Written by Mark Terry   

When are your patent claims obvious in light of the prior art? Is it non-obvious to simply combine two known items in a new way? What is the legal criteria for non-obviousness? As a Florida patent attorney with an active patent prosecution docket, I deal with these issues on a daily basis. Today, the Board of Patent Appeals and Interferences at the United States Patent and Trademark Office issued a straightforward and easy-to-understand decision on this issue. Today’s decision in the case of Ex parte Constantinidis relates, among other things, to the issue of whether the claims of the Appellant were obvious in light of the prior art. The Appellant, NXP Semiconductor, argued that the Patent Examiner erred in rejecting his claims by combining the Tsumura patent with the Tanimoto patent. Specifically, the Appellant argued that the Tsumura patent and the Tanimoto patent are distinctly different and cannot be combined.

The Board of Patent Appeals stated that “the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l., Co. v. Teleflex Inc., 550 U.S. 398 (2007). The Board reviewed the Tsumura and the Tanimoto patents and concluded that Tsumura and Tanimoto patent can, in fact, be combined in a proper way because they were both directed to similar technologies and the combination resulted in an expected result.

This case highlights the difficulty that is often encountered when fighting an Examiner’ rejection based upon 35 U.S.C. § 103 obviousness, where a patent attorney must make conclusions about the knowledge held by a person of ordinary skill in the art and whether a result is expected. People of ordinary skill in an art can have varying degrees of knowledge of certain areas and what one person regards as “expected” may be “unexpected” to another. Because the issues argued in these cases can often be subjective, the final decision is up to the Board’s discretion.

As a Miami patent attorney, I advise my clients that a claim is obvious if you are combining two known devices of methods in a way that results in an expected outcome. An example if an expected outcome would be adding a Bluetooth chip to an electronic device for the purpose of networking the device. The result, networking the device, is expected. If the outcome is not expected to one of ordinary skill in the art, then you may have something that is non-obvious. For example, combining the molecules that comprise minoxidil resulted in a good blood pressure medication. But the hair growth that resulted from the use of minoxidil was unexpected and therefore this combination of molecules is non-obvious and patentable.