Section 103 and Non-Obviousness Post-AIA

Navigating Timing Changes, Federal Court Treatment, and Secondary Considerations to Meet Patent Validity Requirements

Recording of a 90-minute premium CLE webinar with Q&A

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Conducted on Thursday, July 23, 2015

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Course Materials

This CLE course will provide guidance to patent counsel regarding the impact of the Leahy-Smith America Invents Act (AIA) on Section 103 and non-obviousness. The panel will offer best practices for meeting the non-obviousness requirement for patent validity.


The America Invents Act (AIA) overhauled the U.S. patent law system with the most sweeping changes in decades. Those changes have impacted Section 103 non-obviousness, most significantly in the shift in timing of the obviousness determination, but also in the creation of new post-grant administrative proceedings in which Section 103 challenges may be raised. Practitioners now face the possibility of an obviousness determination by one or both of two tribunals, the courts and the Patent Trial and Appeal Board (PTAB).

Further, the Federal Circuit, which is the court of appeal for both district courts and PTAB, has recently decided some important cases on the issue of non-obviousness, including Allergan v. Sandoz (Fed. Cir. 2013), which demonstrates how thin the line between obviousness and non-obviousness can be.

In addition, there are now over two years of decisions from PTAB on obviousness issues where determinations are made in the context of a lower burden of proof, no presumption of validity for issued claims, and a broadest reasonable claim construction.

Patent counsel must understand the changes impacting the patent validity and patentability requirements, particularly non-obviousness, and how the courts and PTAB have treated the issues post-KSR. Objective evidence of nonobviousness is often relevant to an obviousness analysis, but patent owners have had a particularly difficult time persuading PTAB that the objective evidence is sufficient to show nonobviousness, mainly because of a failure to establish a nexus between the objective evidence and the merits of the claimed invention.

Listen as our authoritative panel examines Section 103 and non-obviousness post-AIA, discusses recent court treatment of the non-obviousness requirement, as well as secondary considerations involved in the non-obviousness determination. The panel will outline their best approaches for meeting patent validity requirements related to non-obviousness.



  1. Section 103 and non-obviousness
  2. Recent court treatment
  3. Best practices for meeting the non-obviousness requirement


The panel will review these and other key questions:

  • How has the AIA impacted the determination of obviousness?
  • How has the Federal Circuit treated the issue of non-obviousness?
  • How has PTAB treated obviousness issues?
  • What practices should counsel employ in order to meet the non-obviousness requirement?


Irving, Thomas
Thomas L. Irving

Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Arner, Erika
Erika H. Arner

Finnegan Henderson Farabow Garrett & Dunner

Ms. Arner practices patent prosecution management, client counseling, and litigation and helps clients establish...  |  Read More

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