Chapter Ⅳ　NONOBVIOUSNESS

A.Introduction

Statutorily,Section 103 is closely connected with Section 102 although they are separate and different patentability inquiries.

The novelty inquiry under § 102 looks into“newness”as of a particular date,which is almost absolutely an objective question of fact,although that particular date may be subject to controversy,especially under the first-to-invent scheme.

The obviousness (or nonobviousness depending on which way you look at the same issue) is a whole different issue.It is an issue of law,but the references available for the inquiry must be based on the novelty inquiry,i.e.,any prior art references to be used for obviousness assessment must first qualify for novelty inquiry.For a prior art reference to be relevant under novelty inquiry,each and every limitation of a claim in a patent must be identically found in a prior art reference.If one element is not matched,the claim will pass the novelty inquiry.

Note that the words“element”and“limitation”are synonymous,and sometimes used interchangeably,but in litigation context,“limitation”specifically refers to the element in a claim,as in

A widget comprising: Element A,Element B,and Element C combining A and B.

In referring to non-patent prior art references,and to features in alleged infringing devices,the word“element”is used in place of“limitation”simply because a non-patented device is not a right to exclude,and does not have any limitations like a patent claim.

It has been universally understood that all improvements are not inventions.Some technical improvement may be so trivial that anyone with ordinary skill in the profession,upon some study and consideration required by his trade,will easily realize how to make some technical improvement.An invention,on the other hand,would mean,at least,something more than just that.

Obviousness