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U.S. patent law[]

"A patent claim is not obvious if it is different enough from the Prior Art such that a person skilled in that technology would find that the invention provides a new contribution to society's knowledge.[1]


Section 103 of the current U.S. patent law (35 U.S.C. § 103) provides that:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

Nonobviousness addresses the degree of difference between the invention sought to be patented and the inventions or technology that are known or available (the “prior art”) to the hypothetical person skilled in the relevant field of technology.

Evidence of prior art (e.g., existing patents, publications) is evaluated not only for what it expressly teaches, but also for what it would reasonably suggest to one of ordinary skill in the relevant field of technology. Since an invention may be new (novel) but still be obvious, a determination as to whether or not the proposed invention is obvious needs to be made.

In 1966, the U.S. Supreme Court articulated an objective test for nonobviousness, based on Section 103 of the Patent Act, which, over time, has replaced the more subjective “invention” approach the Court had used earlier.[2] As the Supreme Court stated in Graham v. Deere:

Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available.[3]

Similarly, as the Federal Circuit has explained:

That is the real meaning of “prior art” in legal theory — it is knowledge that is available, including what would be obvious from it, at a given time, to a person of ordinary skill in an art. Society, speaking through Congress and the courts, has said, “thou shalt not take it away.”[4]

The Graham Court set forth the test for obviousness:

  • determine the scope and content of the prior art;
  • ascertain the differences between the prior art and the claims at issue; and
  • resolve the level of ordinary skill in the pertinent art.[5]

Granting a right to exclude based on "knowledge that is available, including what would be obvious from it," upsets the balance between property protection and competition that the Supreme Court in Bonito Boats found so basic.[6] It risks conferring market power without receiving something innovative in return and conflicts with "the underlying policy of the patent system that [the public benefits] must outweigh the restrictive effect of the limited patent monopoly."[7]


  1. USPTO, Glossary (full-text).
  2. Graham v. John Deere Co., 383 U.S. 1 (1966) (full-text).
  3. Id. at 6.
  4. Kimberley-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1453-54 (Fed. Cir. 1984) (full-text).
  5. 383 U.S. at 6.
  6. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989) (full-text) ("From their inception, the federal patent laws have embodied a careful balance between the need to promote innovation and the recognition that imitation and refinement through imitation are both necessary to invention itself and the very lifeblood of a competitive economy.").
  7. Graham, 383 U.S. at 10-11; see also Bonito Boats, 489 U.S. at 150 ("Taken together, the novelty and nonobviousness requirements express a congressional determination that the purposes behind the Patent Clause are best served by free competition and exploitation of either that which is already available to the public or that which may be readily discerned from publicly available material.").