Obviousness - University of New Brunswick


Oct 23, 2013 (4 years and 8 months ago)




Originally a case
law requirement interpreting
“manner of new Manufacture” requiring an
“inventive step”

Long known in the UK as the “Cripps question”

Now codified in s.28.3


S.28.3 The subject
matter defined by a claim in
an application for a patent in Canada must be
matter that would
not have been
on the claim date
to a person skilled in
the art
or science to which it pertains,
regard to
. . .


information disclosed more than one year before
the filing date by the applicant
, or by a person who
obtained knowledge, directly or indirectly, from the
applicant in such a manner that the information
available to the public

in Canada or
elsewhere; and

information disclosed before the claim date
by a
person not mentioned in paragraph (a) in such a
manner that the information became

available to
the public
in Canada or elsewhere.


of the Art

Novelty v Obviousness

Matter in unpublished patent applications does
NOT form part of the state of the art for
obviousness purposes

Why not?



is an attack on a patent based on its
lack of inventiveness. The attacker, says, in effect,
"Any fool could have done that"

Anticipation, or lack of novelty, on the other hand,
in effect assumes that there has been an invention
but asserts that it has been disclosed to the public
prior to the application for the patent. The charge
is: "Your invention, though clever, was already


J Beloit Canada
/Ltd v


The Cripps Question

The traditional “test”

"Was it obvious to any skilled chemist in the state of chemical
knowledge existing at the date of the patent that he could
manufacture valuable therapeutic agents by making the higher

by the use of the condensation and reduction
processes described If the answer is 'No' the patent is valid, if
'Yes' the patent is invalid"

This does not define the standard: it tells us

Test is objective

Measured by person skilled in the art

‘person having ordinary skill in the art’ PHOSITA

Relevant date is date of the patent application

Obviousness test is now codified: s283

Two Problems

What does “obvious” mean?

How is “obviousness” implemented?

‘But for’ Theory

The patent monopoly was not designed to secure to the
inventor his natural right in his discoveries. Rather, it
was a reward, an inducement, to bring forth new

Only inventions and discoveries which furthered , and
were new and useful, justified the special inducement of a
limited private monopoly.

The inherent problem was to develop some
means of
weeding out those inventions which would not be
disclosed or devised

but for the inducement of a patent

Graham v John Deere (emphasis added)

‘But for’ Theory

Why is non
obviousness a requirement?

A monopoly is an evil

we want to grant a
patent only when it is a necessary evil

We want to reward only those inventions which
require the lure of a patent to induce the research.

Importance of non

No modern system permits patents on an anticipation
standard alone: why not?

Why is an obviousness criterion needed?

An invention may be new, useful

and very valuable

and yet

Selden “Road Engine” (automobile)

US Pat # 549,160, issued 1885


click shopping”

US Pat # 5,960,411, issued 1999

NTP Wireless RF e

US Pat # 5,436,960, filed 1991, issued 1995


forwarding e
mail to mobile unit

US Pat # 6,219,694, filed 1998, issued 2001

“But for” Standard

Note that the “but for” obviousness standard is
very difficult to implement

Only those inventions which required the patent lure
should be patentable

How high is that standard in cost or genius?

What evidence is available to the courts?

The court must exercise judgment in an area outside
of its expertise

Cf. “



Anticipation is a much easier standard to apply

The court has ready access to evidence of prior art

It is much easier to determine whether one invention is
the same as another than it is to tell whether an
invention is “inventive”

Recall Muldoon J Unilever PLC v Procter & Gamble Inc

When one considers the apparent silliness of trial by a judge
who is utterly unschooled in the scientific substance of a
patent, hearing conflicting testimony of so
called experts who
speak the antithesis of scientific verity, and lawyers who have
been engaged in the particular case for years before the trial,
one knows that this field cries out for reform.


In practice obviousness and anticipation are linked

It is so easy, once the teaching of a patent is known,
to say, "I could have done that"; before the
assertion can be given any weight, one must have a
satisfactory answer to the question, "Why didn't

Beloit (FCA)

Seeing that it is admittedly better, why was it not
used sooner, if obvious?

