To qualify for a patent, an invention must be both novel and nonobvious.
Novelty requires that the invention differ in some way from the prior art, such as earlier patents and published materials. Nonobviousness requires that there be more than just a difference, such as an element of discovery, or a difference that the prior art does not suggest to a person well-versed in the relevant technology.
Many inventors may not recognize that their invention meets these requirements, since seemingly trivial differences are commonly thought to be insufficient, and some variations may not be recognized as differences at all. The case of Osram Sylvania, Inc. v. American Induction Technologies, Inc. (AITI) demonstrates that patentable differences — i.e.,those that meet both novelty and nonobviousness — can be very small indeed.
Some differences — for example, replacing one functional material in a composition with another functional material that is unrelated to the first in either molecular structure or known properties without losing the usefulness of the composition — are clearly significant, and possess both novelty and nonobviousness. Other differences — for instance, a small change in a reaction temperature, in the proportions of components in a composition, or in the physical dimensions of a piece of equipment — may seem trivial, and even inventors who recognize the novelty of such changes often do not realize that the changes are not obvious.
An invention, however, should not be dismissed as obvious simply because the difference between it and the prior art seems small. Additional information about the difference and its effects, often in the form of test data, can show that even the smallest difference is not obvious. If, for example, the data show that the change produces an unexpected improvement in functionality or utility (e.g., greater efficiency, longer life, or higher yield or purity) of a nature or to a degree that one would not otherwise expect, then a case for nonobviousness can be made. Evidence of an unexpected result typically requires a direct comparison, such as parallel tests where the only parameter varied is the one in which the claimed difference resides.
Whether the difference is inherently nonobvious or requires comparative test data to show its nonobviousness, nonobviousness can only be assessed when there is a difference to assess. Thus, novelty is a threshold requirement. An invention that is deemed to be “anticipated” (i.e., lacking novelty) will be denied a patent without consideration of any explanations or test data that the patent applicant might offer to establish nonobviousness.
In the Osram case, the invention is within the scope of the prior art. Both the invention and the prior art cite the same parameter but the invention assigns the parameter a range that is narrower than the range in the prior art.
Osram’s invention is an electrodeless fluorescent lightbulb whose components include a closed-loop, tubular lamp envelope containing mercury vapor and a buffer gas, a transformer core surrounding a portion of the loop, an input winding on the transformer core, and a radio-frequency power source coupled to the input winding to supply energy to the mercury vapor and buffer gas. By themselves, these features were not new, and fluorescent lightbulbs containing them had been previously patented by General Electric (GE). Osram claimed, however, that by limiting the buffer gas to a pressure of less than 0.5 torr and using a power source that produces a discharge current of 2 amperes or greater in the lamp envelope, its bulb produces higher output and has a higher efficiency and longer operating life.
When Osram sued AITI for patent infringement, AITI responded that Osram’s invention was anticipated by the prior art — i.e., one of the GE patents, which disclosed all of the elements of Osram’s invention, including a low-pressure buffer gas. The GE patent did not specifically cite the Osram range of 0.5 torr or less, however, and instead cited the range as “approximately 1 torr or less.” AITI filed a motion for summary judgment (a judgment to be rendered independently of any comparative data or other testimony presented by Osram) on the grounds that the GE patent anticipated the Osram patent. AITI asserted that the GE range encompassed the Osram range and was so close to it that it rendered the Osram patent invalid.
The trial court granted the summary judgment, but the appeals court overturned that decision and sent the case back to the trial court for a full hearing on the obviousness question. This will allow Osram to present testimony showing that bulbs with buffer gas pressures of 0.5 torr or less are superior to those with buffer gas pressures between 0.5 torr and 1.0 torr, thereby demonstrating that the difference is a nonobvious one and upholding the validity of its patent.
Thus, a small difference, even one involving a slight narrowing of a range, can meet both the novelty and nonobviousness requirements. With a small difference, however, test data or other evidence of unexpected results may be needed to fully establish nonobviousness.