As of October 31, 2013, the Project on Commercializing Innovation is no longer active.
The Project is succeeded by the Hoover IP² Working Group on Intellectual Property, Innovation, and Prosperity. Hoover IP²

Chapter Five – Nonobviousness

Chapter five covers the requirement of nonobviousness, which originates from § 103.  The nonobviousness analysis was developed into a four factor test in Graham v. John Deere.  As mentioned in chapter four, that test is built on the prior art identified by § 102.  The introductory article by Judge Rich gives some important background on the motivation behind introducing a statutory requirement of nonobviousness and how that requirement differs from the common law concept of invention originating from Hotchkiss v. Greenwood in 1850.

The precise nature of the Graham test has changed recently with the Supreme Court’s decision in KSR v. Teleflex.  That case involves several pieces of prior art, and it may be helpful to read through the patents before reading the case.  The patents in the case are primarily mechanical and should be easily understandable, especially by those who have driven a car with adjustable pedals.

For an example of a European patent application, see the materials for Ex Parte Deuel.  Note that the claims themselves are presented in English, German, and French, which are the three working languages of the European Patent Office.


  1. In Broadcom Corp. v. Emulex Corp., (Fed. Cir. Oct. 7, 2013) the Federal Circuit gave guidance on several points of the law of nonobviousness.  First, it may not be obvious for a skilled artisan to combine prior art references that address different problems.  Second, in order to combine references there must be evidence that a person having ordinary skill in the art would have had a “reasonable expectation” that the combination would be successful.  Third, the court reiterated that objective indicia of nonobviousness are vital to avoiding hindsight bias, and they should be considered “part of the obviousness analysis, and not just as an afterthought.”
  2. The Federal Circuit reviews PTO determinations of nonobviousness in reexamination proceedings for substantial evidence.  Nonetheless, in Smith & Nephew, Inc. v. Rea,  (Fed. Cir. July 9, 2013), the court reversed the PTO, holding the invention obvious.


Additional Source Material