[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