By Nic Bonfiglio. Nicolas Bonfiglio is a 1L JD candidate at the Sandra Day O’Connor College of Law. With an undergraduate degree in electrical engineering he is very interested in patent prosecution and litigation. Having passed the patent bar before entering law school he is ready to start helping inventors protect their ideas. He currently serves on the Special Projects Committee in the McCarthy Institute.
When prosecuting a patent, one of the main questions a patent attorney or agent asks themselves is whether “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 which the claimed invention pertains.”[1] This inquiry is analyzed according to sections 2141-2144 of the Manual of Patent Examining Procedure (“MPEP”) in light of the Supreme Court cases KSR International Co. v. Teleflex Inc. and Graham v. John Deere Co.[2]
The first step in the obviousness test is to determine the scope and content of the prior art (evaluated under 35 U.S.C. § 102), the differences between the claimed invention and the prior art, and the level of ordinary skill in the pertinent art.[3] These are called the Graham Inquiries. They are the lens through which obviousness is evaluated as stated in 35 U.S.C § 103. “Secondary considerations,” such as evidence of commercial success, long-felt but unsolved needs in the pertinent art, failure of others in the art, and unexpected results are also considered on a case-by-case basis along with these factual inquiries.[4] These secondary considerations can be useful counterarguments to obviousness attacks. In addition to these “secondary considerations,” some other defenses to a finding of obviousness include, but are not limited to, the prior art teaching away from the asserted combination and combinations of prior art that do not cover all of the claimed elements.[5]
The second step is to test whether the teaching-suggestion-motivation (“TSM”) test or any KSR rationales apply.[6] These tests are evaluated according to the determinations made in the first step. There are six rationales that the KSR opinion stated could be used to deem a patent obvious. Their exact methods are described in MPEP 2143. However, the main purpose of the KSR decision was not simply to provide six rationales to evaluate the obviousness of an invention, but, more importantly, to establish that the TSM test was being applied too rigidly and that a teaching, suggestion, or motivation is not necessarily required to establish obviousness.[7] Predictable results according to established functions in the prior art are usually enough to prove obviousness.[8]
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. helps illustrate the more relaxed standard presented in KSR. Here, the invention was an HVAC system that used a motor controller that performed sinewave commutation and used independent Q and d axis currents instead of a motor controller that performed square-wave commutation to run the blade.[9] This allowed for quieter and smoother operation of the electric motor.[10] The petitioner argued that Nidec’s patent claims covering this HVAC machine were invalid as obvious over the combination of U.S. Patent No. 5,410,230 (“Bessler”) and a published doctoral thesis by Peter Kocybik.[11] The Bessler patent covered an HVAC system similar to Nidec’s, except for the sinewave commutation and independent Q and d axis currents.[12] The doctoral thesis describes sinewave commutation and the use of independent Q and d axis currents in electric motors.[13] The combination of these two items covers what is claimed in Nidec’s patent. In the inter partes review decision under appeal, the Patent Trial and Appeal Board (“PTAB”) accepted the petitioner’s argument that rectangular currents generate unwanted torque and that sinusoidal currents can mitigate this torque, resulting in quieter and smoother motor operation.[14] Based on this reasoning, the PTAB concluded that the combination of the two prior art references produced “predictable results to address known problems associated with other types of motors.”[15] In other words, there was a known problem that HVAC systems were noisy and jerky, and a person of ordinary skill in the art would have been able to combine the two prior art references to fix this problem. This is exactly in line with KSR’s limited requirements of predictable results according to established functions.
The question in this appeal was simply whether the Bessler patent teaches away from the proposed combination. Nidec argued that it was not obvious to combine these two items because the Bessler patent teaches away from the use of sinewave commutation and independent Q and d axis currents in the HVAC motor.[16] Specifically, Nidec argued that the purpose of the Bessler patent was to reduce complexity by getting rid of a conventional system controller.[17] Nidec also argued its use of sinewave commutation and independent Q and d axis currents in the HVAC motor increased the complexity of the system.[18] As a result, Nidec claimed that because the whole purpose of the Bessler patent was to reduce complexity, it is fundamentally at odds with its own patent. Therefore, the Bessler patent teaches away from Nidec’s patent, and a person of ordinary skill in the art would not have combined the two prior art references.[19] The court rejected this argument. In making their decision, they used the standard set forth in Galderma Labs., L.P. v. Tolmar, Inc., that one of the prior art references has to “criticize, discredit, or otherwise discourage” the combination.[20] The court noted that the Bessler patent never mentioned sinewave commutation, much less “criticize[d], discredit[ed], or otherwise discourage[d]” sinewave commutation.[21] As a result, the court decided that the Bessler patent did not teach away from Nidec’s patent claims.[22] Therefore, the contested claims are still obvious, as decided by the PTAB in the IPR.
The concept of obviousness under 35 U.S.C. § 103 is a critical aspect of patent law that requires careful consideration by patent practitioners and inventors alike. The determination of whether a claimed invention is obvious involves a thorough analysis of the prior art, the differences between the claimed invention and the prior art, and the level of ordinary skill in the pertinent art. After all of these considerations are taken into account and the invention has been further evaluated according to KSR, a decision on obviousness can finally be made.
[1] 35 U.S.C. § 103.
[2] KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398 (2007); Graham v. John Deere Co., 383 U.S. 1 (1966).
[3] United States Patent and Trademark Office, Manual of Patent Examining Procedure § 2141 (9th ed., rev. January 2024).
[4] Id.
[5] Id. at § 2145.
[6] Id. at § 2143.
[7] Id. at § 2141.
[8] Id.
[9] Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1014-16 (Fed. Cir. 2017).
[10] Id. at 1015.
[11] Id.
[12] Id. at 1017.
[13] Id.
[14] Final Written Decision, IPR2014-01121, Paper No. 86, at 18-19 (PTAB May 9, 2016).
[15] Id.
[16] Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017).
[17] Id.
[18] Id.
[19] Id.
[20] Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013).
[21] Nidec, 868 F.3d at 1017.
[22] Id. at 1019.