Subject: Day 10 Self Study Course:  

summarized by Tatsuo Yabe








Chapter 11 continued:

Pages 544 to 596


E. Obviousness


35 U.S.C. 103(a)


Graham v. John Deere ( Sup Court 1966)


1.       The Scope and Content of the Prior Art


Hindsight is not Permitted


Analogous Arts


Hypothetical Person Knows All the Art


Patenteefs Rebuttal Evidence


1.       Motivation to combine

2.       Reference Teaches Away from the Claimed Invention

3.       Section 103(c)


2.       The differences Between Prior Art and Claimed invention


3.       The Level of Ordinary Skill in the Art


4.       Objective Evidence of Obviousness


KSR v. Teleflex Inc.

Sup Court 2007


Teleflex – Patentee

KSR – Accused Infringer


35 U.S.C. 103


Graham v. John Deere


District Court

Fed Cir


United States v. Adams ( Sup Court 1966)


Anderson fs-Black Rock v. Pavement Salvage (Sup Court: 1969)


Sakuraida v. Ag Pro (Sup Court: 1976)


DyStar v. C.H. Patrick Co. (Fed Cir 2006)




F. The Specification is Inadequate


35 U.S.C. 112


1.       Best Mode Requirement


Chemcast Corp v. Arco Indus. (Fed Cir 1990)

Skip pgs 571 to 580


2.       Enablement Requirement


In re WANDS (Fed Cir 1988)


3.       Written Description Requirement


Gentry Gallery Inc. v. Berkline Corp (Fed Cir 1998)


4.       Definiteness


Datamize LLC v. Plumtree Software (Fed Cir 2005)









E. Obviousness


35 U.S.C. 103(a):

Conditions for patentability; non-obvious subject matter


(a)    A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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.


Raising obviousness as a patent infringement defense, Def must prove by clear and convincing evidence that the prior art renders the claimed invention obvious to one skilled in the art.


The Q of obviousness is a Q of law. However, the underlying factors in the obviousness inquiry are factual Qs.  Thus, obviousness is a Q of law based on underlying facts.


à Judge versus Jury: Who should decide the Q of Obviousness?

Petition for a writ of certiorari filed August 13, 2009 (requesting a review by the U.S. Sup Court ) in MEDELA AG v. KINETIC CONCEPTS) see more details at


Fed Cir will review a juryfs obviousness finding by presuming that the jury found facts in favor of their verdict and then consider de novo whether the patent is obvious.


Graham v. John Deere ( Sup Court 1966)


This court articulated the test for obviousness. To determined whether a patented invention is obvious or not, the court must determine:


(i)                   the scope and contents of the prior art;

(ii)                 the difference between the prior art and the claims at issue;

(iii)                the level of ordinary skill in the pertinent art; and

(iv)                the objective or secondary consideration tending to prove obviousness or non-obviousness.


1. The Scope and Content of the Prior Art


Basically, all of the prior art under the section 102, except the art under 102(c) and 102(d), are available references for obviousness test.


Hindsight is not Permitted

Most inventions are a combination of old elements.  The more references that need to be combined to yield the claimed invention, the less likely that the invention is obvious.


Analogous Arts


Hypothetical Person Knows All the Art

Pretend that the hypothetical person has all of the prior art references taped up on the wall in front of him when he is determining if an invention is obvious. 


Patenteefs Rebuttal Evidence


1.       Motivation to combine

KSR v. Teleflex has rejected a bright-line requirement for motivation to combine, although the Court acknowledged that such a motivation is still relevant in assessing the obviousness.

2.       Reference Teaches Away from the Claimed Invention

A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.

3.       Section 103(c)

The patentee can argue that the section 102(e), (f), or (g) prior art owned by the same person or the same corporation at the time of invention is not available as prior art for obviousness purpose.


