2158 AIA 35 U.S.C. 103 [R-07.2022]

[Editor Note: This MPEP section is only applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2141–MPEP § 2146 for information on pre-AIA 35 U.S.C. 103 and AIA 35 U.S.C. 103.]

AIA 35 U.S.C. 103 sets forth the nonobviousness requirement for patentability. There are, however, some important changes from pre-AIA 35 U.S.C. 103.

The most significant difference between the AIA 35 U.S.C. 103 and pre-AIA 35 U.S.C. 103(a) is that AIA 35 U.S.C. 103 determines obviousness before the effective filing date of the claimed invention, rather than as of the time that the claimed invention was made. Under pre-AIA examination practice, the Office uses the effective filing date as a proxy for the invention date, unless there is evidence of record to establish an earlier date of invention. Thus, as a practical matter during examination, this distinction between the AIA 35 U.S.C. 103 and pre-AIA 35 U.S.C. 103 will result in a difference in practice only when the case under examination is subject to pre-AIA 35 U.S.C. 103 , and there is evidence in the case concerning a date of invention prior to the effective filing date. Such evidence is ordinarily presented by way of an affidavit or declaration under 37 CFR 1.131.

Next, the language of AIA 35 U.S.C. 103 differs from that of pre-AIA 35 U.S.C. 103 in that AIA 35 U.S.C. 103 requires consideration of “the differences between the claimed invention and the prior art,” while pre-AIA 35 U.S.C. 103 refers to “the differences between the subject matter sought to be patented and the prior art.” This difference in terminology does not indicate the need for any difference in approach to the question of obviousness. As pointed out by the Federal Circuit, “[t]he term ‘claims’ has been used in patent legislation since the Patent Act of 1836 to define the invention that an applicant believes is patentable.” Hoechst-Roussel Pharms., Inc. v. Lehman, 109 F.3d 756, 758, 42 USPQ2d 1220, 1222 (Fed. Cir. 1997) (citing Act of July 4, 1836, ch. 357, § 6, 5 Stat. 117). Furthermore, in Graham v. John Deere, the second of the Supreme Court’s factual inquiries (the “Graham factors”) is that the “differences between the prior art and the claims at issue are to be ascertained.” 383 U.S. 1, 17, 148 USPQ 459, 467. Thus, in interpreting 35 U.S.C. 103 as enacted in the 1952 Patent Act—language that remained unchanged until enactment of the AIA—the Court equated “the subject matter sought to be patented” with the claims.

Further, AIA 35 U.S.C. 103 does not contain any provision similar to pre-AIA 35 U.S.C. 103(b). Pre-AIA 35 U.S.C. 103(b) is narrowly drawn, applying only to nonobviousness of biotechnological inventions, and even then, only when specifically invoked by the patent applicant. Pre-AIA 35 U.S.C. 103(b) provides that under certain conditions, “a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection [103(a)] of this section shall be considered nonobvious.” In view of the case law since 1995, the need to invoke pre-AIA 35 U.S.C. 103(b) has been rare. As stated in MPEP § 2147, in view of the Federal Circuit’s decisions in In re Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed. Cir. 1995) and In re Brouwer, 77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996), the need to invoke pre-AIA 35 U.S.C. 103(b) rarely arose. Those cases continue to retain their validity under the AIA.

AIA 35 U.S.C. 103 also eliminates pre-AIA 35 U.S.C. 103(c), but corresponding provisions have been introduced in AIA 35 U.S.C. 102(b)(2)(C) and 102(c). Pre-AIA 35 U.S.C. 103(c) applied if subject matter qualified as prior art only under pre-AIA 35 U.S.C. 102(e), (f), and/or (g), and only in the context of obviousness under pre-AIA 35 U.S.C. 103(a). If subject matter developed by another person was commonly owned with the claimed invention, or if the subject matter was subject to an obligation of assignment to the same person, at the time the claimed invention was made, then pre-AIA 35 U.S.C. 103(a) did not preclude patentability. Furthermore, under pre-AIA 35 U.S.C. 103(c), if a joint research agreement was in place on or before the date that the claimed invention was made, the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement, and the application for patent disclosed or was amended to disclose the names of the parties to the joint research agreement, common ownership or an obligation to assign was deemed to exist. As discussed previously, AIA 35 U.S.C. 102(b)(2)(C) and 102(c) expand on this concept. Under the AIA, the common ownership, obligation to assign, or joint research agreement must exist on or before the effective filing date of the claimed invention, rather than on or before the date the invention was made. If the provisions of AIA 35 U.S.C. 102(b)(2)(C) are met, a disclosure is not prior art at all, whereas under pre-AIA 35 U.S.C. 103(c) , certain prior art merely was defined as not precluding patentability. Finally, disclosures excepted as prior art under AIA 35 U.S.C. 102(b)(2)(C) and 102(c) may not be applied in either an anticipation or an obviousness rejection, or as a secondary reference in a non-statutory double patenting rejection. In short, when an exception applies under the AIA, a reference may not be used for any purpose which requires prior art. However, the claims of such disclosures could be the basis for statutory double patenting or non-statutory double patenting rejections.

Generally speaking, and with the exceptions noted herein, pre-AIA notions of obviousness continue to apply under the AIA. AIA 35 U.S.C. 102(a) defines what is prior art both for purposes of novelty under AIA 35 U.S.C. 102 as well as for purposes of obviousness under AIA 35 U.S.C. 103. See Hazeltine Res., Inc. v. Brenner, 382 U.S. 252, 256, 147 USPQ 429, 430 (1965) (a previously filed patent application to another pending in the Office, but not patented or published, at the time an application is filed constitutes part of the “prior art” within the meaning of 35 U.S.C. 103). Thus, if a document qualifies as prior art under AIA 35 U.S.C. 102(a)(1) or (a)(2), and is not subject to an exception under AIA 35 U.S.C. 102(b), it may be applied for what it describes or teaches to those skilled in the art in a rejection under AIA 35 U.S.C. 103. This is in accordance with pre-AIA case law indicating that in making determinations under 35 U.S.C. 103, “it must be known whether a patent or publication is in the prior art under 35 U.S.C. 102.” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568, 1 USPQ2d 1593, 1597 (Fed. Cir. 1987). However, while a disclosure must enable those skilled in the art to make the invention in order to anticipate under 35 U.S.C. 102, a non-enabling disclosure is prior art for all it teaches for purposes of determining obviousness under 35 U.S.C. 103 . Symbol Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247 (Fed. Cir. 1991); Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551, 13 USPQ2d 1301, 1304 (Fed. Cir. 1989) (“Even if a reference discloses an inoperative device, it is prior art for all that it teaches.”). Office personnel should continue to follow guidance for formulating an appropriate rationale to support any conclusion of obviousness. See MPEP § 2141 et seq. and the guidance documents available at www.uspto.gov /patents/laws /examination-policy /examination-guidance-and-training-materials.