Level of skill in the art
From Patentbarquestions
Q) Johnnie and Floor Tile (4.02.32a)
32. Johnnie owns a supermarket store in Cleveland, Ohio, and is constantly frustrated
when little children drop their chewing gum on Johnnie’s clean floor in the supermarket.
In her spare time, Johnnie develops an entirely novel type of coating material that she
applies to floor tile. The coating material resists adhesion to chewing gum. In order to
check out the effectiveness of the floor tile coating material, on December 31, 2000, she
secretly covers the floor tiles in her supermarket with the new chewing gum resistant
floor tile coating material. Johnnie is amazed at the results inasmuch as cleaning the
floor was never easier. On January 30, 2001, Johnnie, satisfied with the experimental use
results, ceased testing the use of the coating material. The ability of the coating material
to withstand chewing gum adhesion continued unabated throughout the remainder of
2001. On January 1, 2002, one of Johnnie’s many customers, James, remarked at how
clean the floor looked. Johnnie then told James of her invention. James thinks for one
moment and suggests that the floor tile coating material may be useful in microwave
ovens, so that food will not stick to the interior sides of the microwave oven. James
discusses getting patent protection with Johnnie. Which of the following is true?
(A) Johnnie could never be entitled to a patent on a floor tile in combination
with a coating material affixed to the outer surface of the tile.
(B) James can be named as a coinventor with Johnnie in a patent application
claiming a microwave oven wherein the internal surfaces of the oven are
coated with the coating material.
(C) Since for one year Johnnie told nobody that the floor tile in her
supermarket contained the new chewing gum resistant coating material,
she would never be barred from obtaining patent protection for the floor
coating material.
(D) Use of the floor tile coating material in microwave ovens would have been
obvious to one of ordinary skill in the art, since James thought of it within
seconds after first learning of the floor tile coating material, and James
was not skilled in the art.
(E) The floor tile having the coating material affixed to the outer surface of
the tile, an article of manufacture, would not be patentable as of January 1,
2002 inasmuch as the article was in public use on the supermarket floor
for one year.
32. ANSWER: (B). Since Johnnie developed the material and James thought of the idea to use
it in microwave ovens, they rightfully could be considered coinventors of the new article of
manufacture. As to (A) and (C), public use began on when the experimental use ended on
January 30, 2001, and occurs even when the public is unaware that they were walking on the
developed material since the material was used in a public place. As to (D), even though James
only took a second to think of the idea, he is entitled to receive a patent unless it was obvious to
one of ordinary skill in the art. Nothing in the prior art revealed that it was obvious to use the
material in microwave ovens. As to (E), the article of manufacture is not barred even though the
floor material itself cannot be patented. Johnnie conducted an experimental use of the article
from December 31, 2000 through January 30, 2001. Thereafter, Johnnie had one year from the
end date of the experimental use to file a patent application for the article. Johnnie may file a
patent application before January 30, 2002.
Q) Obviousness (10.01.30a)
30. Which of the following is most likely to be considered in a proper obviousness
determination?
(A) Evidence demonstrating the manner in which the invention was made.
(B) Evidence that a combination of prior art teachings, although technically
compatible, would not be made by businessmen for economic reasons.
(C) Evidence demonstrating the level of ordinary skill in the art.
(D) Evidence that one of ordinary skill in the art, after reading Kat’s application,
would readily be able to make and use Kat’s invention without undue
experimentation.
(E) Evidence that the distance finder described in the July 2000 golf magazine has
enjoyed great commercial success.
30. ANSWER: The most correct answer is (C). The level of ordinary skill in the art is one of
the factors that must be considered in any obviousness determination. Graham v. John Deere,
383 U.S. 1, 148 USPQ 459 (1966). (A) is not the best answer because 35 U.S.C. § 103
specifically states that patentability shall not be negated by the manner in which the invention
was made. (B) is not the best answer because economic unfeasibility is not a basis for a
determination of nonobviousness. See MPEP § 2145 VII. (D) is directed to the issue of
enablement, not obviousness. (E) is wrong because the commercial success of the prior art
distance finder is not relevant (although commercial success of Kat’s invention would be
relevant).
