30. Which of the following is most likely to be considered in a proper obviousness
determination?
(A) Evidence demonstrating the manner in which the invention was made.
(B) Evidence that a combination of prior art teachings, although technically
compatible, would not be made by businessmen for economic reasons.
(C) Evidence demonstrating the level of ordinary skill in the art.
(D) Evidence that one of ordinary skill in the art, after reading Kat’s application,
would readily be able to make and use Kat’s invention without undue
experimentation.
(E) Evidence that the distance finder described in the July 2000 golf magazine has
enjoyed great commercial success.
30. ANSWER: The most correct answer is (C). The level of ordinary skill in the art is one of
the factors that must be considered in any obviousness determination. Graham v. John Deere,
383 U.S. 1, 148 USPQ 459 (1966). (A) is not the best answer because 35 U.S.C. § 103
specifically states that patentability shall not be negated by the manner in which the invention
was made. (B) is not the best answer because economic unfeasibility is not a basis for a
determination of nonobviousness. See MPEP § 2145 VII. (D) is directed to the issue of
enablement, not obviousness. (E) is wrong because the commercial success of the prior art
distance finder is not relevant (although commercial success of Kat’s invention would be
relevant).
Although not terribly necessary to answer the question, here is the first part that was missing:
Kat Forrest has been a famous golf prodigy since childhood and currently enjoys phenomenal success on the professional golf tour, having won four straight major titles. Kat conceived, constructed and successfully tested a golfer’s aid to help less-skilled players. Briefly, the aid includes a distance-finder that determines the precise distance from the golfer’s ball to a target such as a fairway landing area or the hole. The aid obtains data concerning playing conditions (e.g., wind speed and direction, soil moisture, etc.) from a series of sensors distributed throughout a golf course. A global positioning system provides accurate positional coordinates for the ball location and the target location. A user interface allows manual input of situational data (e.g., ball in divot) and permits the user to override system settings and sensor data. The golfer’s aid also includes computer memory that stores performance data calibrated to a specific golfer. In use, a digital processor determines a suggested play based on playing conditions and golfer skill level, and automatically displays information concerning the suggested play (e.g., recommended golf club and preferred line of flight for the ball). Other information can be displayed in reply to user requests.
Kat comes to you in September 2001 and asks you to prepare and file a patent application on her behalf. She informs you that she has shown the golfer’s aid only to her caddie and only under terms of strict confidentiality, and that she finalized the design on June 5, 2001. Her golfer’s aid has not been sold or offered for sale. She also informs you that she derived the general idea for the golfer’s aid, in part, from (1) an article appearing in the July 2000 edition of a golf magazine concerning a commercial distance finder and (2) a customized personal digital assistant (PDA) she saw on a store shelf while traveling in Thailand in April 2001. The distance finder has been available for sale in the United States since August 2000. The customized PDA was first offered for sale in the United States on June 8, 2001, but has not been disclosed in any publication or patent document. You prepare a patent application with claims that you believe are likely to be found patentably distinct over the commercially available distance finder and the golf magazine article, either alone or in combination. The application is filed with the USPTO on September 17, 2001.
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what is enablement?
Enablement is the requirement under 35 usc 112 first paragraph that says a person of ordinary skill in the art must be able to make and use the claimed invention without undue experimentation, after reading the specification. MPEP 2164. The policy goal of this requirement is to show that the applicant actually possessed the invention at the time of filing. And to clearly point out, to the public, the scope of the claimed invention — to put the public on notice. Id.
1.Written Description’s test and goal
“the fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed”
2. Enablement’s goal
“The purpose of the requirement that the specification describe the invention in such terms that one skilled in the art can make and use the claimed invention is to ensure that the invention is communicated to the interested public in a meaningful way. ”
3. Best mode requirement
“The best mode requirement creates a statutory bargained-for-exchange by which a patentee obtains the right to exclude others from practicing the claimed invention for a certain time period, and the public receives knowledge of the preferred embodiments for practicing the claimed invention.”
4. Definiteness requirement (112 2nd para)
“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”