Just about every patent application submitted to the patent office will face an obviousness rejection. But what exactly makes an invention “obvious” to a patent examiner?
According to the law (35 U.S.C. 103), even if a claimed invention is not identical to an earlier inventio, a patent on the invention cannot be obtained if the differences between the claimed invention and the prior art are such that the claimed invention would have been obvious at the time the invention was made.
With an obviousness rejection the examiner is basically saying that the invention is a routine and basic solution that a person having ordinary skill would use to solve the problem. In order to know if it is worth pursuing a patent after an obviousness rejection, inventors need to be able to articulate why their invention is not obvious and not a routine combination of already existing solutions.
While there are other rationales that an examiner may use to support their obviousness determination, the following are arguably the most commonly encountered.
- The invention is a product of combining prior art elements according to known methods to yield predictable results. For example, an inventor may be the first to invent a knife having a nail pulling blade/attachment, a tape measure, and a cutting blade. If the examiner can find one prior art invention having a pulling blade/attachment and a tape measure and another prior invention having a cutting blade and a tape measure, then the examiner may claim that the invention is obvious since a swiss army knife maker would have no problem combing the prior art inventions to make the inventor’s knife.
- The invention is created through a substitution of one known element for another to obtain predictable results. For example, an inventor may be the first to invent a wheelbarrow having roller bearing which lasts much longer than a traditional ball bearing. Since both types of bearings perform the same function, the examiner may claim that the invention is obvious since a wheelbarrow mechanic would know that either type of bearing could be used to reduce wheel friction.
- The invention is achieved by using a known technique to improve a similar device, system, or method in the same way. For example, an inventor may be the first to use facial recognition software running on a vehicle instead of cloud based facial recognition so that their vehicle could identify a user without requiring an internet connection. However, if other devices use this known technique in order to identify a user without requiring an internet connection, then the patent examiner may make an obviousness rejection.
- The invention is created by applying a known improvement technique in a way that would yield predictable results. For example, an inventor may be the first to make a shovel which has the metal head sonically bonded to the shaft where all other shovels use adhesive or threaded fasteners. If the patent examiner finds an article explaining that sonic bonding is superior to adhesives and fasteners, then the examiner may make an obviousness rejection.
There is hope
It is impossible to anticipate all the reasons that an examiner may use to claim that an invention is obvious. However, these types of rejections can be overcome by:
- Changing your claims to claim a new feature or element that is not found by the other inventions
- Showing that the two or more prior art references don’t produce the same results when combined or are generally accepted as not being able to be combined.