First to File: Patents for Today's Scientist and Engineer

Chapter 7Confronting the Prior Art: What Makes an Invention Nonobvious?

The word “nonobviousness” is a clumsy combination of word segments and lacks a precise meaning; attempts to define it have produced a body of law that can fill volumes. To add to the confusion, it's a negative word that expresses a positive conclusion (a nonobvious invention is a patentable invention), rather than the features of an invention that lead to the conclusion. Those consulting the patent statute for its expression of the nonobviousness requirement will find that the statute simply says that to be patentable an invention must be “[nonobvious] to a person having ordinary skill in the art [often shortened to the acronym ‘PHOSITA'] to which the claimed invention pertains.”¹ The statute thus fails to state the skill level of the PHOSITA, leaving this task to the PTO and the courts, which have taken widely varying approaches in their attempts to identify it. In biotechnology inventions, for example, some cases state that the PHOSITA must have not only a doctoral degree but postdoctoral research experience²; others state that “a bachelor's degree in pharmaceutical science or analytical chemistry, and some experience in drugs and drug preparation”³ are sufficient. At least one case states that “the hypothetical person is not definable by way of credentials,”⁴ and many highly skilled workers know that in almost any field of expertise, there are individuals who despite lacking a college degree and in many ...