[Federal Register Volume 59, Number 82 (Friday, April 29, 1994)]
[Unknown Section]
[Page 0]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 94-10309]
[[Page Unknown]]
[Federal Register: April 29, 1994]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Public Hearing and Request for Comments on the Standard of
Nonobviousness
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice of hearing and request for public comments.
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SUMMARY: The Patent and Trademark Office (PTO) is conducting a review
of the standard of nonobviousness by which inventions are judged to
determine whether a more rigorous standard of nonobviousness is needed.
As part of this review, the PTO is interested in obtaining public
comment on the current standard of nonobviousness both as it is applied
by the PTO and as interpreted by the Federal courts, as well as the
impact of this standard on promoting the progress of science and useful
arts. Interested members of the public are invited to testify and to
present written comments on any of the topics of discussion outlined in
the supplementary information section of this notice.
DATES: A public hearing will be held on July 20, 1994, at 9 a.m. Those
wishing to present oral testimony at the July 20, 1994, hearing must
request an opportunity to do so no later than July 8, 1994. Any written
comments by those persons offering testimony at the hearings and
related to that testimony should be submitted on or before July 8,
1994. Other written comments should be received by the PTO on or before
August 31, 1994.
ADDRESSES: Those interested in presenting written comments on the
topics contained in the supplementary information section of this
notice, or any other related topic, should address their comments to
the Commissioner of Patents and Trademarks, marked to the attention of
Kathleen G. Dussault, Attorney-Adviser, Office of Legislation and
International Affairs. The Hearings will be held in Marriott's Crystal
Forum, a part of the Crystal City Marriott Hotel located in The
Underground, 1999 Jefferson Davis Highway, Arlington, Virginia.
Comments submitted by mail should be sent to Commissioner of Patents
and Trademarks, Box 4, Patent and Trademark Office, Washington, DC
20231. Comments can be sent by electronic mail to Internet address
comments-obviousness@uspto.gov. Comments may also be submitted by
telefax at (703) 305-8885. Written comments should include the
following information:
--Name and affiliation of the individual responding;
--An indication of whether comments offered represent the views of
the individual's organization or are the respondent's personal
views; and
--If applicable, the nature of the respondent's organization (e.g.,
business, law firm, trade group, university, non-profit
organization) and principal areas of business or research activity.
Parties offering testimony or written comments are asked to provide
their comments in machine-readable format in one of the following file
formats: ASCII text, WordPerfect for DOS or Windows version 4.2 or 5.x,
or Word for Macintosh version 4.0 or 5.x.
Persons wishing to testify must notify Kathleen G. Dussault no
later than July 8, 1994. Ms. Dussault can be reached by mail sent to
her attention addressed to the Commissioner of Patents and Trademarks,
Box 4, Washington, DC 20231; by phone at (703) 305-9300; or by telefax
at (703) 305-8885. No requests to testify will be accepted through
electronic mail.
Written comments and transcripts of the hearings will be available
for public inspection in Room 902 of Crystal Park Two, 2121 Crystal
Drive, Arlington, Virginia. Persons wishing to obtain a machine-
readable copy of the transcripts and public comments should contact
Kathleen G. Dussault at the address listed below.
FOR FURTHER INFORMATION CONTACT: Kathleen G. Dussault by telephone at
(703) 305-9300; by fax at (703) 305-8885, by electronic mail at
dussault@uspto.gov, or by mail marked to her attention addressed to the
Commissioner of Patents and Trademarks, Box 4, Washington, DC 20231.
SUPPLEMENTARY INFORMATION:
I. Background
Recent debate has focused on whether United States patent policy is
being effectively served by the current standard of nonobviousness both
as it is applied by the Patent and Trademark Office during patent
examination and as it has been interpreted by the Federal courts. Under
35 U.S.C. 103, a patent may not be obtained ``* * * if the differences
between the subject matter sought to be patented and the prior art are
such 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 subject matter pertains.''
In Graham v. John Deere & Co., 383 U.S. 1 (1966), the Supreme Court
defined a three-part test to be followed to determine the
nonobviousness of an invention under 35 U.S.C. 103. Under this test,
(1) the scope and content of the prior art are to be determined; (2)
the differences between the prior art and the claims at issue are to be
ascertained; and (3) the level of ordinary skill in the pertinent art
is to be resolved. According to the Court, secondary considerations
such as commercial success, long felt but unsolved needs, failure of
others, etc., might be utilized to give light to the circumstances
surrounding the origin of the subject matter sought to be patented. The
Court noted that as indicia of obviousness or nonobviousness, secondary
considerations may have relevancy.
