1. Intellectual Property
Boston College Law School
February 18, 2009
Patent – Nonobviousness

2. Requirements (1) Patentable Subject Matter (2) Novelty (3) Utility
(4) Nonobviousness
(5) Enablement

3. Nonobviousness
35 U.S.C. § Conditions for patentability; non-obvious subject matter.
“A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 … if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains …”

4. Nonobviousness Factors in the analysis
(1) Scope and content of prior art
(2) Differences between invention and prior art
(3) Level of ordinary skill in the art
(4) “Secondary considerations”
Commercial success
Long-felt but unsolved needs
Failure of others to invent
Copying by others

5. KSR v. Teleflex

6. In re Dembiczak

7. Problem 3-10 Claimed invention Prior art references
Lollipop in shape of human thumb
Wrapped in a mold that can be worn
Contains gum inside lollipop
Prior art references
Siciliano: ice cream wrapped in a removable mold
Copeman: lollipops in various molds usable as balloons
Harris: hollow, thumb-shaped lollipop
Webster: chewing gum enclosing liquid syrup

8. Nonobviousness Secondary considerations Commercial success
Long-felt but unsolved needs
Failure of others to invent
Copying by others

9. Requirements (1) Patentable Subject Matter (2) Novelty (3) Utility
(4) Nonobviousness
(5) Enablement

10. Enablement 35 U.S.C. § 112. Enablement
“The specification shall contain a written description of the invention and of the manner and process of making and using it, in such full, clear, concise and exact terms, as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

11. Approval Process File application w/ PTO
Review by PTO for patentability
Back and forth between applicant and PTO
Publication of some patent applications
Issuance or rejection of patent
Appeal to review board, CAFC
Reexamination procedure

12. Sample Patent

13. Edison Sawyer & Man claim
(1) An incandescing conductor for an electric lamp, of carbonized fibrous or textile material …

14. Enablement 35 U.S.C. § 112. Enablement
“The specification shall contain a written description of the invention and of the manner and process of making and using it, in such full, clear, concise and exact terms, as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

15. Gentry Gallery v. Berkline
A sectional sofa comprising: …
a pair of reclining seats disposed in parallel …
a fixed console disposed in the double reclining seat section between the pair of reclining seats …
and a pair of control means, one for each reclining seat; mounted on the double reclining seat sofa section

16. Berkline Sofa

17. Administrative Next Assignment Read IV.C.1 and 2
Into IV.C.3 – Doctrine of Equivalents
Through Festo