[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] ----------------------------------------------------------------------- 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. ----------------------------------------------------------------------- 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 [email protected]. 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 [email protected], 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