What is the test for obviousness under pre-AIA 35 U.S.C. 103(a)?
The test for obviousness under pre-AIA 35 U.S.C. 103(a) is outlined in form paragraph 7.23.fti. This paragraph summarizes the factual inquiries established by the Supreme Court in Graham v. John Deere Co.:
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
- Determining the scope and contents of the prior art.
- Ascertaining the differences between the prior art and the claims at issue.
- Resolving the level of ordinary skill in the pertinent art.
- Considering objective evidence present in the application indicating obviousness or nonobviousness.
The MPEP notes: This form paragraph may be used, if appropriate, in response to an argument regarding the applicability of the factors for determining obviousness.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2148 - Form Paragraphs For Use In Rejections Under Pre - Aia 35 U.S.C. 103,
Patent Law,
Patent Procedure