Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 97

In 2007, the U.S. Supreme Court had before it a patent case decided previously by the Court of Appeals of the Federal Circuit (CAFC), involving criteria for determining whether a claimed invention was non‐obvious in view of the prior art. The CAFC had applied the single test it had been using in previous non‐obviousness cases:

“Is there some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference, or to combine a plurality of prior art reference teachings, to arrive at the claimed invention?”

The Supreme Court held that, while this “teaching, suggestion, or motivation” test could be used to determine the obviousness or non‐obviousness of an invention in view of the prior art, this was not the only test to be applied. The Supreme Court then set out six additional rationales that an inventor, a Patent Examiner, or a court or jury, could apply to support a conclusion that a claimed invention is “obvious,” or “lacks an inventive step.” These six additional rationales are listed below, and any one or more could be applied in an obviousness analysis:

1 Combining prior art elements according to known methods to yield predictable results.

2 Simple substitution of one known element for another to obtain predictable results.

3 Use of known techniques to improve similar devices, methods, or products in the same way.

4 Applying a known technique to a known device, method, or product ready for improvement to yield predictable results.

5 “Obvious to try”—Selecting from a finite number of previously identified, predictable solutions, with a reasonable expectation of success.

6 Known work in one field of endeavors may prompt variations of the known work for use in either the same field or a different field, based on design incentives or other market forces, if the variations would have been predictable to one of ordinary skill in the art.