“A patent may not be obtained … if the … subject matter [sought to be patented] as a whole would have been obvious at the time the invention was made.”
Post-Issuance Experimentation As Evidence of Unexpected Results
A patent may not be obtained ... if the ... subject matter [sought to be patented] as a whole would have been obvious at the time the invention was made." 35 U.S.C. '103(a). Establishment of <i>prima facie</i> obviousness requires satisfaction of three separate criteria. First, there must be some suggestion or motivation to one of ordinary skill in the art to modify a reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Third, the prior art reference (or references when combined) must teach or suggest each and every limitation in the claim under examination. <i>In re Vaeck</i>, 947 F.2d 488, 20 U.S.P.Q.2d 1438 (Fed. Cir. 1991). With respect to chemical compounds, a <i>prima facie</i> case of obviousness may be made based on structural similarity of the claimed compound to other known compounds since "one skilled in the art [would be motivated] to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." <i>In re Payne</i>, 606 F.2d 303, 313 (CCPA 1979).
By
Gerard A. MessinaAaron GrunbergerThis premium content is locked for LawJournalNewsletters subscribers only
ENJOY UNLIMITED ACCESS TO THE SINGLE SOURCE OF OBJECTIVE LEGAL ANALYSIS, PRACTICAL INSIGHTS, AND NEWS IN LawJournalNewsletters
- Stay current on the latest information, rulings, regulations, and trends
- Includes practical, must-have information on copyrights, royalties, AI, and more
- Tap into expert guidance from top entertainment lawyers and experts
Already have an account? Sign In Now
For enterprise-wide or corporate access, please contact Customer Service at [email protected] or call 1-877-256-2473.
