Patentability: The Nonobviousness Requirement of 35 U.S.C. 103

By Gene Quinn
June 17, 2017

NonobviousnessThere are essentially five patentability requirements. In order for a claimed invention to be patented each of these requirements must be satisfied. The claimed invention must be (1) comprised of patent eligible subject matter; (2) useful; (3) novel; (4) nonobvious; and (5) adequately described. The first two of these requirements were recently discussed in Patentability Overview: When can an Invention be Patented? The novelty requirement was recently discussed in Patentability: The Novelty Requirement of 35 U.S.C. 102. This article picks up with our patentability overview and discussed the law associated with the nonobviousness requirement.

The nonobviousness requirement is a critical element to patentability. In essence, even if the applicant can demonstrate patentable subject matter, utility and novelty, the patent will not issue if the invention is trivial. In order to determine if an invention is trivial it is necessary to see if there was motivation in the prior art to do what the inventor has done, or if there is some reasonable expectation that the combination of elements would achieve a successful result. If the prior art does not explicitly, and with identity of elements, teach the invention, the patent applicant may still be thwarted if there are a number of references that, when combined, would produce the claimed invention.

A patent may not be obtained if it contains only obvious differences from prior art. Today, under the U.S. first to file system, an invention is obvious if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time a patent application is filed describing the invention. This is a major shift from the first to invent laws that applied prior to March 16, 2013, which asked whether at the time the invention was made whether it would have been obvious to a person having ordinary skill in the art to which said subject matter pertains. For more on first to file please see: First to File Means File First! and First to File Becomes Law.

The obviousness inquiry is highly fact specific and not susceptible to per se rules. For example, a patent infringement defendant or one challenging a patent at the Patent Office cannot simply present evidence of anticipation and then say “ditto” to establish obviousness. Nevertheless, for a patent to be nonobvious it must display “ingenuity beyond the compass” of a person of ordinary skill in the art.

In a nutshell, an invention would be obvious when someone knowledgable about the area would look at your invention and consider it to be already known; not exactly but rather known if one were to combine several references.  In other words, the predictable and non-unique combination of what multiple references teach would yield your invention. The prototypical example is when you have invented A+B. A is known in the prior art, and B is known in the prior art. Upon looking at A and then looking at B, would someone of skill in the art consider A+B to be already known? If the answer is yes, then A+B is obvious. If the answer is no, then A+B is not obvious.

Sometimes combining things is not readily apparent, sometimes it is. That is what makes obviousness a tricky inquiry. Obviousness is a fact based and subjective inquiry, and in my experience many inventors are simply not capable of making an honest determination.  Frequently inventors are blinded by the fact that no single reference describes the invention in total.  That is the first step in determining whether you can obtain a patent, but that exact identity inquiry relates to novelty.  Obviousness is the next step in the road to patentability, and a significant hurdle.

While the obviousness inquiry asks about whether something is a trivial, non-inventive combination of prior art references, the inquiry is not boundless.  For example, hindsight is not permissible.  Therefore, in order to demonstrate obviousness the patent examiner would need to establish that there existed some reason to anticipate that one could successfully combine A and B to result in A+B. Therefore, when a patent examiner says that A+B is obvious and would work you might consider experimenting and attempting to combine A+B to see if it does actually work as the examiner predicted. If A+B cannot be combined as the examiner hypothesized, or if A+B does not work as expected or predicted by the examiner, that would be evidence to rebut the obviousness rejection.

The obviousness determination is based on four factual inquiries: (1) the differences between the prior art and challenged claims; (2) the level of ordinary skill in the field of the pertinent art at the time of plaintiff’s invention; (3) what one possessing that level of skill would have deemed to be obvious from the prior art reference; and (4) objective evidence of obviousness or nonobviousness. Notwithstanding these factual inquiries, objective evidence of obviousness or nonobviousness MUST also be considered before reaching a conclusion on obviousness. Objective evidence (or secondary considerations as they are sometimes called, includes: (1) the commercial success of the invention; (2) whether the invention satisfied a long felt need in the industry; (3) failure of others to find a solution to the problem at hand; (4) unexpected results; (5) copying by others; (6) licensing by others; and (7) skepticism of experts. Not all of these secondary considerations of nonobviousness are of equal strength and persuasiveness. Long felt need in the industry when coupled with failure of others is quite strong, while commercial success might not be quite as useful as you think because the success in commerce could be potentially explained by marketing prowess and business acumen and not any particular technological advance.

In determining what would have been obvious to a person of ordinary skill in the art, the decision maker may also examine the following factors: (1) type of problems encountered in the art; (2) prior art solutions to those problems; (3) rapidity with which innovations are made; (4) sophistication of the technology; (5) educational level of the inventor; and (6) educational level of active workers in the field.

The nonobviousness requirement is one of the most difficult concepts to explain because as hard as decision-makers may try the ultimate conclusion necessarily incorporates a certain amount of subjectivity. With that in mind, to get a complete picture of obviousness it will be helpful to do further reading on this unfortunately difficult topic. Please see  Understanding Obviousness and When is an Invention Obvious?

CLICK HERE to CONTINUE READING… Up next is the final installment of our Patentability Overview series, which ends with a discussion of the description requirement of 35 U.S.C. 112(a). 

 

For more information on patent basics please see:

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 2 Comments comments.

  1. Viara Van Raad June 19, 2017 7:33 pm

    The article is very useful for understanding the rules of so named “Claim Rejections 35 USC para 103” often raised in the Examination Reports type Non-Final and Final Rejection during USPTO prosecution. The elements and the steps that the USPTO examiners must consider during the examination of non-obviousness (or inventive step in other jurisdictions) are well detailed in this article. I may add that the element of the timing (i.e. at the time of filing) has become more and more crucial in the evaluation of non-obviousness, especially in areas where the technology has rapidly developed, for example in telecommunications and computer applications and modelling. From my experience, the person skilled in the art, at the time of filing ( after 2013) would have had much more rapid access to information and more dynamic change of what is the common general knowledge than the person skilled in the art in the 90’s, for example. I also think the this needs an emphasis, esp. nowadays.

  2. PTOindentured July 10, 2017 9:34 am

    35 USC 103 + BRI = any US patent deemed valuable ‘is obvious’, or shall be IPR-flogged until patent owner relents, receives zero, or better yet, pays legal fees.

    = Efficient infringement (theft)

    = The best US patent system money can buy