts to address the bad allowances are in turn creating even more issues. So the result is a series of interconnected tough, thorny problems, but tough, thorny problems that need to be addressed.

                I think that where I may differ from you is that I am pretty open to the idea that applicants might need to bear some of the burden of improving examination quality. This doesn’t mean that I am right, just that based on my own experiences I am open to the idea that there are some ways that applicants could help the office that wouldn’t be unreasonable.

                1. The pollyanna comment is not a compliment, and it is most odd that you would take it to be so.

                  To me, that shows that you simply do not want to employ critical thinking and would rather skim along looking for those “it would be nice” thoughtless moments.

                  Perhaps it is time for you to not engage in law if you are unwilling to engage in critical thinking.

                  I cannot agree with you on your views as to patent profanity. Such is reality. One may take issue with the notion of any singular item being called “patent profanity,” but that is a very different things.

                  You run the opposite risk of TOO simplifying those very issues that should be exposed to critical thinking.

                  As I noted – any one item being – or not being – patent profanity is STILL very much open to ongoing discussion. But to pretend that the general sense of the existence of such is just not a credible position to take.

                  I have traditionally stayed away from diving into policy issues, viewing them as above my pay grade, but more and more often when I have time I do occasionally find myself thinking a bit more about these types of policy issues than I used to.

                  I saw that “pay grade” comment earlier – and let it pass, since it was not directed to me. Here though, I will say that you are entirely NOT correct and that as a barred attorney actively representing clients, part of your state oath requires you to be cognizant of – and as the case may be – actively involved in those very “policy issues.” As politely as I can, I would say that the Alfred E Newman “what, me worry?” reflects a professional lapse on your part.

                  We are NOT spectators when it comes to law – and that includes when (and if) policy is being Misapplied to law.

                  I am very sympathetic to the patent office because

                  I would be VERY careful with such sentiments. I am not saying that you “over do it,” but you should realize exactly where your ardent representation must lay (and it is NOT with the Office). I was rather sadly shocked to see the number of attorneys who saw nothing wrong with the government’s position in the Tafas case – based on exactly the sentiment that you express. Those are the types of attorneys that really should consider removing themselves from the bar.

                  As to your last paragraph, make NO mistake that I am for improving patent examination quality (quite apart from the baseless accusations that are allowed to flood this forum. Quite in fact, I am one of the very few that have repeatedly provided detailed suggestions for improving patent examination quality. But I brook NO “gee, it’s too tough” and absolutely REFUSE to accept any “gee, that’s not really my job” statements from examiners whose job it indeed is.

                  As I noted elsewhere – give my brusque, accurate and on point conversation ANY DAY over polite, but inaccurate or off point conversation.

                  This may come across as a bit hard-nosed, but there are simply FAR too many who will only gladly – and politely – derail accurate and on point discussions merely in order to advance some different agenda.

                2. I’m not really sure that we disagree to the extent you seem to suggest. I suggested that “it’s preferable to understand the issues involved and be able to make informed decisions about what it makes sense to include in a patent disclosure”, e.g. using critical thinking to determine what language it makes sense to utilize in a patent application. I don’t think that is that far from your position that “[o]ne may take issue with the notion of any singular item being called ‘patent profanity,'” I’m just noting that I think it’s best to do this type of analysis on a case by case basis, and that I worry that use of the term “patent profanity” can lead to application of blanket rules in lieu of critical thinking.

                  I will say that I’m not quite sure how calling for the use of critical thinking on a case by case basis in determining whether it makes sense to utilize certain language risks oversimplifying the issues. I was suggesting that bright line rules are often oversimplifications, and that still seems pretty accurate to me.

                  Again, I don’t really think any of this is controversial, and I’m not sure you really disagree with it. It’s certainly possible that my post simply wasn’t clear enough on these points.

                  With respect to the advantageousness of improving examination quality, it sounds like that is one area where we definitely are in agreement. It’s a really difficult problem, and I always love to hear thoughts from others on what can be done.

                  Lastly, as another aside, I try to be polite in discussions because it just seems like the right thing to do, but I’ve also found that the farther you get from polite discourse the harder it is to get people to engage rationally. It’s hard enough to get people to engage in a rational manner in the first place, so I would prefer not to add any extra reason they may not do so. That being said, I’ll be the first to acknowledge that sometimes it can get very frustrating if you are engaging with someone who isn’t rational, or, even worse, is acting in bad faith. That isn’t intended as a reference to this conversation, more as a response to your comments regarding the merits of polite discourse versus on point discourse.

                3. Aside from other commetns,

                  this ntoe of yours deserves a specific reply:

                  t I’ve also found that the farther you get from polite discourse the harder it is to get people to engage rationally

                  That may be true in other forums. it is without a doubt NOT true here.

                  This has been the cornerstone of MY suggestions for a healthy ecosystem here for at least FIVE years.

                  For whatever reason, actual steps to make sure that conversations are not “drive-by monologues” and instead are actual dialogues are simply NOT taken.

                  Quite in fact, given how the “desired narrative” suffers from actual engaged dialogue, there have been subjective and non-uniform editorial controls engaged that drive in the opposite direction of your comment. Polite or not – the more critical dimension (even if brusque) is the dimension that the editorial controls dissuade from.

                  There is a very real danger in conforming to “politeness” for politeness sake while the tough issues drown out in propaganda and drive-by monologues.

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