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Author Topic: what is an obvious invention?  (Read 677 times)

asherc

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what is an obvious invention?
« on: 08-16-10 at 04:11 am »

I don’t fully understand the ethos of the obvious objection. There are examples i can think of that i do understand it. For example the screw thread. If someone tried to patent the reverse screw thread then i would agree with objection on the grounds of it is an obvious extension. This is not only an obvious change of one insignificant feature, it is also clearly for no other purpose other than to infringe the original idea. But when a novel application of previous art is invented, and the previous art is adapted for this novel application, then how can this be justly regarded as obvious. The modifications to the art are only obvious in the light of the novel application. Under what circumstances could it be just to object on the grounds of obviousness when the application is novel and useful?
In European law non-obvious is called the inventive step. If the inventive step is the noval application rather than an improvement to the art then is there a valid objection? The question is whether the novel application can count as an inventive step? Found this on wiki:

Pursuant to the Article 52(1) in conjunction with Article 56, first sentence, EPC, European patents shall be granted for inventions which, among other things, involve an inventive step, that is, the invention, having regard to the state of the art, must not be obvious to a person skilled in the art.
The problem with this statement is that it assumes that the person skilled in the art is only assessing the obviousness of the step in relation to the known problem that the art was originally intended for. How can the skilled person be even qualified to assess the obviousness of noval applications? The noval application will have been born of skill in other areas beyond the remit of the skilled person in the art.
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JimIvey

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Re: what is an obvious invention?
« Reply #1 on: 08-16-10 at 08:39 am »

First, the last time I checked, Chisum's treatise on patents devoted over 500 pages to obviousness.  Just don't ever expect a simple answer to a general question about what's obvious.

Second, I agree with you.  If a part must be modified to work in an entirely novel context, the modified part is non-obvious since the context was unknown to those of ordinary skill in the art at the time the invention was made.  However....

Third, this is how examiners tend to look at that situation (from what I've heard).  The part modification would have been obvious to one of ordinary skill in the art at the time the invention was made had someone explained the context and said "build me this part."  In other words, given the new context, the part modification is obvious.

Of course, I don't accept the "given" because it's just not given.  In the old days, I'd just ask for the teaching, suggestion, or motivation in the prior art that shows this.  Now, after KSR, it's more challenging, but there still must be something to show the obviousness at the time of the invention, not some imagined scenario in which the motivation is brought back in time.

I hope that helped a bit.

Regards.
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BobRoberts

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Re: what is an obvious invention?
« Reply #2 on: 08-16-10 at 09:04 am »

"If someone tried to patent the reverse screw thread then i would agree with objection on the grounds of it is an obvious extension."

I'm not so sure I agree with this (though I understand the underlying thought about the elusiveness of obviousnes).  For example, if no one had thought of a left-handed thread, and were having problems with items unscrewing themselves during the normal use because they were rotated (think of bicycle pedals), then you may be able o show sufficient long-felt need to overcome obviousness, as an improvement over the right-handed thread. 

But again, I understand the "grayness" of obviousness. 
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bartmans

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Re: what is an obvious invention?
« Reply #3 on: 08-17-10 at 12:43 am »

One of the major 'tools' to assess obviousness in Europe is the so-called 'problem-solution' approach. This approach has three steps:

1. Define which document forms the closest prior art. In general this will be the document that has the most similarity to the claimed invention, whereby also the technical field in which the invention is operating is important.
2. Define the problem that still remains from this closest prior art, and which is solved by the invention. This problem thus can be different than the problem that has been proposed in the specification itself.
3. Check whether solutions to the problem were available for the skilled person and whether such a person would have needed no inventive activity to apply these solutions to the problem defined under step 2.

As stated by Jim in his above answer, many pages have been dedicated to describe inventive step or obviousness, and in the end it will still remain a rather subjective determination. Also 'hindsight' will trouble an objective approach.
Regarding this last phenomenon, a nice piece of research has been done: two groups of students were made, who got a description of the same problem. The difference between the two groups was, that one group at the same time also got the solution, the other did not. After some time both groups had to indicate whether the presented solution would have been obvious. It is not surprising that the score in the group that got the answer at the same time as the question was much lower than for the group that had have to think about the problem themselves for a while.
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JimIvey

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Re: what is an obvious invention?
« Reply #4 on: 08-17-10 at 09:23 am »

1. Define which document forms the closest prior art. In general this will be the document that has the most similarity to the claimed invention, whereby also the technical field in which the invention is operating is important.
2. Define the problem that still remains from this closest prior art, and which is solved by the invention. This problem thus can be different than the problem that has been proposed in the specification itself.
3. Check whether solutions to the problem were available for the skilled person and whether such a person would have needed no inventive activity to apply these solutions to the problem defined under step 2.

Is it just me or does that look a lot like the test in the US articulated in Graham v. Deere?  I've always used US obviousness analysis in arguing EPO, assuming inventive step was very close -- I just never realized how close they really were.

Regards.
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James D. Ivey
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