2.       The differences Between Prior Art and Claimed invention


3.       The Level of Ordinary Skill in the Art

The patentee wants to prove that the level of ordinary skill in the art is low whereas the accused infringer wants to prove that the level of skill in the art is high.


4.       Objective Evidence of Obviousness

-          (i) commercial success of the invention; (ii) long felt need for the invention; (iii) failure of others; (iv) licenses showing industry respect for the invention; (v) skepticism by others in the filed that the invention would work;c.

-          The patentee must demonstrate ea nexusf between the commercial success and the patented invention for commercial success to be relevant to the obviousness determination.

-          Def (accused infringer) may want to show that the commercial success of the invention was due to advertising and marketing or a feature of the invention other than the patented one.


KSR v. Teleflex Inc.

Sup Court 2007


Teleflex – Patentee

KSR – Accused Infringer (a Canadian company, manufactures and supplies auto parts, including pedal systems and was chosen by GM to supply adjustable pedal systems for Chevrolet and GMS light trucks that used engines with computer-controlled throttles).


35 U.S.C. 103


Graham v. John Deere


District Court:

-          Granted summary judgment in KSRfs favor. Found Claim 4 obvious in light of the prior art.

-          Found that Asano reference taught all the elements recited in Claim 4 except the use of a sensor to detect the pedalfs position and transmit it to the computer controlling the throttle.

-          Held KSR had satisfied the TSM test.  It reasoned that the state of the industry would lead inevitably to combinations of electronic sensors and adjustable pedals.

Fed Cir:

-          Relying heavily on the TSM test, the court reversed the District Court ruling.

-          Ruled that the District Court did not apply the TSM test strict enough.


Sup Ct:

-          rejecting the rigid approach of the Fed Cir;

-          The Sup Ct has held that a patent for a combination which only unites old elements with no change in their respective functionsc.obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful man.  Great Atlantic v. Supermarket Equipment (1950).  This is a principal reason for declining to allow patents for what is obvious.


Three cases decided after Graham illustrated the application of this doctrine.


United States v. Adams ( Sup Court 1966)

-          the Court considered the obviousness of a gwet batteryh using water instead of the acids and the electrodes made of different materials.

-          When a patent claims a structure that was already known in the prior art that was altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.

-          Corollary principle: When the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be non-obviousness.


Anderson fs-Black Rock v. Pavement Salvage (Sup Court: 1969)

-          the Court considered the obviousness of a device combining two pre-existing elements: a radiant burner and a paving machine.

-          The Court concluded that the device did not create some new synergy.

-          The two in combination did no more than they would in separate, sequential operation.

-          While the combination of old elements performed a useful function, it added nothing to the nature and quality of the radiant-heat burner already patented.


Sakuraida v. Ag Pro (Sup Court: 1976)

-          the Court concluded that when a patent simply arranges old elements with each performing the same function it had been known to perform, and yields no more than one would expect from such an arrangement, the combination is obvious.


The Fed Cir applied the TSM test too rigidly.


The question is not whether the combination was obvious to the patentee (as Fed Cir considered) but whether the combination was obvious to a person with ordinary skill in the art.


Common sense teaches that familiar items may have obvious uses beyond their primary purposes.


A person of ordinary skill is also a person of ordinary creativity, not an automaton.


When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his technical grasp.


Fed Cir was right in applying the TSM test in DyStar v. C.H. Patrick Co. (Fed Cir 2006), but this decision is not now before the Sup Court and do not correct the errors of law made by the Fed Cir in this case.  In DyStar, Fed Cir said gThere is flexibility in our obviousness jurisprudence because a motivation may be found implicitly in the prior art.  We do not have a rigid test that requires an actual teaching to combinech


The District court was correct to conclude that it was obvious to a person of ordinary skill to combine Asano with a pivot-mounted pedal positioning sensor at the time the subject matter in claim 4 was made.


In automotive design, as in many other fields, the interaction of multiple components means that changing one component often requires the others to be modified as well.  Technological developments made it clear that engines using computer-controlled throttles would become standard.


