are Your Patent Claims Obvious? Board of Patent Appeals Issues Obviousness Decision

MARK TERRY, ESQ.

Patent claims may be obvious when they combine familiar elements according to known methods and produce only predictable results. The Supreme Court’s KSR decision remains central to that analysis.

In Ex Parte Constantinidis, the applicant challenged an Examiner’s combination of two semiconductor references. The Board concluded that the references addressed related technologies and that the proposed combination produced an expected result.

The difficult part of many obviousness disputes is defining what a person of ordinary skill would have known and whether the result would truly have been predictable. Those questions are often technical and fact dependent.

A useful response may focus on an unexpected result, a missing limitation, incompatibility between the references, a lack of reason to combine, or evidence showing that the proposed modification would not have worked as asserted.

Combining known components is not automatically unpatentable, but a claim is vulnerable when the combination performs only the expected function of each component without producing a meaningful technical difference.