Section 103: Nathenson’s suggested order of nonobviousness analysis

1. Determine PHOSITA (I put this first, book at p. 290 puts it third):

  • Determine this before determining prior art because nature of PHOSITA determines what prior art will be pertinent!
  • Ordinary person with skills in that field.  Depending on field might be a plumber or might be a rocket scientist with PhD.
  • The more highly qualified you define PHOSITA, a greater amount of prior art will be relevant, and the patent is  more likely barred by obviousness!!!
  • Example: Ball hypo.
    • Think PHOSITA is football coach. Not too much prior art.
    • What if PHOSITA is an engineer with specialty in sports and mechanical engineering?  Much more prior art!

2. Determine scope/content of prior art.  

  • Consider prior art that is reasonably pertinent to PHOSITA in light of the nature of the problem.

3. Determine differences between prior art and patent

  • Is new stuff missing in prior art?
  • Is new stuff the combining of references from prior art?
  • A combination of both?

4. Based on the above, determine obviousness   

  • Basic analysis of step # 4:
    • Were all elements and reason to combine already known by PHOSITAs?
    • Is there some teaching, suggestion, or motivation in the prior art that would encourage combination of references?
    • Would invention have come anyway in ordinary course?
  • Also look to secondary considerations (economic/motivational) that have nexus to the claimed invention:
    • Commercial success
    • Long-felt but unresolved need
    • Failure of others
    • Copying
    • Unexpected results
    • Skepticism of experts
    • Licensing/acquiescence by others
    • Adoption by industry

Posted June 20, 2017