Obvious and non obvious at the same time.

[JimboSlice]

I have a novel improvement to a device where one limitation is shape. The benefit of this shape I want to protect is non obvious. However, after more research I found another benefit of this shape that may be considered obvious. Do I have to disclose the other benefit? Could it potentially cause my application to be rejected?

[Brad]

I would include them both in your application.  You can then decide to only claim the first benefit and not claim the second benefit in the "claims" section.

Also, if your point of novelty is the "shape" you may want to think about doing a Design patent instead.

[JimboSlice]

I would include them both in your application.  You can then decide to only claim the first benefit and not claim the second benefit in the "claims" section.

Also, if your point of novelty is the "shape" you may want to think about doing a Design patent instead.

Thanks for the help. I'm still a bit confused though. A single limitation enables benefit A & B. For most users benefit A is much more important than benefit B. Benefit A is novel and non-obvious. Benefit B is novel but could be considered predictable if combining prior art.

[Brad]

You would not be claiming the "benefits" you would only be claiming the actual structural pieces or features that are new and different from other products.  The patent office does not really care about benefits as that is subjective.  What you may think is a benefit I may think is not needed.