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Author Topic: What is obvious?  (Read 3623 times)

forumerker

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What is obvious?
« on: 05-01-11 at 07:39 pm »

If a product needed customers to make decisions about colors, like interior wall paint, and you invented a way to replace the color strips used for that purpose, for example by having an illustration of all the colors on the label of the paint can itself.

Would that be an obvious improvement because of the "duh, anyone who's skilled could've thought of it" factor?

Also, would a patent claim be obvious even if the "well, duh" factor is there, but no one has in fact thought of it before in the last twenty to fifty years -- and especially if you can show after filing the patent that new commercial interest and product demand for it exists after you made the "obvious" innovation known to the public?
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forumerker

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Re: What is obvious?
« Reply #1 on: 05-04-11 at 04:38 pm »

"Obviously" not an easy question...?    :D
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JimIvey

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Re: What is obvious?
« Reply #2 on: 05-05-11 at 09:58 am »

Last I checked (long ago), Donald Chisum's treatise on patents devoted over 500 pages to discussing the law of obviousness.  You can read that as a start.  ;-)

Actually, a pretty good place to start is the KSR case

Regards.
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Alan F

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Re: What is obvious?
« Reply #3 on: 05-14-11 at 06:32 pm »

Last I checked (long ago), Donald Chisum's treatise on patents devoted over 500 pages to discussing the law of obviousness.  You can read that as a start.  ;-)

Donald Chisum has some great commentary on his website: http://www.chisum.com/.
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MYK

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Re: What is obvious?
« Reply #4 on: 05-15-11 at 05:08 am »

Also, would a patent claim be obvious even if the "well, duh" factor is there, but no one has in fact thought of it before in the last twenty to fifty years -- and especially if you can show after filing the patent that new commercial interest and product demand for it exists after you made the "obvious" innovation known to the public?
A possibly apropos quote: "Ridcully was about to make an appropriate comment, but stopped himself. He knew Leonard's reputation. This was a man who could invent seven new things before breakfast, including two new ways with toast. This man had invented the ball-bearing, such an obvious device that no one had thought of it. That was the very centre of his genius -- he invented things that anyone could have thought of, and men who can invent things that anyone could have thought of are very rare men." -- Terry Pratchett, "The Last Hero"

Or, put another way, I successfully argued against a rejection for the use of a particular polymer as a substrate, because although the use of the polymer as an adhesive was known, the examiner was unable to dig up anything to reject NOT sticking two things together with it, but rather only applying it to one side of something without sticking something else to it.  Or something like that, it's been a few years.  I wish I could find that one via PAIR, but I've never been able to remember enough about the application to ferret it out.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

NJ Patent1

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Re: What is obvious?
« Reply #5 on: 07-26-11 at 04:50 pm »

Forumerker:  I type in follow-up to JimIvey's and MYK's posts.  Jim's tongue-in-cheek statement re: Chisum makes the point. To wit, it can be darn complicated.  MYK's post introduces the "duh factor", highlighting the difference betwen legal obviousness and what an artisan, for example an experienced bench chemist, would think to be "obvious". 

Long before I was a patent attorney, I was one of those bench chemists.  After just getting my PhD and starting work in industry, I'd read a recently issued patent and think, "what's heck is the big deal? Duh, anybody could have thought of that!"  Well, anybody didn't but patentee did.   The law of obviousness, as applied today and (re)confirmed by SCOTUS in KSR (also mentioned by JimIvey), is set-out in Graham v. John Deere. There are many factors to consider, including level of skill in the art, which is not "Nobel" level.

Before attacking 500+ pages of Chisum, indeed a good secondary source, you might try the "condensed version" in Patent Law Basics (Mills, ca 100 pgs)), or the even more compact Patent Law Fundamental (Schwarz) 
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