The Significance of “Could” vs. “Would” When Assessing Obviousness Rejections

By: Zachary Schaefer, Francesca Giovannini, Han-Mei Tso, and Mutsumi Fukuoka


USPTO PERSPECTIVE

United States patent law does not allow the patenting of an invention if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art.  To arrive at such an obviousness determination, an Examiner may combine the teachings of multiple references, but an essential component of such a combination is that the Examiner must make clear why a skilled artisan would have been motivated to combine the references.  Simply put, it is not enough that the references could have been combined, there must be an articulated reasoning behind why they would have been combined.  Such reasoning may come from the general knowledge of a skilled artisan, from a prior art reference, and/or from the nature of the problem to be solved.   Thus, when evaluating the validity of an obviousness rejection that combines two or more references, it is important to make sure that the Examiner has provided a valid reasoning for why a skilled artisan would have combined the references in the manner suggested by the Examiner. It is possible to rebut the combination if the Examiner merely makes general/conclusory statements, if a prior art reference in some way teaches away from the combination, or if the prior art references are directed towards unrelated fields of which skilled artisans would not likely be aware.  The U.S. Court of Appeals for the Federal Circuit recently decided an appeal (PGS Geophysical AS v. Iancu, No. 16-2470 (Fed. Cir. 2018)) that discusses the motivation to combine issue in further detail, in particular, how seemingly vague and open-ended language in a specification may be viewed as a motivation or suggestion to look to improve/modify the taught subject matter.


EPO PERSPECTIVE

A “would approach” is also followed by the Boards of Appeal of the European Patent Office (EPO) in the last stage of the problem-and-solution approach applied to assess inventive step. Indeed, in the problem-and-solution approach, the following three stages are implemented:

(i) Determining the closest prior art, i.e., the prior art reference disclosing the combination of features which constitutes the most promising starting point for a development leading to the claimed subject-matter (generally, it is a reference directed to a similar purpose or effect as the claimed subject-matter),

(ii) Formulating the objective technical problem to be solved, i.e., the aim and task of modifying or adapting the closest prior art to provide the technical effects attained by the distinguishing technical features over the closest prior art, and

(iii) Considering whether or not the claimed subject-matter, starting from the closest prior art and faced with the objective technical problem, would have been obvious to the skilled person.

Thus, according to the EPO, the question to be answered is not whether there is any teaching in the prior art as a whole that could have prompted the skilled person, faced with the objective technical problem, to modify or adapt the closest prior art while taking account of that teaching, thereby arriving at something falling within the terms of the claims, but rather whether there is any teaching in the prior art as a whole that would have prompted the skilled person to do so. In other words, also before the EPO, the point is not whether the skilled person could have arrived at the claimed subject-matter by adapting or modifying the closest prior art, but whether he or she would have done so because the prior art incited him or her to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage. This principle has been established since decision T 2/83 and is still widely followed.


SIPO PERSPECTIVE

The State Intellectual Property Office of China (SIPO) also takes a “would approach” when it comes to determining whether a claimed invention is obvious to a person skilled in the art. The Chinese patent law defines the inventiveness of a claimed invention as having prominent substantive features and representing a notable progress. A claimed invention is naturally deemed to represent a notable progress when it is found to have prominent substantive features, so the assessment normally lies with the latter. A claimed invention is determined to have prominent substantive features if it is non-obvious as compared with the prior art. Like the European Patent Office, SIPO takes a problem-and-solution approach, or colloquially the three-step method as explained below, to assess whether a claimed invention is obvious.

(i) Determining the closest prior art 

The closest prior art refers to a technical solution in the prior art that is the most closely related to the claimed invention, which shall be the basis for determining whether or not the claimed invention has prominent substantive features.

(ii) Determining the distinguishing feature(s) of the invention and the technical problem actually solved by the invention – 

During examination, the Examiner shall objectively analyze and determine the technical problem actually solved by the invention. For this purpose, the Examiner shall first determine the distinguishing feature(s) of the claimed invention as compared with the closest prior art and then determine the technical problem that is actually solved by the invention on the basis of the technical effect of the distinguishing feature(s). The technical problem actually solved by the invention, in this sense, means the technical task in improving the closest prior art to achieve a better technical effect.

(iii) Determining whether or not the claimed invention is obvious to a person skilled in the art

At this step, the Examiner shall make a judgment, starting from the closest prior art and the technical problem actually solved by the invention, as to whether or not the claimed invention is obvious to a person skilled in the art. In the course of judgment, what is to be determined is whether or not such a technical motivation in the prior art exists as to apply the distinguishing feature(s) to the closest prior art in solving the existing technical problem (that is, the technical problem actually solved by the invention), where such motivation would prompt a person skilled in the art, when confronted with the technical problem, to improve the closest prior art and thus reach the claimed invention. If such a technical motivation in the prior art exists, the invention is obvious and thus fails to have prominent substantive features.


JPO PERSPECTIVE

A “could-would approach” is also the point at issue in determination of inventive step by the Japanese Patent Office (JPO).

To determine inventive step, “the Examiner selects the prior art most suitable for the reasoning (hereinafter referred to as “the primary prior art”), and determines whether it is possible to reason that a person skilled in the art would easily arrive at the claimed invention from the primary prior art.”  See Section 2, Chapter 2, Part III in Examination Guidelines.

Actually, Examination Guidelines written in Japanese do not specifically mention whether “could” is enough or “would” is required to determine non-existence of inventive step.

In 2008, the Intellectual Property High Court firstly expressed its view on this point (2008 (Gyo-Ke) 10096).  It stated that “in order to make a determination that a person ordinarily skilled in the art could have easily conceived of the relevant invention from the prior art, it is insufficient that it can be presumed that such person would have made an attempt by which he/she could reach the characteristics of the invention, but it is necessary that there is an implication or the like suggesting that he/she must have made such an attempt with the intention of reaching the characteristics of the invention.”  This decision is followed by a number of similar decisions (eg. 2009 (Gyo-Ke) 10223, 2010 (Gyo-Ke) 10187) and seems to be widely supported.

Therefore, we should probably think that at least “would” is required to determine non-existence of inventive step in Japan.  In other words, if it can be said that a person skilled in the art “would” (or possibly “should”) have attempted to reach the claimed features in view of prior art, inventive step may be denied.