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   How to determine if a patent is obvious
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   Author  Topic: How to determine if a patent is obvious  (Read 2799 times)
ced_dude
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How to determine if a patent is obvious
« on: Oct 4th, 2005, 1:52pm »
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I wonder if my patent can be considered obvious. I've filed for it 2 years ago. It was an improvement on an emerging technology.
 
Now that this technology is more popular, I realized I have patented an improvement that a lot of companies may be using in the future. I'm worried they will try to make my patent look obvious because my patent solves many details that now appea as crucial.
 
What are the best way to fight against that? I'm not looking for a magic answer. Just looking to find out how an argument of obviousness is usually fought. Any idea?
 
- Proof that competitors are now using my system? The more others use it, the better?
- Proof that the original technology was released several years before I filed -- thus giving plenty of time to others to invent the same thing (e.g. if it was obvious, why didn't you invent it yoursel)?
- Proof that I was first to annouce the technology to the public?
 
A friend of mine gave me also a famous quote: "It is always obvious once it has been invented" (Quote atributed to Galileo).
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Wiscagent
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Re: How to determine if a patent is obvious
« Reply #1 on: Oct 4th, 2005, 7:37pm »
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These excerpts from MPEP - 2141 35 U.S.C. 103 may be helpful.
 
    Richard Tanzer
 
- - - - - - - - - - - - - - - - -
Standard Of Patentability To Be Applied In Obviousness Rejections.
 
    Office policy is to follow Graham v. John Deere Co. in the consideration and determination of obviousness under 35 U.S.C. 103. As quoted above, the four factual inquires enunciated therein as a background for determining obviousness are as follows:
 
    (A) Determining the scope and contents of the prior art;
 
    (B) Ascertaining the differences between the prior art and the claims in issue;
 
    (C) Resolving the level of ordinary skill in the pertinent art; and
 
    (D) Evaluating evidence of secondary considerations.
 
 
Basic Considerations Which Apply To Obviousness Rejections
 
    When applying 35 U.S.C. 103, the following tenets of patent law must be adhered to:
 
    (A) The claimed invention must be considered as a whole;
 
    (B) The references must be considered as a whole and must suggest the desirability and thus the obviousness of making the combination;
 
    (C) The references must be viewed without the benefit of impermissible hindsight vision afforded by the claimed invention; and
 
    (D) Reasonable expectation of success is the standard with which obviousness is determined.
 
 
Objective Evidence Must Be Considered
 
    Objective evidence or secondary considerations such as unexpected results, commercial success, long-felt need, failure of others, copying by others, licensing, and skepticism of experts are relevant to the issue of obviousness and must be considered in every case in which they are present. When evidence of any of these secondary considerations is submitted, the examiner must evaluate the evidence. The weight to be accorded to the evidence depends on the individual factual circumstances of each case.
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Richard Tanzer
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TataBoxInhibitor
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Re: How to determine if a patent is obvious
« Reply #2 on: Nov 9th, 2005, 6:49am »
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Wiscagent,
 
     I was just wondering.  Is it common to use secondary considerations in an office action?   I guess I am just wondering what percent of the time you have made those arguments.  Sorry for the tangent.
 
TBI
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Wiscagent
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Re: How to determine if a patent is obvious
« Reply #3 on: Nov 9th, 2005, 8:31am »
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Use of secondary considerations to rebut an obviousness rejection in an office action is relatively rare.  For one thing, some of the secondary considerations require that the product already be on the market, e.g. success in the market place, copying.  
 
Practitioners often prefer to argue that a prima facie case of obviousness has not been made by the patent examiner.  “If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of non-obviousness.” [MPEP sec 2142] If that argument works, then the application file remains relatively "clean", little or no discussion of the invention is required.
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Richard Tanzer
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Isaac
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Re: How to determine if a patent is obvious
« Reply #4 on: Nov 9th, 2005, 1:08pm »
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Generally speaking proving non obviousness using secondary considerations requires evidence rather than argument by the practitioner.   Evidence such as declarations or affidavits, surveys, sales data, depositions, etc. must provided in support of one or more secondary consideration argument.
 
All of that stuff requires time and expense beyond the examiners normal time for preparing an office action, meaning that secondary considerations can be costly avenue to pursue.  Certainly all of the argument based methods are going to get tried first, so secondary considerations are generally relegated to those situations where other tactics do not work.
 
When stuff like sales data or licensing is used, the results have to be closely tied to the invention.   Sometimes that kind of detailed info does not exist.
 
Usually the secondary considertion data is introduced fairly late in the prosecution often requiring the practitioner to justify a delay in making the argument after a couple of rejections.   The examiner in theory has some discretion in evaluating such a justification, but arguments such as "it takes time to develop sales data" are supposed to work.
 
By the way, examiners really do not look forward to dealing with this stuff.  
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Isaac
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