Fletcher YoderThe Supreme Court has granted a petition for certiorari, which will bring the question of what constitutes “obviousness” before the Court. The petitioner is attempting to challenge the requirement for “teaching, suggestion, or motivation” to combine.
The Supreme Court establishes the three-part nonobviousness inquiry: (1) determine the scope and content of the prior art, (2) determine the differences between the prior art and the claimed invention, and (3) determine the level of ordinary skill in the pertinent art. A court or the PTO may also use secondary considerations such as commercial success, long-felt but unmet needs, and failure by others as objective indications of nonobviousness.
In this nonprecedential opinion the Board reverses examiner’s § 103 rejection stating that the prior art references do not sustain a prima facie case of obviousness. Further the Board explains that at best the references satisfies an “obvious to try” standard, which is insufficient for conclusion of obviousness.