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
- Unexpected results
- Skepticism of experts
- Licensing/acquiescence by others
- Adoption by industry
Posted June 20, 2017