Species Of Obviousness

Introduction

Ironically, it is not so obvious as to how to apply the Canadian law of obviousness.

For example, the UK's Windsurfing/Pozzoli1 analytical approach to obviousness, expressly adopted by the Supreme Court of Canada in 2008 in Sanofi,2 asks that one identify "the relevant common general knowledge" of the notional person skilled in the art. Having identified it, neither Windsurfing/Pozzoli nor Sanofi explained what is to be done with it, leaving unclear its use in determining obviousness.

This paper suggests that the obviousness case law reveals two distinct species of obviousness:

(1) Common General Knowledge ("CGK") Obviousness; and

(2) Prior Art Mosaicking Obviousness.

Each specie of obviousness requires a slightly different analytical approach under Canadian case law. Prior art mosaicking obviousness must explain why a particular piece of public prior art is selected to be used or combined with a starting point piece of prior art; CGK obviousness does not, since only CGK is used or combined with any individual piece of prior art. Both species of obviousness use CGK to apply obvious, common generally known combinations or uses to render a new combination or use obvious.

Obviousness 101

The subject-matter defined by a claim in a Canadian patent must not have been obvious to a person skilled in the art or science to which it pertains, having regard to (among other things) information that became available to the public in Canada or elsewhere before the claim date.3

The onus is on the party attacking a patent to establish that a claim is obvious.4 The best question to ask in cross-examination of an expert witness who has stated that the invention would have been obvious, is: "If it was so obvious, then why didn't you think of it?"5. Thus, the expert for the party attacking the claim for obviousness must explain why it would have been obvious to the skilled person. The question "Why?" seeks a reason for the combination (or use together) of prior art elements.

Motivation

One aspect of the "Why?" question is to ask "Why would the skilled person have been motivated to combine or use together those particular pieces of prior art to come up with what is claimed?"

Canadian courts have recognized at least two types of motivation: that of the industry in general ("the climate in the field"6); and that of the notional skilled person and/or the inventor(s) themselves ("...the reason why the claimed inventor made the claimed invention, or ... the reason why one might reasonably expect the hypothetical person of ordinary skill in the art to combine elements of the prior art to come up with the claimed invention.7). With respect to the motivation of the industry, the motivation to combine (or not combine) the prior art necessarily includes the attitudes, trends, prejudices and expectations that existed in the industry at the time8 (both towards and away from that kind of combination or use of prior art).

Likewise, under US law, the need for a reason for the combination or use has been recognized. The US Court of Appeal for the Federal Circuit developed the TSM ("teaching, suggestion or motivation") test, under which a patent claim is considered obvious only if there was "some motivation or suggestion to combine the prior art" in the prior art, the nature of the problem, or the [common general] knowledge of a person having ordinary skill in the art.9 In KSR however, the US Supreme Court held that this test is merely a "helpful insight" and not a rigid and mandatory requirement for proving obviousness.10 Nevertheless, KSR requires there to be some "reason" for making the combination of elements:

Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.11 [emphasis added]

Many other aspects of "motivation" are arguably neutral towards deciding whether the combination would have been obvious and depend heavily on the facts of the case. For example:

The desire to find a cure for cancer does not make a resulting cure obvious. If no one else found the cure, this suggests that the cure was inventive.12 If everyone was looking in the same area or in the same direction for the solution, perhaps the invention was obvious if only the timing of addressing the problem resulted in the solution being found first by one group.13 If only the inventor was seeking the solution, the solution found is not necessarily inventive. The solution may have been the application of a previously known solution within the relevant CGK.14 Specie #1: CGK (Common General Knowledge) Obviousness

The notional skilled person (who is the subject of the obviousness question) is imbued with the CGK in the field of art of...