Patent Non-Obviousness

• Author: Arti Kane
• Pages: 7-9

7

Patent Non-Obviousness

35 U.S.C. § 103—CONDITIONS FOR

PATENTABILITY; NON-OBVIOUS

SUBJECT MATTER

A patent for a claimed invention may not be obtained, notwith-

standing that the claimed invention is not identically disclosed as

set forth in Section 102, if the differences between the claimed

invention and the prior art are such that the claimed invention as

a whole would have been obvious before the effective filing date

of the claimed invention to a person having ordinary skill in the art

to which the claimed invention pertains. Patentability shall not be

negated by the manner in which the invention was made.

Non-obviousness rejections are very common in prosecution of pat-

ent applications before the United States Patent and Trademark Office.

Thus, this somewhat subjective requirement is a key issue in almost

every patent case. An examiner is not allowed to simply conclude

that an invention is obvious; instead, an examiner must show specific

documents that set out the various elements of the invention, along

with some reason to combine the different documents to arrive at the

invention. On top of that, examiners are given a very limited time to do

a search for the documents. Moreover, it is the burden of the examiner

to show an invention is obvious. For that reason inventions that may

seem obvious to a layperson are sometimes issued patents.

TEACHING–SUGGESTION–MOTIVATION TEST

Further, the combination of previously known elements can be consid-

ered obvious. As stated by Winner Int’l Royalty Corp. v. Wang, 202 F.3d

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