Some critics have charged that the Graham v. John Deere standard of
nonobviousness has been changed by decisions of the Court of Appeals
for the Federal Circuit. For example, it is argued that secondary
considerations have been given too much weight when determining the
nonobviousness of an invention to the extent that an invention with
strong commercial success will be found not obvious despite appearing
so in light of prior art. Other critics charge that the scope of the
prior art to be considered when evaluating the obviousness of an
invention has been improperly narrowed, precluding obviousness from
being established by combining the teachings of the prior art to
produce the claimed invention absent some express teaching or
suggestion supporting the combination.
The PTO has the burden of establishing a case of prima facie
obviousness to support a prior art rejection under 35 U.S.C. 103. This
burden can be met when the teachings from the prior art suggest the
claimed subject matter to a person of ordinary skill in the art. Once
established, the applicant must present evidence or arguments to rebut
the Examiner's prime facie case. For example, an applicant may argue
that there was no teaching or suggestion in the prior art to combine
the references in the manner suggested by the Examiner to render the
claimed invention obvious. The applicant may also rebut the Examiner's
case of prima facie obviousness by demonstrating that the references
cited by the Examiner teach away from the claimed invention. Some
critics argue that more guidance is needed to define when a prima facie
case has been established and how it may be successfully rebutted.
It has also suggested that the standard of nonobviousness has been
inappropriately lowered. Alleged effects of this ``lowered'' standard
include a decrease in the perceived stature of patented inventions
(e.g., patents are being granted on inventions industry views as being
trivial, simple or straightforward). Recent debate has also focused on
the propriety of the de novo standard of review applied by the Court of
Appeals for the Federal Circuit and whether greater deference should be
given to the obviousness determinations of the PTO and the District
Courts on appeal.
To resolve the issues presented, the PTO will conduct a public
hearing to examine the issue of nonobviousness in the context of
whether or not the current standard of nonobivousness effectively
promotes United States patent policy and whether a more rigorous
standard for awarding U.S. patents should be pursued.
II. Topics for Discussion
The hearing will address the following topics:
1. Justifications and rationale for and against the
nonobviousness standard applied by the PTO and the Federal courts,
including:
(a) Is a more rigorous standard of nonobviousness needed? If so,
how should the standard be defined?
(b) Should the current standard of nonobviousness be
administered differently?
(c) Is the standard of nonobviousness applied differently among
the different examining groups within the PTO?
(d) Should the standard of nonobivousness vary according to the
field of technology involved?
(e) What role should secondary considerations, such as
commercial success, unexpected results, etc., play when determining
the nonobviousness of the invention?
(f) Whether a prima facie case of obviousness based upon a
combination of references should necessarily require ``motivation''
to combine the teachings of the prior art disclosures? Why or why
not? What other standard or standards for evaluating the propriety
of combining the teachings of references might be appropriate?
(g) Is the ``ordinary level of skill'' in the art being
interpreted and applied correctly, and if not, what changes are
needed?
(h) Whether obviousness determinations should be subject to de
novo review on appeal to the Court of Appeals for the Federal
Circuit? If not, what standard of review should apply?
2. Desirable characteristics of specific guidelines regarding
the burden of proof needed to rebut an Examiner's prima facie case
of obviousness.
(a) Is there a need for more specific guidelines to govern the
burden of proof to be followed in determining the nonobviousness of
an invention? If so, what should they be?
3. Impact of a more rigorous standard of nonobviousness on
promoting industrial and technological progress in the United States
and strengthening the national economy.
(a) Would a stricter standard of nonobviousness help or hinder
industrial and technological progress in the United States? If so,
how?
(b) Is the current standard of nonobviousness applied by the PTO
and interpreted by the Federal courts having a positive or negative
impact on industrial and technological progress in the United
States?
(c) Are problems being experienced in particular areas of
technology as a result of the standard of nonobviousness applied by
the PTO? If so, what are they?
(d) What would be the effect of a more rigorous standard of
nonobviousness on the ability of industry to compete in the
international market?
III. Guidelines for Oral Testimony
Individuals wishing to testify must adhere to the following
guidelines:
1. Anyone wishing to testify at the hearings must request an
opportunity to do so no later than July 8, 1994. No one will be
permitted to testify without prior approval.
2. Requests to testify must include the speaker's name,
affiliation (if any), phone number, fax number (if available),
mailing address, and the questions in each topic that the speaker
intends to address in his or her testimony.
3. Time allocated to each speaker will be determined after the
final number of speakers has been determined.
4. Speakers must provide a written copy of their testimony for
inclusion in the record of the proceedings no later than August 31,
1994.
5. Speakers must adhere to rules established for testimony.
These rules will be provided to all speakers no later than July 15,
1994.
A schedule providing approximate times for testimony will be
provided to all speakers no later than July 15, 1994. Speakers are
advised that the schedule for testimony will be subject to change
during the course of the hearing.
Dated: April 21, 1994.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 94-10309 Filed 4-28-94; 8:45 am]
BILLING CODE 3510-16-M