Halocarbon (SCC)

Implementing the Obviousness



Consider whether the tests / approaches

implement or are consistent with the
“but for” approach to obviousness


The classical touchstone for obviousness is the technician
skilled in the art but having
no scintilla of inventiveness
or imagination
; a paragon of deduction and dexterity,
wholly devoid of intuition; a triumph of the left
hemisphere over the right. The question to be asked is
whether this mythical creature
. . .

would, in the light of
the state of the art and of common general knowledge as
at the claimed date of invention, have come
directly and
without difficulty to the solution

taught by the patent
. It
is a very difficult test to satisfy.

Is this compatible with the “but for “approach?





Obvious to try “test”

‘Windsurfer’ structured approach

Relevant factors


Rejects the Beloit test

. . . the restrictiveness with which the Beloit test
has been interpreted in Canada should be re

No rigid rules

an expansive and flexible approach that would
include “any secondary considerations that [will]
prove instructive” will be useful (p. 1739).


Does not expressly accept the “but for” theory

But is consistent with it

The patent system is intended to provide an
economic encouragement for research and
It is well known that this is
particularly important in the field of
pharmaceuticals and biotechnology.

Obvious to Try “Test”

Obvious to try “test” is used in two ways

(1) If obvious to try => obvious

This is REJECTED in

Obvious to Try “Test”

(2) Whether the invention was obvious to try is
a factor to be considered

This is ACCEPTED in

If an “obvious to try” test is warranted,
following factors

should be taken into consideration
at the fourth step of the obviousness inquiry.

But it is NOT a test

If an invention is obvious to try, but not obvious to
succeed, it may well be inventive

Obvious to Try?

Generally, if an invention is

obvious to try, it


Why is it not obvious to try?

Not an obvious thing to do

Flash of genius

Not obvious that it would be worth doing

Surprising advantage

Obvious to Try

If Not Obvious to Try, then

Not Obvious

Even if

Obvious to succeed


. . . inventive ingenuity lay in perceiving that the final result
which it was the object of the inventor to achieve was
attainable from the particular starting point and in his
selection of the particular combination of steps which would
lead to that result.

, quoted in Halocarbon



Corp, Ch. 7

Obvious to Try


f an invention

obvious to try it, it is
not necessarily obvious

Not (sufficiently)

obvious to succeed

Not obvious

Obvious to succeed, but much effort required

Patient searcher

Is the patient searcher entitled to a patent?


[I]t seems to me, the requirement of "inventive
ingenuity" is not met in the circumstances of the
claim in question where the "state of the art" points
to a process and all that the alleged inventor has
done is ascertain whether or not the process will
work successfully. (FCA)

, if obvious to try, then obvious

This standard was
rejected by the SCC

In my view this statement of the requirement of
inventive ingenuity puts it much too high.

Obvious to Try and Succeed

If obvious to try AND obvious to work =>
obvious (probably)

The “obvious to try” test really only works
where it is more
less self
evident that what is
being tested ought to work.

Patient Searcher

Suppose an innovation is

Obvious to try

Likely to succeed given $300 million


much genetic engineering

Obvious to get human insulin by recombinant DNA

Should it be considered obvious?

Patient Searcher

Query: What if invention is obvious to try AND
obvious to succeed, IF $300 million is spent


patient searching, where you know systematic
research will reveal the answer, but the research is

Patient Searcher

Should this be patentable?

Is this patentable?

Some UK courts have held not

A mere commercial decision is not an invention.



1995 UKCA, re sequencing genome of

B virus

Patient Searcher

What about in Canada?

Is it more or less self
evident that what is being tried
ought to work?
Are there a finite number of identified
predictable solutions known to persons skilled in the

What is the extent, nature and amount of effort
required to achieve the invention?

