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Obviousness §103 Outline

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This is an extract of our Obviousness §103 document, which we sell as part of our Patent Law Outlines collection written by the top tier of Harvard Law School students.

The following is a more accessble plain text extract of the PDF sample above, taken from our Patent Law Outlines. Due to the challenges of extracting text from PDFs, it will have odd formatting:

SS 103 Obviousness

1. Section 103: Obviousness a. ORDER OF ANALYSIS i. Determine scope of prior art ii. Apply In re Clay iii. Apply Graham factors

1. Scope and content of the prior art

2. The difference between PA and the claimed invention a. This is the new important part: How do they differ. b. If a piece of PA has ALL of the pieces in it, it's novelty not obviousness. (102) c. 103: Here's the different pieces of prior art, how they are similar/differ.

3. The level of ordinary skill in the art a. Hard to really know what this means; but have to do it. Make something up. (Won't be relevant in the test because you won't really know.)

4. ? THEN, would POSA think it obvious?
a. The first 3steps FRAME the inquiry. b. Is the combination of PA1 and PA2 obvious?
i. Pick a starting point ("A"); is it obvious to pick that starting point?

1. Prior Art "A" has X but not Y or Z.

2. Prior art B Has Y; and C has Z. iv. Go through TSM

1. Actually in the prior art; level of ordinary skill; nature of the problem to be solved; solving a similar problem; using one element to solve a similar problem v. Go through reasonable expectation of success (for some complicated fields, particularly Biotech)

1. Was there a reasonable expectation that the invention would form and have its useful properties when R&D project was initiated?
vi. Go through secondary factors if prima facie obvious (OR GENUS/SPECIES PATENT)

1. Unexpected results (And the boundary you draw is important) a. ** Esp. for Pharma

2. Commercial success (Nexus Requirement)

3. Long-felt, unresolved needs

4. Failure of others

5. Simultaneous invention by others

6. Prior art teaches away from the claimed language

7. Copying of claimed language by others

8. "etc." vii. Something about falling within / overlapping ranges.


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