While only a limited number of appellate decisions discuss obviousness in the context of software patents, there is some reason to believe that the court is imposing a rather strict standard. The first case involving the obviousness of a software-implemented invention is, perhaps surprisingly, a Supreme Court case from the 1970s. In Dann v. Johnston, [FN48] the Court held a patent on a 'machine system for automatic record-keeping of bank checks and deposits ' invalid for obviousness. [FN49] The Court took a rather broad view of obviousness in the computer industry, focusing on whether systems analogous to the patentee's had been implemented in computers before, rather than analyzing the precise differences between the patentee's program and the prior art programs. [FN50] The clear implication of the opinion is that if a reasonably skilled programmer could produce a program analogous to the patented one, and if there was motivation in the prior art to do so when the program was written, the patented program is obvious and thus not patentable.

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The Federal Circuit has found software patents invalid for obviousness in two recent cases, Lockwood v. American Airlines [FN51] and Amazon.com v. Barnes & Noble. [FN52] Neither case opined directly on the ease with which computer programs could be produced, but both viewed obviousness as a rather substantial hurdle to patenting software. [FN53] In Lockwood, the question was whether the defendant's own system made the patented claims obvious. The system had been in public use, but American Airlines had kept the workings of the system secret. Nonetheless, because Lockwood's patent was claimed in broad functional terms, the court found that similarly broad functional disclosures in the prior art were sufficient to render the patent obvious. While Lockwood argued that the information provided was not sufficient for one skilled in the art to make and use the system, the court pointed out that it was as detailed as the information Lockwood's own patent provided. [FN54] Thus, the patent's meager disclosure of technical details indirectly contributed to the court's finding of obviousness. In Amazon.com, the court found Amazon's 'one-click' shopping feature to be obvious in view of certain references describing the desirability or feasibility of such a system in general terms, and one prior system that delivered data online in response to a mouse click. The court rejected arguments that the one-click feature was technically difficult to implement, relying on the fact that the prior art generally described such a system as both desirable and feasible. The court also gave surprisingly short shrift to Amazon's evidence of secondary considerations of nonobviousness. [FN55]

The likely result of the Federal Circuit's focus on high-level functionality is that improvements in programming techniques will be found obvious and thus not patentable in view of prior art that solved the same basic problem in a somewhat different way. This was arguably the result in both Dann and Lockwood, [FN56] and it seems to follow from the court's view in the section 112 cases that programmers are an extremely skilled bunch needing little or no guidance from the prior art in order to implement a new idea in software. While disclosure is a minimal hurdle for software patents, then, obviousness can be a rather tough one. [FN57]