Defining and understanding obviousness sometimes feels as elusive as capturing the Holy Grail. In training new practitioners, there is always a challenge in conveying where and how to draw the line, in one’s own mind, between obviousness and non-obviousness. The statute (Section 103) is of little help. The seminal case of Graham v. John Deere give some factors but does little to provide a clear approach. We used to be able to rely on the Teaching, Suggestion, and Motivation (TSM) test until KSR provided a more “common sense” approach. The TSM approach still provides a helpful framework, but neither it nor the seminal cases enable one to truly and easily understand the test that is supposed to be applied - whether the “differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious … to a person having ordinary skill in the art to which the claimed invention pertains.”
The attraction of the siren hindsight, as some have called it, is hard for anyone to resist, in part because with hindsight one does not have to struggle with dead ends in the same way the inventor did. As an inventor in my former life, I know the experience of feeling like there is no elegant solution to the technical problem at hand. It is gnawing feeling where all you can see is a dead end. Your team members tell you that people have already tried to solve this issue and have already found the best options available. Your brain continues to replay the issues, re-arranging facts and options. The brain does this while you are walking the dog, or making breakfast until all of a sudden the solution comes and the pieces of the puzzle fit together in a new way. Even this description does not do the experience justice.
But for most examiners and practitioners, they have never lived that experience, faced the feeling of despair, or toiled away not quite knowing where they were going.
To this end, one training approach that can at least re-create some aspects of the inventor experience in a way that informs the understanding of obviousness is to have a mock invention contest using real world inventions in a way that mimics the statutory mandate of how obviousness is to be judged. The basic approach is to try and put examiners or practitioners in the inventor’s shoes.
Find a good invention you are working on where the examiner has rejected the claim based on a combination of two references (e.g., when puts these together to get your invention) — a case in which you believe the examiner has improperly used hindsight with the claims as a roadmap for finding the prior art and fitting it together.
Make sure the trainees are not aware of the case you selected.
Present the trainees with the two references and tell them that there is a great invention achievable by combining features from these two references. But, of course, do not tell them the specific problem the inventor was solving (only the inventor gets to know that).
Tell the trainees to list their “obvious” combinations that they can think of that achieves some sort of improved performance following the teachings of the two references, or what they believe is common knowledge in the field.
Reveal the invention and compare to those generated in step 4. Look at the examiner’s rejection and think about how their reasoning lines up with the trainees ideas and approaches.
I’ve done this many times, sometimes with room-fulls of practitioners or practitioners-to-be. No one has ever come up with the invention. Ever.
This is not a perfect comparison, and there are of course flaws in this approach that can be debated. But, even so, the experience that the trainees receive sticks with them and gives them at least one landmark to ground their understanding of obviousness.
Do you have an idea of how to help one appreciate obviousness? If so, I’d love to hear it.