Teleflex has not shown anything in the prior art that taught away from the use of Asano.


Teleflex has not shown secondary factors to dislodge the determination that claim 4 is obvious.


Proper application of Graham and the Sup Ct fs other precedents to the facts leads to the conclusion that claim 4 is obvious under the section 103.





F. The Specification is Inadequate


35 U.S.C. 112


(1st paragraph)

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.


(2nd paragraph)

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.



5.       Best Mode Requirement


Chemcast Corp v. Arco Indus. (Fed Cir 1990)


Claim 6 of USP4081879 (e879 Patent) is the only claim in suit. 


Claim 6: 

The grommet as defined in claim 1, wherein the material forming said base portion has a durometer hardness reading of less than 60 Shore A and the material forming said locking portion has durometer hardness reading of more than 70 Shore A.


District Court:  Held that Claim 6 of the USPf879 was invalid as failing to comply with the best mode requirement under 112(1).


Fed Cir disagreed to the reasoning of the District Ct fs finding of non-compliance of the best mode requirement.


Fed Cir says that the focus must be that (i) the inventor knew of and (ii) concealed a better mode than he disclosed.


Fed Cir goes on to say that a proper best mode analysis has two components:

-          first is whether, at the time the inventor filed his patent application, he knew of a mode of practicing his claimed invention that he considered to be better than any other. 


This inquiry is wholly subjective.


-          Second part of the analysis is whether the disclosure adequate to enable one skilled in the art to practice the best mode.  This inquiry is largely objective and depends upon the scope of claimed invention and the level of skill in the art.


Fed Cir has said that the best mode requirement was violated in the most cases where an inventor failed to disclose non-claimed elements that were nevertheless necessary to practice the best mode of carrying out the claimed invention.


Here there is no dispute that the inventor did not know the precise formula, composition, or method of manufacturing of R-4467, the section 112 obligated the inventor to disclose the specific supplier and trade name of his preferred material (the claimed grommet) to the extent  that the inventor had known.


An inventor need not disclose manufacturing data if that information is not part of the best mode of practicing the claimed invention, but the converse also is true.


If the information is part of the best mode of practicing the claimed invention, regardless of the nature of the information, i.e., even a trade secrets, the information must be disclosed.




(i)                   Why do inventors not want to disclose their best mode?

(ii)                Hiding or burying the best mode:

Fed Cir allowed to list several modes which include the best mode without identifying which one is the best mode.  Randomex v. Scopus (Fed Cir 1988)

(iii)              Later discovered better modes:

The best mode at the time of filing an application must be disclosed.

(iv)               Production vs. manufacturing details:

(v)                 Claims determine what must be disclosed:

The best mode does not require an applicant to disclose a non-claimed element of the invention when the element is not necessary to the operation of the claimed invention.  Applied Med. Res v. U.S. Surgical Corp (Fed Cir 1998)

(vi)               Company is aware of a better mode:

Fed Cir held that the test for best mode is subjective and based on what the inventor knew at the time of filing the application, not the best mode having contemplated by the inventorfs company.



6.       Enablement Requirement


In re WANDS (Fed Cir 1988)

Skip pgs 571 to 580



7.       Written Description Requirement


To fully identify what is claimed, the patent application is required to include a clear and concise written description.  The description may be embodied in attached drawings and diagrams or the original claims.  In the past, the written description requirement under 112(1) was used to prohibit the applicant from adding new matter to an original application.  However, in the recent years, the Fed Cir has expanded the historical rile of the written description requirement, as shown in the following case.


Gentry Gallery Inc. v. Berkline Corp (Fed Cir 1998)


Gentry Gallery: an owner of USP5064244

Berkline: accused infringer


US 5064244  (A)

A sectional sofa having one sofa section that includes a pair of reclining seats that are separated by a console on which push button controls are mounted that separately control the movement of the reclining seats from the upright to the reclined positions.

