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Reinventing Obviousness: A New Standard for Patentability

Obviousness in Patent Law is a bit of an enigma. On its face it doesn’t seem very complicated. Yet, it has created more confusion and controversy than perhaps any other aspect of Patent Law. With the Supreme Court expected to re-evaluate the current obviousness standard in the upcoming months, the question of which direction the Court should take has become a hot topic.
In the following essay I will propose a new standard for obviousness. My test follows the current standard with the exception that it drops the motivational requirement for stylistic or design-choice matter. This essay will I) explore competing interests, II) identify the need for a new test, III) and outline the proposed test with arguments why it should be adopted.

I. Competing Interests

Twenty-three years ago the Court of Appeals for the Federal Circuit (hereafter CAFC) began invalidating patents when motivation to combine references could not be pointed to in the references themselves [1]. By narrowly interpreting the statutory language of 103(a) established by the Patent Act of 1952 to require an evidentiary basis to combine references, the court in many ways legitimized patent prosecution by imposing accountability. At the same time, however, the CAFC created problems by limiting an examiner’s flexibility to make rejections. Most recently, the current test has come under fire by twenty-four law professors who jointly filed an amicus brief before the Supreme Court last year [2]. According to this group, the current test should be expanded to a broad test which allows an examiner to reject based on intuitive assessment of obviousness. A broad test, the professors argue, would eliminate the current “inability to weed out obvious patents” [3].
Despite the lack of flexibility, there are vital interests at stake in maintaining the current test. To begin with, application of a broad test creates a time frame dilemma which makes examination a guessing game. Obviousness must be present at the time of invention, not when an examiner gets around to examination which may be more than four years later. Examiners – especially in areas of rapidly changing technology - must awkwardly ponder what would have been obvious several years earlier. The current test obviates this by looking only at references which predate the claimed invention.
Along similar lines, a broad test leaves the issue of hindsight defenseless as an examiner may “steal” motivation from the patent application itself. As Chief Justice Roberts remarked during KSR v. Teleflex, “In hindsight everybody says I could have thought of that… If you don't have the sort of constraint that [the current] test imposes, it's going to be too easy to say that everything was obvious” [4]. The CAFC has echoed this sentiment: “It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the prior art” [5]. Under the current test, motivation has to be found in the prior art and thus cannot be “stolen” from the application. Since the broad test requires no objective accountability, however, an examiner may glean motivation directly from the application itself and use it to piece together the claimed invention.
Most importantly, a procedural concern arises in that the broad test permits a deficient evidentiary record. The courts have consistently held that a documentation trail must exist for obviousness; hand-waving with nothing of substance to point to doesn't cut it [6]. Professor Charles Cotropia notes that a main reason for this insistence is that objective proof required by the current standard is necessary for evidentiary purposes in litigation [7]. Secondly, from an administrative law perspective, the CAFC has held that the USPTO as a federal agency must ground rejections in “objective evidence of fact” [8] and that reliance on common knowledge and common sense does not fulfill the agency’s obligation to cite references to support its conclusions [9].

II. Need for a New Test

The discussion above can be distilled into two needs with an obviousness standard: flexibility (solved by the broad test) and accountability (solved by the current test). While these needs are perhaps adversarial, my proposed test satisfies both. My test centers on the idea that the current test is flawed in its comprehensive nature and a flexible standard should be in place for stylistic or design-choice matter (i.e. matter not functionally enhancing the invention).
Why is the current test flawed in its comprehensive nature? Put simply, the current test wrongly presumes that obviousness requires motivation. Certainly obviousness usually entails motivation. For example, it is obvious to use an umbrella because one is motivated to stay dry. But obviousness doesn’t require motivation. Contrary to mainstream criticism [10], the problem examiners face with the current test is not in finding motivation where it exists and is hard to find, but rather in finding motivation where it doesn’t exist.
To illustrate my point, suppose a claim calls for performance of two independent processes in a certain order to achieve a result. A prior art reference that teaches performance in the reverse order to achieve the same result likely will contain no motivation as to why the processes should be reversed. This type of situation is stylistic or design-choice. Trying to find motivation here is like trying to find motivation for why someone puts his right shoe on before he puts his left shoe on.
Not only is motivation absent in instances like the one above, but it is also antagonist in other obvious situations. For example, suppose a method uses 4 variables to achieve a particular result when the prior art teaches use of 3 variables to achieve the same result. Of course, the 4 variable method is “obvious” over the 3 variable one in the sense that the equation Y=X+1-1 is “obvious” over the simpler Y=X, but what motivation could an examiner possibly find to make something more difficult? Finding none, the examiner would likely allow the patent to an applicant whose invention is more complex and thus detrimental to society.
The issuance of many ludicrous patents illustrates the problem of non-existent motivation. For example, the USPTO issued a patent for a “method of swinging on a swing” [11] in which a patent attorney patented his son’s stylistic method of swinging. What motivation could possibly be found to swing in the son’s individual style? Given examples like this, the need to modify the current standard to provide more flexibility is clear. However, one must also be cautious to balance the need for flexibility with the need for accountability.

