1 The three Graham obviousness factors are squarely based on the
2 statutory language of § 103: (1) scope and content of the prior art being
3 based on the language "prior art", (2) differences between the subject matter
4 sought to be patented and the prior art being based on the language
5 "differences", and (3) level of ordinary skill being based on the language "a
6 person having ordinary skill in the art." Unlike the statutory criteria on
7 which the Supreme Court counsels fact-finding, nowhere does the word
8 "motivation" appear in § 103. What drives the obviousness determination is
9 what one of ordinary skill in the art would have known and would normally
10 have done prior to an applicant's invention. And, a person of ordinary skill
11 in the art is necessarily "motivated" to use known elements for their intended
12 purpose without any further suggestion to do so. Section 103 is designed to
13 prevent issuance of patents to inventions which preclude a person having
14 ordinary skill in the art from using known elements for their intended
15 purpose absent some significant reason to the contrary, e.g., an unexpected
16 result. Thus, as Graham points out in discussing writings of Thomas
17 Jefferson, 383 U.S. at 10: "A man has a right to use a saw, an axe, a plane
18 separately; may he not combine their uses on the same piece of wood?" See
19 also Dunbar v. Myers, 94 U.S. 187, 195 (1876) (ordinary mechanics know
20 how to use bolts, rivets and screws and it is obvious that any one knowing
21 how to use such devices would know how to arrange a deflecting plate at
22 one side of a circular saw which had such a device properly arranged on the
23 other side).
24 In the case before us, a person having ordinary skill in the art seeking
25 to solve a tackiness problem (1) would have known about CAB-O-SILŪ,
26 (2) would have known it was a detackifier, (3) would have known to use it
27 where detackifying is necessary and (4) would therefore have used it to
18
Page: Previous 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Next
Last modified: September 9, 2013