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 scope and content of the prior art. the differences between the claimed invention and the prior art. whether the differences over the prior art are obvious.1 In the end, step (iv) is still a subjective determination of whether a person of ordinary skill, would, in the light of the state of the art and of common general knowledge, have come directly and without difficulty to the claimed invention2.

It is easy, once the teaching of a claimed invention is known, to say, "I could have done that." Before the assertion can be given any weight, one must have a satisfactory answer to the question, "Why didn't you?"3 In both the U.S. and Canada the courts guard against impermissible hindsight analyses by requiring that prior art be considered as if by a person not having knowledge of the claimed invention, without using the claimed invention as a road-map. An important part of that safeguard against impermissible hindsight analyses is the requirement that an Examiner or a judge provide a clearly articulated reason as to why it would be obvious to combine or modify the prior art to arrive at the claimed invention.

Applicants commonly face rejections that rely on conclusory assertions that "it would have been obvious to a person of ordinary skill in the art to ..." These assertions, generally symptomatic of impermissible hindsight analyses, are typically not supported by...