© 2003, Dawsey Co., LPA
October 2003

Rejections based on obviousness are among the most difficult for inventors and patent attorneys to deal with. The reason lies in the vagueness of the statute itself. A claimed invention is unpatentable due to obviousness if the differences between it 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.” 35 U.S.C. § 103(a). As a result, patent lawyers must struggle to determine how far the creative reach of one skilled in the art may actually extend.

In the recent case Akamai Techs., Inc. v. Cable & Wireless Internet Serv., Inc., the Court of Appeals for the Federal Circuit took the opportunity to point out that this inquiry is subject to factual, and not just speculative, inquiry. These factual inquiries include the scope and content of the prior art, the level of ordinary skill in the field of the invention, the differences between the claimed invention and the prior art, and any objective evidence of nonobviousness such as long-felt need and commercial success. In particular, when a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references. Although the suggestion to combine references may flow from the nature of the problem, the suggestion more often comes from the teachings of the pertinent references, or from the ordinary knowledge of those skilled in the art that certain references are of special importance in a particular field. Therefore, when determining the patentability of a claimed invention which combines two known elements, the court found that “the question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination.”

Secondary Considerations

The court also reiterated that secondary considerations play an important role in determinations of obviousness. These considerations commonly include unexpected results, a combination that is greater than the sum of the parts (synergism), satisfaction of a long-felt demand, and commercial success. In the Akamai case, the court found an infrequent secondary consideration key to rejecting the argument of obviousness: Copying.

The court found that the record showed that the defendants had expended significant effort to determine how Akamai’s products worked, and then altered their product to copy Akamai’s technology. This evidence of copying is relevant to an obviousness determination, as the court noted “The copying of an invention may constitute evidence that the invention was not an obvious one. . . . This would be particularly true where the copyist had itself attempted for a substantial length of time to design a similar device, and had failed.”

A Process for Attacking Obviousness

The findings in Akamai reiterate a good plan for attacking obviousness arguments; begin with a careful examination of any combined references to determine whether or not there is a suggestion in the references themselves that makes the combination reasonable, and then work carefully through all known secondary considerations to build a cumulative case for non-obviousness.