  First page clipping image


Claim 1 does not limit the location of the control means (buttons 34 & 36).  However, there is an only one embodiment, showing the control means being located on the center console 24. It is true that a claim need not be limited to a preferred embodiment.  However, in this case, the scope of the right to exclude may be limited by a narrow disclosure. 


Gentry relied on In re Rasmussen in which it was decided that a broad scope of claim gadheringly applying one layer to an adjacent layerh was admitted.  However, in Rasmussen, one skilled in the art would clearly understand that it is not important how the layers are adhered, so long as they are adhered.  However, in this case, one skilled in the art would clearly understand that it was not only important but essential to Sproulefs (Gentryfs) invention, for the controls to be on the console.


Here, Sproulefs (Gentryfs) disclosure clearly limited the location of the controls to the console.  Thus, the district court clearly erred in finding that Gentry is entitled to claims in which the recliner controls are not located on the console.


The Fed Cir, therefore, reverse the judgment by the district court that claims were not shown to be invalid (The Fed Cir believes claims are shown to be invalid).



Fed Cir granted En Banc Review on gWritten Description Requirementh. 

Aug 21, 2009

Ariad Pharmaceuticals, MIT, and Harvard v. Eli Lilly.

The Fed Cir has granted Ariadfs motion for an en banc hearing of its case.  The motion boldly asks whether the written description requirement should be eliminated as a doctrine that is separate and distinct from enablement.  The questions are:


a. Whether 35 U.S.C. ? 112, paragraph 1, contains a written description requirement separate from an enablement requirement? and


b. If a separate written description requirement is set forth in the statute, what is the scope and purpose of the requirement?





(i)                   Many believe that the Gentry Gallery case dramatically expanded the scope of the written description requirement when it held a genus claim for a simple mechanical invention was invalid for failure to disclose each possible species in the original specification.


Even the Fed Cir is split on the nature of the written description requirement.  See Lizardtech v. Earth Res. Mapping Inc. (Fed Cir 2006).  In Lizardtech, judge Rader says gThis courtfs written description jurisprudence has become opaque to the point of obscuring other areas of this courtfs law.h


(ii)                 Enablement requirement is independent requirement from Written Disclosure requirement.  Thus, satisfying the enablement requirement does not automatically satisfy the written description requirement.  Note that for enablement, the patent need not disclose things that one skill in the art would already know. The same is not necessarily true for written description.


(iii)                Note that those claims held invalid under 112(1) (efailure to meet the written description requirementf) were added after the original filing date, when the patentee saw a competitorfs product that has controls other than on the console.  If these claims had been present in the originally filed application, would the patent still be invalid for failure to satisfy the written description requirement?  (see pg 588)




8.       Definiteness


Datamize LLC v. Plumtree Software (Fed Cir 2005)


The issue at Fed Cir is the definiteness of the claimed limitation gaesthetically pleasingh as it is used in the context of claim 1 of USP6014137.


Fed Cir concludes that gaesthetically pleasingh, as it is used in claim 1 of the e137 patent, fails to gparticularly point out and distinctly claim the subject matter which the patentee regard as his invention.h Under 112 (2).  Thus, Fed Cir affirmed the district courtfs grant of summary judgment of invalidity of all claims of the e137 patent.             



Problems: (pg 596)

Problem 2.


Ms. Smithfs invention: A new type of chain for use on a bicycle.

Spec: one preferred embodiment in which the new chain is used on a bicycle.

Claim:  A bicycle with two wheels, comprising the new chain, pedals, a seat, and handle bars.


Novelty Bikes selling tricycles, unicycles, and tandem bikes using Ms. Smithfs patented chain.


How would you advise Ms. Smith?




(a)     Broadening Reissuecpossible?

(b)     How the claim was drafted?  Transitional phrasecopen ended?

