Understanding Obviousness: Different Test Standards

For an invention to be patentable, it must meet the requirement of “non-obviousness.” In the general term, an invention is not obvious if the invention is not obvious to a “person having ordinary skill in art.” But is there a systematic way in which we can check the obviousness of the patents? Luckily, there are two tests that are generally used in the United States to check the obviousness of an invention and I will briefly introduce these two tests to bring into perspective what are the general expectations for meeting the “non-obviousness” requirement and how the court makes its decision when disputes occur.

The first test is Teaching-suggestion-motivation test. This requires that there be a suggestion or teaching in the prior art to combine elements shown in the prior art in order to find a patent obvious. To illustrate how this works, I will use the arm-chair example we discussed in class. If there is a prior patent on the arm table and as well as on the chair, the invention of arm-chair will not be considered obvious unless there is a suggestion from prior publications that the arm-table and arm-chair could be combined.  This sets a very high hurdle for obviousness determination because it cannot be possible for prior inventors to list all possible combinations of their inventions. To take this example to extreme, if Alice has invented a wooden pencil, Angela else has invented the red color paint, and there is no prior suggestion that these two inventions can be combined, Bob’s invention of red pencil (painting the wooden pencil with red paint) would in fact pass the “non-obviousness” test.

Another test commonly used is Graham factors. According to the Wikipedia, Graham factors held that obviousness should be determined by looking at: 1. the scope and content of the prior art;2. the level of ordinary skill in the art; 3. the differences between the claimed invention and the prior art; and 4. objective evidence of nonobviousness.  In addition, the court outlined examples of factors that show “objective evidence of nonobviousness.” They are: 1. commercial success; 2. long-felt but unsolved needs; and 3. failure of others. The Graham factors are more flexible than the Teaching suggesting-motivation test, but unfortunately they are also much more arbitrary. In fact, I think “Obviousness” is inherently an arbitrary concept just as the idea of patent itself. Thomas Jefferson promoted patent laws on utilitarian economic concern of promoting technological innovation. Ultimately, it all comes to the judge’s decision on whether an invention deserves to be recognized.