III. Proposed Test

I propose that the obviousness standard should be altered to eliminate the requirement of motivation when the difference between the prior art and the claimed invention is stylistic or design-choice. In all other instances, my test retains the current standard because of the accountability benefits previously discussed. The proposed test should be adopted because it would provide needed flexibility, better the goals of the patent system, and make examination more efficient.
Eliminating the motivation requirement to reject stylistic or design-choice matter would give an examiner more flexibility. Under the proposed test, an examiner would be able to reject a “method of swinging” by noting that swinging is known in the art and the applicant’s personal swinging method is merely stylistic or design-choice. With greater flexibility, examiners will issue higher quality patents.
The proposed test will also better the goals of the patent system and obviate the need for accountability. Since stylistic or design-choice matter does not constitute an invention, accountability is unnecessary. The Constitution empowers Congress “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries” [12]. Stylistic or design choice matter does not “promote the progress of science” and should not be afforded the same protection as functional matter. “Patents are awarded as inducement to bring forth new knowledge” [13] and benefit society, not to benefit people who have merely added their personal spin on known processes. The applicant who unnecessarily switches the order processes are performed, the “inventor” who clogs up an efficient 3 variable method by adding an unnecessary variable, and the boy who wants to patent his method of swinging all have no constitutional right to a patent because they have not promoted the “progress of science”.
Lastly, the new test would make examination more efficient. With greater flexibility, the examiner would not spend time digging through references to find motivation that doesn’t exist. Given the overwhelming backlog now at the USPTO, it would be particularly desirable to expedite prosecution.

IV. Conclusion

I propose a new standard for obviousness which retains the current standard for functional matter but eliminates the motivation requirement for stylistic or design-choice matter. This test would provide needed flexibility, better the goals of the patent system, and make examination more efficient. I submit that this test best satisfies the needs of accountability and flexibility and should be adopted.



References:
[1] ACS Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572, 1577 (Fed. Cir.1984).
[2] See Br. of Twenty-Four Intellectual Property Law Professors as Amici Curia in Support of Petitioner, No. 04-1350;
[3] Id. page 9.
[4] retrieved 3/8/06 from: http://www.patenthawk.com/blog/2006/11/supreme_court_obviousness_moti_1.html
[5] Interconnect Planning Corp v. Feil, 774 F. 2d 1132 (Fed. Cir. 1985)
[6] retrieved 3/11/06 from: http://www.patenthawk.com/blog/2005/07/impermissible_hindsight.html
[7] Cotropia, Charles A. Patent Law Viewed Through an Evidentiary Lense: the “Suggestion Test” as a Rule of Evidence . BYU L.Rev (2006). Page 32.
[8] In re Lee, 277 F.3d 1338, 1344 (Fed. Cir. 2002)).
[9] see also Merges, Robert P et al. Intellectual Property in the New Technological Age. Aspen Publishers: New York, New York. 4th Edition. 2006. Page 233.
[10] See Br. of Twenty-Four Intellectual Property Law Professors as Amici Curia in Support of Petitioner, No. 04-1350. pages 22-23.
[11] U.S. Patent No. 6,368,227, issued April 9, 2002
[12] US Constitution, Article I, Section 8, Clause 8
[13] Graham v. John Deere Co. 383 U.S. 1 (1966)

Posted by at March 24, 2007 11:01 PM in Commentary Posts