In order to reject claims in a patent application for obviousness, a patent examiner must first make a factual based prima facie case as to why the claimed invention as a whole is obvious over the prior art. The examiner must make this determination from the viewpoint of one of ordinary skill in the art at the time the invention was made, while disregarding any hindsight gained from the disclosure of the patent application being examined.
The starting point in every obviousness analysis is set forth in Graham v. John Deere. These include the steps of:
1) Determining the scope and content of the prior art;
2) Determining the differences between the claimed invention and the prior art;
3) Considering the level of ordinary skill in the art; and
4) Taking into account any secondary indicia of nonobviousness including commercial success, long felt but unsolved needs; copying; and the failure of others.
The USPTO guidelines recognize seven approaches for establishing a prima facie case for obviousness including whether:
1) The prior art teaches, suggests or motivates one of skill in the art to modify and/or combine the prior art in order to arrive at the claimed invention (TSM test);
2) Combining the prior art elements according to known methods yields a predictable result;
3) A simple substitution of one known element for another yields a predictable result;
4) Using a known technique for improving similar devices, methods, or products in the same way;
5) Applying a known technique to a known device, method, or product ready for improvement yields a predictable result;
6) It is obvious to try, e.g. choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; and
7 Known work in one field of endeavor prompts variations for use in either the same field or a different field based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art.
If the examiner fails to establish a prima facie case, the applicant is not required to submit any evidence of nonobviousness but instead, should argue the reasons why the prima facie case fails.
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