How to determine obviousness by understanding Technical & Non-Technical Features

Obviousness in patent law refers to the criterion that an invention must meet to be eligible for patent protection. The law specifies that an invention is considered “Obvious” if it would have been easily deduced by a person having ordinary skill in the relevant field at the time of the invention, based on prior art. The concept of obviousness is crucial as it ensures that patents are awarded only to inventions that represent a meaningful technological step rather than to readily apparent or trivial ideas.

Role of Obviousness in Patent Invalidation or Opposition

Obviousness is one of the primary grounds for invalidation or opposition in patent law. When a patent is granted, it is assumed to be novel and non-obvious. However, during invalidation proceedings, challengers can argue that the invention is obvious based on the following:

Prior Art Search: Challengers present prior patents, publications, or other evidence that might show that the invention was an obvious development of what already existed.

Combination of Prior Art: The challenger argues that a skilled person in the field would have combined or modified prior art references to arrive at the claimed invention without undue experimentation.

Non-obviousness Tests: Various tests (such as the Graham Factors in the U.S.) help assess whether the invention is obvious. These include:

• The scope and content of the prior art
• The differences between the prior art and the claimed invention
• The level of skill in the relevant art
• Any secondary considerations, such as commercial success or unexpected results

If the invention is deemed obvious, the patent is invalidated. The subjective nature of the doctrine of obviousness makes it difficult to understand and the most challenging obstacle for inventors. What’s obvious in the technology domain might not be the same in the logistics domain.

Let’s understand how to determine obviousness with an example

For Example: This method refers to the use of a mobile device in facilitating delivery and comprises of the following steps:

1. Product Selection: A customer has to select a minimum of two products that need to be delivered.
2. Data: The mobile device sends information about the products and the mobile device’s location to a centralized server.
3. Location Identification: The server queries a database in order to search pickup locations which stock at least one of the products selected.
4. Optimal Route: The server processes the mobile device’s geographical position and the pickup locations to calculate an optimal delivery route based on the location cache.
5. Route Display: The server transmits the optimal delivery route to the mobile device for display.

Analysis

Step (i): Technical Features

The system is identified as a distributed architecture comprising a mobile device, a server with a cache memory, and a database of pickup points.

Step (ii): Closest Prior Art

Document D1 is the closest prior art. It discloses a delivery method where:

• A user selects a single product for delivery.
• The server identifies the nearest pickup point offering the product and transmits this information to the user.

Step (iii): Disparities in Typical Methods 

The differences between the claimed method and D1 are:

1. Selection of two or more products for delivery.
2. Optimal delivery route picking up several products.
3. Application of a cache memory to temporarily store and access the location coordinates in order to determine the proper route quickly.

Technical And Non-Technical Features:

• Difference (A) and (B): Non-Technical features dealing with the ordering of the delivery route to several products.
• The Difference (C): A technical feature by allowing swift determination of delivery routes through the use of stored location maps.

Step (iii)(c): Formulation of the Objective

“What are the techniques to be employed in order to ascertain an optimal route for multiple products delivery.”

Obviousness Evaluation

1. Adaptation of D1 for Selection: Giving the user the possibility to make multiple selection of products for delivery is a basic development of the approach outlined in D1 where only single product could be selected.
2. This adaptation is of routine nature by way of analogy to D1 server which identified the nearest point for pick up.
3. Cache Memory for Efficiency: A proposal from D2 would be a straightforward one where D2 outlines a travel planning system which incorporates cache memory to remember answers to past questions. This can be usefully incorporated in D1 in respect of routing delivery.