Obviousness and A Reasonable Expectation of Success

Obviousness is a legal standard used to assess the patentability of an invention. An invention is deemed obvious and, therefore, not patentable if a person of ordinary skill in the art (PHOSITA) considers the invention obvious, given common knowledge and the available prior art references.

This standard, defined in the U.S. in Section 103 of the Patent Act (35 U.S.C. 103), is mirrored in patent laws worldwide, including the European Patent Convention and the Japan Patent Act.

The prior art references may encompass knowledge, publications, patents, and products publicly available before the invention's filing date. The concept of a PHOSITA is intended to encompass the skill and knowledge of a person in the relevant technical field at the time of the invention's filing.

In an obviousness assessment, the USPTO and the court will evaluate the scope and content of cited prior art, the differences between the cited prior art and the claimed invention, and the ordinary level of skill in the art of the invention. Obviousness rejections may be based on a single prior art reference or a combination of multiple references.

When an obviousness rejection is based on a combination of multiple prior art references, there must be a motivation to combine these references and a reasonable expectation of success for that combination of references.

The Federal Courts and the USPTO have held that the motivation to combine multiple prior art references does not need to be explicitly stated in these references. Instead, it can be inferred from the knowledge, creativity, and common sense of the person of ordinary skill in the art.

In Sisvel v. T.C.T. Mobile and Honeywell, the Federal Court clarified that the expectation of success requirement must be reasonable, not absolute. As such, obviousness does not require a guarantee or certainty on the part of the PHOSITA that the combination of prior art references will be successful.

The Sisvel decision also highlighted that what constitutes a 'reasonable' expectation of success may vary across different fields of art. This suggests that the bar for establishing a reasonable expectation of success will be higher or lower depending on the predictability and maturity of the technical field in question.

Specifically, in fields where the underlying principles are well-established, and outcomes are more predictable, a lower level of explicit guidance in the prior art may be sufficient to establish a reasonable expectation of success. In contrast, in fields where the behavior of complex systems is less predictable and outcomes are more uncertain, a higher level of specificity and experimental validation in the prior art may be necessary to meet the requisite reasonable expectation threshold.

How TCP Law Can Help

Effectively navigating patent rejections is essential for securing and maintaining patent protection. Each type of rejection presents unique challenges, but understanding them can 

facilitate strategic responses. A TCP Law patent attorney can help you understand these rejections and guide you in responding to them.

For assistance with responding to an obviousness rejection or with any other patent issue, please contact TCP Law at info@tcplawfirm.com or 917-612-1059.