Not only must an invention be novel to be patentable, it must also be non-obvious. It cannot be an obvious, or trivial, modification or combination of existing technology. This determination is made from the perspective of one of ordinary skill in the art. For chemical inventions, we might look to whether a chemist would consider the invention obvious; for a mechanical invention, we might look to whether a mechanical engineer or someone who works in the specific field of the invention would consider it a trivial improvement. While the inquiry is highly fact-specific, there are several ways to address the non-obviousness requirement.

The Rejection

After a patent application is filed, it is assigned to a patent examiner who will perform a search to determine the closest prior art–or technology already in existence–to the invention. If the applicant has done a reasonably thorough patent search prior to filing the application, the examiner will probably not uncover an exact match to the claimed invention, i.e., the invention will likely pass the novelty requirement for patentability. Unless the invention is extremely pioneering, however, or if the claims are written extremely narrowly, patent applications are almost never allowed or granted patent status on the first pass by the examiner. He or she will likely issue an Office Action that rejects the claims as being obvious over the prior art.

A proper obviousness rejection will apply the prior art to each of the claims in the patent application. The examiner will indicate which parts of the claims are shown in particular parts of the prior art. Sometimes, the examiner will use two or three or even more pieces of prior art to reject the claims, stating that it would have been obvious to the person of skill in the art to combine the multiple prior art to come up with the claimed invention. Other times, the examiner will use only one piece of prior art in the rejection and will argue that the differences between the claims of the patent application and the prior art are obvious or trivial modifications.

Planning for Obviousness in the Patent Application

One way to show non-obviousness is to perform a patentability search prior to filing a patent application. Such a search should elicit the closest prior art, which will permit us to tell the story of the inventiveness and to prepare the claims of the application in such a way so as to avoid the prior art. The story of inventiveness will often include information on the problem the inventor was addressing and how his or her invention solves the problem. Perhaps the invention is an improvement over other attempts to solve this problem or perhaps the inventor was able to improve on an area of technology where others were not able to do so. These details are part of the patent application that can be used to explain the non-obviousness of the invention to the examiner.

Responding to Office Action Rejections

Sometimes a patent examiner’s obviousness rejection cannot be predicted ahead of time. Some of the ways of responding to such a rejection include that the references cited by the examiner cannot actually be combined in the way the examiner suggests; that even if the references can be combined in that way, the resulting combination would not actually work or work in the way the examiner suggests; or that the combination would not actually result in the claimed invention. In some cases, the references actually teach away from the combination suggested by the examiner. This can be particularly compelling evidence of non-obviousness.

Evidence of Non-Obviousness

Evidence can also be submitted to the Patent Office to show non-obviousness. If the evidence is available at the time of filing the application, it can be included in the application. More often, however, the evidence is not available until after the patent application is filed. In that case, the evidence could be submitted to the patent examiner in the form of a declaration or affidavit signed by the inventor or another person.

This evidence will often include secondary considerations of non-obviousness. These include:

(1) commercial success of the claimed invention,

(2) a long felt need in the industry,

(3) failure by others to find a solution to the problem,

(4) unexpected results,

(5) copying or licensing by others,

(6) skepticism of experts.

Some of these can be difficult to prove because it will be necessary to show a link or nexus between the claimed features and the particular consideration at issue. For example, commercial success could be due to particular marketing skill or business prowess, rather than the claimed features of the invention.

What Should You Do?

Keep up with the state of technology in the particular field of the invention. Know who your competition is and what they are doing. Think about the story of the invention, including how and why the invention was created, what it sought to accomplish, and how it does so. How is the invention an improvement over what is already out there and over how the competition is seeking to solve the problem?

Contact an experienced patent attorney for assistance with a patent search to determine the closest prior art. Such an attorney should also assist in preparing patent applications that not only describe and claim your inventions, but also tell the story in a way that highlights the inventiveness of each invention.

Finally, keep records of any evidence of secondary considerations that could be used to show non-obviousness during patent prosecution, such commercial success or failure by others to solve the problem.