(c)     DOE applicable?  File historycany narrowing amendments?


Defenses available to Novelty Bikes?

@       112 (1) – best mode X; written description requirement under Gentry Gallery?; enablement?

A       112 (2) –X




(a)     A broadening reissue is possible if it is still within 2 years from the issuance date. 

-          freedom of claim amendment during the reissue application process?

@        So long as clear support exists in the original spec, the amendment may be done.


(b)     How the claim/spec was drafted? 

-          Is the transitional phrase open ended?

-          Preamble is not limiting (one of the canons for claim interpretation);

-          No specific emphasis on the use of the chain on bicycle in the spec?  Advantage rule.


(c)     DOE applicable?

-          DOE coverage:

@        Graver Tank: 3 way-test (function, way, result)

A        Wilson sporting goods: Hypothetical claim to determined proper scope of DOE;

B        Johnson and Johnston: Disclosed but unclaimed subject matter


-          File Wrapper Estoppel?

@        Philips v. AWH (reliance on intrinsic evidence)

A        Warner-Jenkinson: narrowing amendment without reason – No DOE

B        Festo: narrowing amendment for the reason of patentability – No DOE

Rebutting presumption – i) unforeseeable; ii) tangential relation; iii) others

C        ccc


(d)     Other considerations:

-          Defense available by Novelty Bikes

@        112(1) best mode Req.?

A        112(2) enablement Req.?

B        112(3) written description requirement based on Gentry Gallery

C        112(2) definiteness Req.?

Problem 3. (pg 596)


Rob designed a new videophone while working for BIG company. 

BIG is the assignee of the USP5,000,000 patent claiming the videophone.


Dec 01, 1997, the U.S. patent application was filed.

Jan 01, 1999 , the U.S. Patent 5,000,000 was issued, with Claims broadly covering the use of any imaging chip in the videophone.  The specification of which discloses only the RC imaging chip in the preferred embodiment.


You are attorney for RC Electric Company.  BIG has sued RC for patent infringement arguing that RCfs videophone which uses the RC imaging chip infringes the USP5000000 Patent.



During the discovery, two memos were discovered:


A first memo: Linda to BIGfs president June 15, 1997

The videophone worked better with a DAX BIG imaging chip rather than the RC imaging chip being used by Rob. The memo ccfd Rob.


A second memo: Bigfs president to Linda June 16, 1997

Instructing Linda not to communicate any of her observation to Rob and to start working on a commercial prototype using the superior DAX BIG chip right away.



The test result by Linda during Sep 1997 confirmed that the DAX BIG chip would work better with the videophone.  BIG had the product ready for mass production by Dec 1998 (Christmas time).



Deposition of Rob:

Rob says that he received the memo (1st memo) from Linda but he disagreed with her claim that the DAX BIG chip would work better.  Rob says that the DAX BIG chip would work at all and that he thought it would require a massive design change of his videophone to use the chip.


As of June 1997, Rob believed the only chip that would not work was the RC chip. However, after seeing BIGfs commercial product using the DAX BIG chip, Rob agrees that it is superior to the RC chip.


Do you have any 112 defense?




112(1) best mode requirement defense available?

The issue is whether Rob knew the better mode than what is disclosed in the application, on or before December 01, 1997 (filing date of the application)?


(a)     Subjective belief by Rob about his only workable mode (ebest modef) enclosed in the US Application?

(b)     Robfs knowledge of Lindafs idea that DAX BIG worked better before filing the application.  Does this affect the defense?

(c)     Companyfs knowledge before filing the application that the DAX BIG worked better.  Does this affect the defense under 112(1)?


      112(1) written description requirement defense?

Seems it is possible to rely on Gentry Gallery as claim is broad but the spec only discloses one embodiment.


      112(1) enablement requirement defense?

- not enough facts to determine if this defense is possible or not.


      112(2) definiteness requirement defense?       

- not enough facts to determine if this defense is possible or not.