Obviousness

Question 1

What is an important implication of Jepson claim

Answer 1

Jepson claims in the preamble is an admission of prior art.

Question 2

Overlapping of ranges

Answer 2

Ranges cannot overlap. Can only be narrowe

Question 3

Nonanalogous art

Answer 3

Examiner is only allowed to combine analogous art in order to form a 103 rejection

Question 4

Analogous art

Answer 4

Same field of endeavor

Anywhere where the inventor would look to solve a problem

Usually not a good argument against 103 rejection to use no analogous art

Question 5

Graham vs John Deere

Answer 5

This is where obviousness starts

Basic inquiry. 4 factors:

1. Determine the scope and contents of the prior art
2. Ascertain the differences bt the prior art and the claims
3. Resolve the level of ordinary skill and
4. Consider and evaluate evidence of secondary considerations

These are sometimes called objective info is of non obviousness

Question 6

Secondary considerations

Answer 6

May be useful in obviousness consideration but only one of the 4 part.

Question 7

Secondary considerations objective evidence

Answer 7

Example: long felt need. Failure by others. How could you possibly say that this is obvious?

The fact that none has done it, doesn’t mean that it’s obvious. Maybe no one ever tried.

Strong evidence: never happened and people have been trying to do it.

Perpetual motion machine. Never happened. One day some one figured it out. Not obvious.

Not all secondary considerations created equal.

Question 8

Secondary considerations commercial successful

Answer 8

Make sure it’s tied to the innovation. Not just commercial only - example: good business

Question 9

KSR v Teleflex

Answer 9

This doesn’t undo Graham v John Deere.

Additional considerations

If no TSM to combine the references - not enough to overcome 103 - Supreme Court decided it would be too restrictive

Therefore, if there is TSM, then yes, it’s obvious. If no TSM, there are 6 more tests.

Question 10

KSR v Teleflex

Answer 10

A. Predictable results

B. Simple substitution

C. Known technique to improve similar device

D. Applying a known technique to a known device

E. Obvious to try

F. Known work in one field of endeavor may prompt variations in same or different field based on design incentives or market forces

Concept: predictability

Question 11

Exam tip

Answer 11

Which of the following argument would you make.

Can’t be any TSM.
Make the argument that there’s something unexpected.