Obviousness Can be Based Upon a Single Prior Art Reference, but…

Linda Chan, Paralegal

Recent decisions by the Federal Circuit have ruled that obviousness under 35 USC 103 can be based upon a single prior art reference. While anticipation rejections under 35 USC 102 have always been able to rely a single prior art reference that, within its four corners, discloses all of the elements recited in a patent claim, historically obviousness rejections usually required more than one reference. In fact, obviousness rejections were traditionally used when a single reference did not disclose all of the claim elements, and two or more prior art references must be combined to provide all of the elements, obviousness is the normal route to establishing unpatentability.

In some cases, obviousness has been found where only a single prior art reference, which didn’t disclose all of the claim elements, was cited, and “common sense” was cited to provide the missing element(s). In such cases, the Federal Circuit has ruled that the application of common sense requires explicit and objective support. In its decision in Arendi v. Apple, 832 F.3d 1355, 1363, 119 USPQ2d 1822, 1827 (Fed. Cir. 2016), the Federal Circuit stated: “[W]e conclude that while ‘common sense’ can be invoked, even potentially to supply a limitation missing from the prior art, it must still be supported by evidence and a reasoned explanation. In cases in which ‘common sense’ is used to supply a missing limitation, as distinct from a motivation to combine, moreover, our search for a reasoned basis for resort to common sense must be searching. And, this is particularly true where the missing limitation goes to the heart of an invention.”

In In re Stepan Co., 660 F.3d 1341 (Fed. Cir. 2011) the court stated that: “Absent some additional reasoning, the Board’s finding that a skilled artisan would have arrived at the claimed invention through routine optimization is insufficient to support a conclusion of obviousness.” In that case, the Patent Trial and Appeal Board failed to explain their reasoning for applying a single prior art reference how a person of ordinary skill in the art, applying common sense, could extend the teachings of that single reference to arrive at the claimed subject matter. According to the Federal Circuit in Stepan, “Under Title 35, examiners must explain obvious rejections with findings that includes facts as to how a person of ordinary skill would have understood prior art teachings.”

To sum up, obviousness of a patent claim can be established with only a single prior art reference being cited, but if common sense is cited to extend the teachings of that single reference, there must be an explanation, supported by explicit and objective evidence, provided. The burden of establishing obviousness, when a single reference is cited along with “common sense”, is on the one asserting that the patent claims are unpatentable for obviousness, and not on the applicant or patentee.

Section §101: Abolish This Troubling Statute in Patent Law?

Section §101: Abolish This Troubling Statute in Patent Law?

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

35 U.S.C. 101 (Section §101)

As we’ve discussed before, Section 101 is one of the most basic and yet has become one of the most troubling statutes in patent law. While at first glance §101 appears broad, the “judicial exceptions” established in Bilski and expanded upon in Mayo, Myriad, and Alice have greatly limited what judges, (and as a result examiners) regard as patentable subject matter and not simply as “abstract ideas”. Determining what counts as “abstract ideas” has become so exceedingly difficult that some commentator have argued that the patent system is now broken.

Recognizing the predicament that many patent lawyers and patent owners now find themselves in, Dave Kappos, the former director of the USPTO, has proposed a rather eloquent solution to the §101 conundrum: simply drop §101 from the books. Speaking at a Federal Circuit Judicial Conference, Kappos called for Congress to “to abolish Section §101.” Kappos pointed out that many countries, including countries in Asia and Europe, do not have parallel provisions and yet “seem to be doing just fine in constraining patent-eligible subject matter”. To be fair, Kappos is not the first to suggest that §101 be abolished. Similar arguments were made by Eli Lily Co. in an Amicus brief for Ariosa v. Sequenom.

Supporters of abolishing §101 point out that it would help alleviate the mess the Supreme Court has made of software patents.  Furthermore, there is the argument that it makes economic sense. Much of the subject matter deemed unpatentable under Alice is still protected in many foreign countries, which may lead many companies to move their research and development departments out of the U.S. By removing §101 and allowing patent protection in the United States for inventions which are protected abroad, the U.S. would be signaling to companies that the country still values innovation.

However, the abolishment of §101 would not be without its own challenges. Foremost being what becomes of all the patents which were recently invalidated under §101. Would/could these patents be reinstated? If they are reinstated, what becomes of the businesses that moved forward believing the patents would remain invalid? Could owners of the now reinstated patents shut down these business or would the courts force compulsory licenses? As one can see, even fixing an arguably bad law is not without unforeseen consequences.

In summary, Kappos’ proposal is a possible, although unconventional, solution to the legal challenges now faced under §101. With many other statutory provisions acting as hurdles to obtaining a patent, perhaps §101 is causing more harm than good.  Nevertheless, lawmakers (and judges) need to tread lightly when making any modifications to the legal framework that governs patents.  Creating stability in patent law is often as important drafting good statutes.  Companies can and will adapt to consistent laws (even if the laws are consistently bad). What companies cannot prepare for, and what would cause them to abandon the patent system, is unpredictability.