Innovators and the practitioners who counsel them are well aware that among the biggest hurdles to overcome in obtaining strong patent protection is convincing a patent examiner that a claimed invention is non-obvious in light of the prior art. 35 U.S.C. § 103. Recently, in Innovention Toys v. MGA Entertainment*, 2011 U.S. App. LEXIS 55664 (Fed. Cir. 2011), which addressed the issue of when prior art is sufficiently relevant to a claimed invention to be considered in a non-obviousness inquiry, the Court of Appeals for the Federal Circuit (“CAFC”) reminded the community of inventors and patent professionals that both it and the Supreme Court have a broad view as to what art would be obvious for an inventor to consider when tackling an unsolved problem.
We discuss the law of “field of endeavor” – which controls the scope of prior art to be considered in a Section 103 analysis, and the takeaways from the Innovention decision.