Читать книгу Intellectual Property Law for Engineers, Scientists, and Entrepreneurs - Howard B. Rockman - Страница 98

It is apparent from the preceding comments that a determination of whether your novel and useful invention would ultimately be declared as non‐obvious over the prior art, and therefore worthy of a patent, is one that is not easily arrived at. Therefore, one of the services that you should solicit when engaging a patent attorney is that the patent attorney carefully look at all of the related prior art and provide you with an opinion about whether your invention is both novel and unobvious. You should ensure that any report on patentability that your attorney submits to you includes an analysis of the question of non‐obviousness as well as novelty. It would not be wise to spend the time and money to prepare a patent application where there is a high risk that the USPTO will reject the application on grounds of obviousness. Do not try this at home—leave it to the professionals!

Having said all of this regarding the fitful test of non‐obviousness, I feel it prudent to provide you at this point with a hypothetical example illustrating how a determination of non‐obviousness works through one’s thought processes. Assume that someone invents a general‐purpose, programmable, digital computer, and that this computer is colored green. The inventor files a patent application claiming a green digital computer. Assume also that the physical structure of the computer is old in the art, but never had a computer been colored green before, and that there is not a single prior art reference or patent showing a green computer. Consider also that dozens of other colors and shades in the visible spectrum were used as colors for the same kind of computer.

The first question is whether the claimed green computer is novel over the prior art. This determination must be made first, because the question of unobviousness becomes moot if there is no novelty. In this particular situation, the green computer is novel, since it is not identically described in any single item of prior art. For purposes of our analysis, a green computer must be considered structurally different from a computer of any other color. Therefore, it is now appropriate to examine the “green” technology embodied in this computer to determine whether it is an unobvious advance over the prior art.

At first glance, you may determine that using the color green surely would be obvious as compared to computers using all the other colors of the visible spectrum. However, further analysis in my hypothetical may show that this answer is not correct. For example, given the same set of facts assume that, when the computer is green, the frequency band of the green color serves to absorb and concentrate ambient cosmic and ultraviolet rays that, in combination, change the static electrical charge in all of the components of the computer, including the conductive and semi‐conductive elements in the computer. As a consequence, all the electrical and electronic operations are speeded up by a factor of 1.2, wherein the computer literally operates 1.2 times as fast, and also is possibly 1.2 times more valuable than a computer that is not colored green. Given all of these new and unexpected results of using a green computer, the subject invention also passes the test of non‐obviousness, since no one else has ever used the color green to obtain these results in a computer.

The preceding example points out the fact that no structural or functional difference between your invention and the prior art may be ignored in determining questions of novelty and unobviousness. The differences may be slim; however, the subject matter as a whole may still be unobvious over the prior art to a person of ordinary skill in the relevant technology.