5. Nonobviousness

Unlike the novelty analysis, nonobviousness is not about whether every limitation of a claimed invention was disclosed in a single reference. Instead, the nonobviousness inquiry is a determination of whether the claimed invention would be obvious based on a reference or combination of references. The nonobviousness inquiry is always completed from the view of someone having ordinary skill in the art—in other words, the critical question being asked is whether the claimed invention was obvious to a person having ordinary skill in the art based on the prior art.

As a preliminary matter, it is important to discuss what is considered prior art for the purposes of the nonobviousness analysis. Generally, any reference that qualifies as prior art under 35 U.S.C. § 102 is also prior art for the purposes of a nonobviousness analysis under 35 U.S.C. § 103.

Graham v. John Deere (1966) is probably the most cited patent law case of all time. Like Manning and Lister, Graham involved the issue of newness. Unlike those cases, however, Graham involved an invention that was technically new, in the sense that no one had ever created it before, but yet was not be new enough to constitute a valid patent.

Graham was hardly the first case to involve the issue of non-literal newness, however. Opinions as far back as Hotchkiss v. Greenwood in 1850, which involved the substitution of porcelain for wood or metal in a doorknob when other types of knobs using porcelain were already known, struggled with this question, although it was framed in terms of “invention” rather than “nonobviousness.” Although Hotchkiss was decided more than 170 years ago, its holding is still relevant to the modern nonobviousness inquiry. Hotchkiss held that trivial changes to an invention, such as changing a material or composition, is not an inventive modification and therefore would be considered obvious to someone having ordinary skill in the art. Further, Hotchkiss also states that combining two know elements or inventions also is not considered inventive when there is an obvious reason to do so.

Although the principles from Hotchkiss were consistently used in the nonobviousness inquiry, analyses and outcomes were not particularly consistent. This led Congress to codify the requirement in the 1952 Patent Act, imposing structure on what had become (in the patent bar’s eyes) an arbitrary and unfettered mechanism for invalidating patents.

Graham was the first Supreme Court case to address the nonobviousness requirement added by the 1952 Patent Act. Graham not only affirmed the constitutionality of 35 U.S.C. § 103, but also set forth a framework to guide the nonobviousness inquiry under Graham: (1) the scope and content of the prior art, (2) the differences between prior art and the claims at issue, (3) the level of ordinary skill in the art, and (4) any relevant secondary indicia such as commercial success, long felt unsolved needs, or failure of others.

In the years following Graham, concerns persisted about the nonobviousness analysis. Supreme Court decisions in the 1970’s seemed to apply a high bar for nonobviousness, and circuit courts varied widely in their application of the nonobviousness requirement.

In 1982, Congress created the United States Court of Appeals for the Federal Circuit and granted it jurisdiction over all appeals involving patents including both from the USPTO and the federal district courts. As it sought to develop a more unified and consistent patent law, the Federal Circuit constructed several doctrinal frameworks for analyzing nonobviousness, the most well known of which was a test called the “teaching, suggestion, or motivation” (TSM). Under the TSM test, a claimed invention could only be obvious if there was a teaching, suggestion, or motivation to combine prior art references to arrive at the claimed invention.

The Supreme Court’s opinion in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), both affirmed Graham and addressed changes to the nonobviousness inquiry that had developed in the Federal Circuit over the previous two decades. While KSR rejected the exclusive use of the TSM test to determine obviousness, the Court recognized the need to identify a reason why a person of ordinary skill in the art would have combined references to make the claimed invention.

We will not read Graham, its two companion cases, Calmar, Inc. v. Cook Chemical Co. and United States v. Adams, Hotchkiss, or KSR. Instead, we’ll read a more recent Federal Circuit case analyzing nonobviousness: Apple v. Samsung.