For anyone looking for to obtain an improvement patent using a patent lawyer, the recent Federal Circuit decision in Virtek Vision Int’l ULC v. Assembly Guidance Systems, Inc. (Virtek Vision Int’l ULC v. Assembly Guidance Systems, Inc., Case No. 22-1998 (Fed. Cir. Mar. 27, 2024)) has significant implications in the obviousness analysis when filing a patent application. The key takeaway is that the mere disclosure of all claimed elements across multiple prior art references is not sufficient to establish obviousness – there must also be evidence of a motivation to combine those elements.
Obviousness in Patent Registration
Obviousness is a critical concept in patent law that determines whether an invention is eligible for patent protection. In fact, it is often one of the most hotly contested issues when trying to obtain a patent registration for an improvement patent. The key question in the obviousness analysis is whether the claimed invention would have been obvious to a person of ordinary skill in the relevant art at the time the invention was made.
The legal standard for obviousness is set forth in 35 U.S.C. 103, which states that a patent may not be obtained “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.”
The Supreme Court’s landmark decision in KSR v. Teleflex (KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)) established a framework for evaluating obviousness that considers the following factors:
- The scope and content of the prior art.
- The differences between the prior art and the claimed invention.
- The level of ordinary skill in the pertinent art.
- Secondary considerations such as commercial success, long-felt but unresolved needs, and failure of others.
The key aspect of the obviousness inquiry is determining whether a person of ordinary skill in the art would have been motivated to combine the relevant prior art references in the specific way claimed, with a reasonable expectation of success. Merely showing that all the claimed elements existed in the prior art is not enough – there must also be evidence of a reason to combine those elements. In support of this ruling, the USPTO issued new guidance on overcoming obviousness rejections.
The Motivation to Combine
In patent law, the “motivation to combine” doctrine plays a central role in determining whether a claimed invention is obvious under, 35 U.S.C. § 103. The motivation to combine is particularly relevant in cases involving “combination patents,” where the claimed invention consists of individual elements already known in the prior art. The mere fact that each of the individual components of the applied for invention exist in the prior art does not necessarily render an invention obvious. The key question is whether a person of ordinary skill in the relevant art would have had a motivation to combine those components in the specific way the of the claimed invention and that they would have had a reasonable expectation of success in doing so.
Relevance of Obviousness in Virtek Vision
This was reinforced in the recent Federal Circuit decision in Virtek Vision , where the court emphasized that “the presence of all claim elements in the prior art does not, by itself, establish obviousness.” The court’s ruling emphasizes that the mere existence of prior art elements is not sufficient to render a claimed invention obvious; rather, there must be a clear reason or rationale for a person of ordinary skill in the art to combine those elements in the claimed manner. The court explained that the obviousness analysis requires looking beyond just the individual prior art disclosures to the specific motivation a skilled artisan would have had to combine them.
In the Virtek Vision case, the Federal Circuit reversed the district court’s finding of obviousness, emphasizing that “the presence of all claim elements in the prior art does not, by itself, establish obviousness.” The court explained that the obviousness inquiry requires not just identifying the individual elements in the prior art, but also determining whether a person of ordinary skill would have been motivated to combine those elements in the specific way claimed. The Federal Circuit noted that the district court had failed to make findings on the motivation to combine, instead relying solely on the fact that the prior art disclosed all the claimed elements. The appeals court held that this was legal error, stating that “the mere fact that the prior art contains the claim elements is not enough to establish a prima facie case of obviousness.”
Implications for KC Patent Attorneys
This decision reinforces the longstanding principle that obviousness requires more than just a piecemeal assembly of prior art disclosures. Ultimately, the obviousness determination is a flexible, fact-intensive inquiry that requires considering the totality of the circumstances. Patent applicants must be prepared to present evidence on the non-obviousness of their inventions, including expert testimony, market factors, and the state of the prior art. Overcoming an obviousness rejection remains one of the most challenging aspects of obtaining a valid patent.
Courts reviewing an obviousness rejection should rely upon the examiner’s specific reasons or motivations a skilled artisan would have had to combine those elements in the particular way claimed. Mere hindsight reconstruction is not sufficient. The Virtek Vision ruling underscores the importance of a rigorous, fact-intensive obviousness analysis that looks beyond just the individual components of the prior art. Patent attorneys must be prepared to present evidence on the motivation to combine, drawing on expert testimony, market factors, the state of the art, and other relevant considerations.
This decision serves as an important reminder that the obviousness standard remains a high bar, and patent owners should not be deprived of valid patent rights simply because the prior art happens to contain all the individual claim elements. The Federal Circuit has reaffirmed that a more holistic, contextual analysis is required to establish obviousness.
If you have filed for an improvement patent and received an obviousness rejection contact one of our patent attorneys. The Virtek Vision ruling provides fresh ammunition to help overcome the patent offices’ rejection.