The test for obviousness is controlled by what a person of ordinary skill in the art would have done based on the teachings of the references
| May 25, 2018
In re: Daryl David Coutts
April 6, 2018
Before Dyk, Wallach and Chen. Opinion per curiam.
Summary
The inventor Daryl David Coutts has a patent application 11/836,293 rejected by the Examiner and the Board (Patent Trail and Appeal Board) under 35 U.S.C. § 103 for obviousness as being unpatentable over the combination of three prior arts (Cheung, Awada, and Kang). The Board stated that the patent application would have been obvious to a person of ordinary skill in the art by combining these prior arts.
However Mr. Coutts argued that the patent application is not obvious over the prior arts because, for a particular claim limitation/feature, the inventors of Cheung knew of this particular claim feature but did not claim it in their patent application and therefore the combination of Cheung and the claim feature could not have been obvious. The Court of Appeals of Federal Circuit (the “Court”) affirmed the decision of the Board and also affirmed that the test of obviousness is controlled by what a person of ordinary skill in the art would have done based on the teaching of the references and not what the inventors of the prior art would have done. In other words, what the prior art inventors would have done is not relevant for the obviousness test.
Details
The subject patent application 11/836,293 provides a piece of software about “methods and systems for displaying information on a user’s computing device”. The software program receives notifications from various software applications and shows the received notifications on a display chronologically by receipt time. Then, a user can review the notifications at his/her convenience by clicking on the corresponding notification to access the software application.
The figure below shows an example of the software.
The Examiner rejected the pending claims under 35 U.S.C. § 103 for obviousness over Cheung in combination with Kang and Awada. The examiner found that Cheung teaches all elements/limitations of independent claim 20 except for two elements: 1) non-overlapping display windows and 2) a time-received display. The Examiner found that the first element is disclosed by Awada. The Examiner also found that the second element of a time-received display is disclosed by Kang. Specifically, the system in Kang can list messages by time and date of receipt together with the title of emails or SMS messages. The inventor Mr. Coutts did not dispute these findings. The examiner found that it would have been obvious to a person of ordinary skill in the art to combine Kang and Awada to Cheung at the time of the invention. This is the finding that Mr. Coutts contends.
Mr. Coutts argued that Cheung had either actual or constructive knowledge of listing the receipt message chronologically. And he also argued that if it is obvious to Cheung, he would have combined the feature to his patent. He cited a dicta in In re Kleinman stating that “it might very well be a significant point in weighing the content of a patent as a reference if it can be demonstrated that an inventor had actual knowledge of relevant art”.
Mr. Coutts tried to prove Cheung had knowledge of the feature by listing the following facts: firstly, Cheung described his invention using Microsoft Outlook which at the time of the invention had the function that shows receipt emails according to the receipt time; secondly, a reference in the information disclosure of the Cheung’s application includes a figure showing the list of email messages by Microsoft Outlook chronologically; thirdly, Cheung as a technology worker would have a chance to use such a software which lists the messages chronologically.
However, the Board affirmed the Examiner’s decision. The Board held that the test of obviousness is controlled by what a person of ordinary skill in the art would have done based on the teaching of the references. Since Mr. Coutts’s own admission shows that the classification of notifications chronologically is a conventional technique, whether the feature has been obvious to Cheung was not relevant.
Mr. Coutts appealed to the Court.
The Court states that the test of 35 U.S.C. §103 is whether “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would has 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”. It is an objective standard which should not been tied to the knowledge of any person or inventor.
The Court states that the knowledge of the inventor of prior art is one piece of evidence showing whether a person of ordinary skill in the art would do but not conclusive. It may be used when evaluating whether a person of ordinary skill in the art had knowledge of the invention. Also, it may be used to show the inventor had the knowledge but did not pursue it because he/she thinks it would not work or that it would be too obvious. Whereas, the standard has always been what an objective person of ordinary skill in the art would do.
The Court held that the Board applied this standard correctly.
The Court also held that the evidences provided by Mr. Coutts all served as evidence that this function of listed notification chronologically was well-known, conventional art.
Also, the Court held that Chueng’s knowledge of the missing claim limitation but did not claim it in their application does not logically show non-obviousness. One reason can be that the inventors of Cheung may think it is obvious to combine.
Takeaways
- The prior art inventor’s knowledge can be used as a reference to prove obviousness
- The prior art inventor’s knowledge cannot be used to prove non-obviousness except to teach away from some claim limitations