Are routine trials
carried out or
is the experimentation prolonged and
arduous, such that the trials would not be considered

Patient Searcher

Very few inventions are unexpected discoveries.
Practically all research work is done by looking
in directions where the "state of the art" points. .
. "
A patient searcher is as much entitled to the
benefits of a monopoly as someone who hits
upon an invention by some lucky chance or

Halocarbon SCC

Patent Race Problem

If ‘obvious’ many inventors will try to be the
first to get the patent

In principle, all of the benefits of the patent may be
squandered in the race to be first to get the patent.

Obviousness in this sense is different from
obviousness in the ‘but for’ theory

Windsurfer Approach

(1)(a) Identify the notional "person skilled in the

(b) Identify the relevant common general
knowledge of that person;

What is the state of the art?

Windsurfer Approach

(2) Identify the inventive concept of the claim in
question or if that cannot readily be done,
construe it;

What is the inventive concept?

Windsurfer Approach

(3) Identify what, if any, differences exist
between the matter cited as forming part of the
"state of the art" and the inventive concept of
the claim or the claim as construed;

What is the difference between the two?

Windsurfer Approach

(4) Viewed without any knowledge of the alleged
invention as claimed, do those differences
constitute steps which would have been obvious
to the person skilled in the art or do they require
any degree of invention?

Is that difference inventive?

without hindsight

TSM Approach

Compare “teaching, suggestion,

approach used in US prior to KSR

The party seeking patent invalidity based on
obviousness must also show some motivation or
suggestion to combine the prior art teachings.
suggestion or motivation to combine generally arises in
the references themselves, but may also be inferred
from the nature of the problem or occasionally from
the knowledge of those of ordinary skill in the art.

Site Corp. v. VSI Int'l, Inc., CAFC 1999

Secondary Factors

Simultaneous Invention

. . . it was a fact that the named inventors on the
patents granted to both plaintiff and defendant
were highly experienced and skilled in the art and
had, on a number of previous occasions,
demonstrated their inventive ability.
That such
people should come up with the idea in a relatively
short space of time is nothing to the point

on the
question of obviousness unless it be to show that
only they, and no one else, in the vast international
fraternity of paper makers could devise the concept.



There are many instances in various branches of
science of independent investigators making the
same discovery. That does not prevent the one
who first applies and gets a patent from having a
good patent

Pope Appliance, quoted in Halocarbon

Simultaneous invention does


Why not?

Long Felt Need

As previously stated, the press section had been
recognised for some time as the limiting factor in
the design of paper machines. Once the invention
was adopted in the industry, the speed of these
machines was increased from its previous maximum
of about three thousand feet per minute to the
present maximum of about four thousand feet per
minute. Paper machines, as a rule, run twenty
hours a day, seven days a week, and the increased
economy and profitability resulting from such
increase in speed require no demonstration.


Contrary to Conventional

Conventional wisdom in the industry at the time
of the invention in 1969 pointed away from the
teaching of the patent and there was strong
industry resistance to its acceptance. In fact, the
plaintiff did not succeed in getting a customer to
take the new machine until May 1972. The
machine itself was not started up until April


Commercial Success

Since its acceptance, the machine has had an
outstanding commercial success, to the point
that, as the trial judge himself said, it "is now
almost universally adopted for use in the press
section of paper making machines."


Secondary Factors

While none of these factors taken in isolation is
necessarily determinative on the issue of
obviousness, each of them argues more eloquently
than any ex post facto analysis can ever do that the
patent is inventive; cumulatively their effect is
simply irresistible.


Why did the Beloit Court impose a low standard
inventiveness? Was

a low standard necessary

support its conclusion?

Secondary Factors

Commercial success

felt need

Conventional wisdom teaches away from the

Combination of commercial success & long
need is very persuasive re non

But commercial success may be explained by other


Secondary Factors

If the secondary factors can be established, they
are powerful evidence of non

is not necessary to establish the
secondary factors in order to establish non

Absence of any or all of these factors does NOT
prove obviousness

Why was it not done before?

It is so easy, once the teaching of a patent is
known, to say, "I could have done that"; before
the assertion can be given any weight, one must
have a satisfactory answer to the question, "Why
didn't you?“



possible to rebut this:

little time between
pioneer patent and improvement