On the Creativity in American Patent Law

The creativity of the United States patent law provides as follows:

　　35 U.S.C.103(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. Patentability shall not be negatived by the manner in which the invention was made.

As mentioned earlier, 35 U.S.C. 103 (a) describes creativity, but the provision does not give a detailed definition of non-obviousness, so further judicial practice is still needed to clarify its requirements. Therefore, the United States Supreme Court in 1966 through the Graham case, identified the four elements of the Gram. The judgment of non-obviousness is a legal problem based on basic facts,(1) determine the scope and content of the existing technology,(2) determine the difference between the application invention and the existing technology,(3) determine the general technical level of the corresponding field,(4) evaluate the supporting considerations as evidence, including commercial success, long-term desire to solve the need, the failure of others, etc. These factors are collectively referred to as the four elements of Gram. After that, the Federal Circuit Court of Appeals (CAFC) further reformed the judgment framework determined by the Supreme Court for the combined invention in the Dennison case, and proposed the judgment method of teaching-revelation-motivation (teaching-suggestion-motivation test), that is, the TSM standard.

In order to determine that an invention is an obvious ordinary technology, there must be a clear and reasonable basis of reasoning to support the obvious legal conclusion. The reasoning basis is also a criterion for determining whether an invention is non-obvious. Compared with the prior art, only one or several technical elements of the invention are replaced, and the functions of the replaced technical elements are known; a person of ordinary skill in the art can implement such replacement, and the technical effect after the replacement is also predictable. In fact, if a person of ordinary skill is able to base on the existing technology. It is obvious to replace the technical elements therein and to predict the technical effect after replacement.

After determining Graham's factual evidence, the specific reasoning steps for rejecting the application's invention on this ground:

a. The difference between the claimed invention and the prior art is only that a technical element in the claimed invention replaces a technical element in the prior art;

B. The replaced technical element and its function are known in the prior art;

c. Those of ordinary skill in the art can realize the replacement of such technical elements based on the existing technology and can foresee the effect of the replacement;

d. Consider together with Graham's other facts to draw the obvious conclusion.

The legal problem encountered in the judgment process is: Is the difference between the granted patent subject matter and the prior art obvious to those skilled in the art?

The issue of non-obviousness is fundamentally a legal issue, but requires some basic fact-finding. S. Supreme Court in 1966 in Graham v. John Deere Co. In the first case, three core factors of the obvious investigation are distinguished:(1) the scope and content of the existing technology;(2) the difference between the existing technology and the claims;(3) the level of skilled personnel in the relevant technical field. Other "ancillary factors", such as the long-term lack of need to implement the invention, the prior failure of others, and the commercial success of the invention, can support the legal conclusion that the technology is non-obvious. Among them, the analysis of (1) and (2) is more clear and easy to reach consensus between different judges, but (3) is more subjective judgment.

The legal problem encountered in the judgment process is: Is the difference between the granted patent subject matter and the prior art obvious to those skilled in the art?

The issue of non-obviousness is fundamentally a legal issue, but requires some basic fact-finding. S. Supreme Court in 1966 in Graham v. John Deere Co. In the first case, three core factors of the obvious investigation are distinguished:(1) the scope and content of the existing technology;(2) the difference between the existing technology and the claims;(3) the level of skilled personnel in the relevant technical field. Other "ancillary factors", such as the long-term lack of need to implement the invention, the prior failure of others, and the commercial success of the invention, can support the legal conclusion that the technology is non-obvious. Among them, the analysis of (1) and (2) is more clear and easy to reach consensus between different judges, but (3) is more subjective judgment.

However, in April 2007, the U.S. Supreme Court reviewed the "non-obviousness" again in KSR v. Teleflex, challenging the TSM standard, arguing that CAFC's too strict adoption of TSM test method instead of resorting to common sense was not only unnecessary, but also violated the Graham standard previously established by the Supreme Court. Because in many cases, although the binding behavior is very obvious, it is very difficult or even impossible to prove the binding. For example, if the claim appears in the field of emerging technology or the combination is so obvious to those skilled in the art that no one has time to record or believes that it is necessary to record minor changes in the technology of such a combination, this definitive evidence may be very difficult to obtain.

The KSR case relegated the TSM test that the U.S. Court of Appeals for the Federal Circuit had long insisted on combining prior art literature to a secondary or optional position, reaffirmed the Graham standard, and reintroduced the concept of "obvious to try" as an appropriate consideration in the determination of obviousness, thus significantly changing the method of determining obviousness by the TSM test. The Supreme Court of the United States restricted the application of the TSM test, which is very clear, in favor of the less objective standards of "common sense" and "ordinary creativity", thus increasing the difficulty of predicting the validity of patents and the patentability of new inventions.

After the KSR case, in Takeda v. Alphapharm, the United States Court of Appeals for the Federal Circuit held that in cases involving new chemical compounds, in order to confirm whether the new compound has the obviousness of satisfying 'prima facie evidence', it is still necessary to determine what specific reasons led the researcher to modify the known compound in a specific way, therefore, the defendant (or examiner) is required to explain (or confirm) what specific reasons prompted it to change the existing technology in order to reach the new claimed structure. Although the defendant argued that the decision in the case was contrary to the decision in the KSR case and therefore repeatedly requested review by the United States Supreme Court, the United States Supreme Court denied the application for review. This seems to indicate that the TSM standard is still valid for new compounds, at least in the chemical domain. The Takeda case shows that, at least in the field of chemistry, important new structural rearrangements are not obvious if it cannot be proved that such new structural rearrangements were inspired by the prior art. As a result, many believe that the non-obviousness criteria established by the U.S. Supreme Court in the KSR case will be used more in areas of predictability, such as machinery.

After nearly two years of practice, the United States Patent and Trademark Office in the patent examination of the KSR case established in the use of creative standards have gradually emerged, examiners more often in the claims of the various technical features have been disclosed, only based on common sense rather than specific literature assertion that the combination of the technical features is obvious. In the Smith case, the patent committee responsible for the case held that if the claimed combination of old elements can only produce foreseeable results, the combination is likely to be obvious. In addition, "because the court will consider the derivation and innovation made by ordinary technicians in the relevant field, it is not necessary to find the corresponding exact teaching content according to the specific content of the claim." However, the Patent Committee also pointed out that the existence of obviousness cannot be found in a conclusive statement alone, thereby denying the grant of a patent. On the contrary, a detailed factual finding of obviousness should be made.