Common Sense And Obviousness: Supporting Evidence Is Required

Whether enforcing a patent or prosecuting a patent application, obviousness is often the key issue. The Patent Examiner (in the case of a patent application) or the Court (in the case of an issued patent) must determine if a claimed invention is obvious in view of the prior art and the knowledge and skill or persons of ordinary skill in that art. In Mintz v. Dietz & Watson the United States Court of Appeals for the Federal Circuit (the Federal Circuit) held that bald conclusory statements that a claimed invention is obvious in view of "common general knowledge", are unacceptable unless supported by objective evidence.

An argument that a claimed invention is obvious is necessarily a fictional exercise based on hindsight. Obviousness is an issue neither of what was done, nor of what could have been done (all inventions could have been made before – but were not). Rather it is what that person skilled in the art would have done. In both Canada and the U.S., an obviousness analysis requires determination of:

the level of skill and knowledge of a person of ordinary skill in the art. the...