Heading Off Obviousness Rejections

Sometimes the best defense is a good offense. Clients often assume that they are entitled to a patent because no single piece of prior art shows all of their invention.  In that case the invention may be novel. However, it does not mean that it is non-obvious.  To qualify for a U.S. patent, an invention must be both novel and non-obvious.  In other countries, the rule is articulated slightly differently: the invention must be novel and must “possess an inventive step.” It pays to spend some time thinking about how you would handle an obviousness rejection from the Patent Office before you file your application.  This thought process will help you build the case for non-obviousness into your application.  This will allow your attorney to draft claims that better define the patentability of your invention and may keep the examiner from making rejections that he or she would otherwise make.  You may also identify testing that you can perform to show your invention is patentable. Remember, obviousness rejections are by definition hypothetical in nature.  They involve a patent examiner looking at the prior art and crafting reasons why someone would have made the  leap from the prior art to your invention, even though no one did. Here are some key questions to ask yourself and to answer with your patent attorney to help you build the case for non-obviousness. Generally, you will need some knowledge of the prior art, either based on the results of a patent search or your own familiarity with your industry.

 1.      What challenges would someone have faced if they tried to combine or modify the prior art to obtain your invention? Generally speaking, the prior art must teach someone enough so that they could have made your invention in order for it to render your invention obvious (and unpatentable).  Consider why someone might have failed had they tried to use the teachings of the prior art to arrive at your invention.  

2.      Are there reasons why someone would not have modifed the prior art or put together teachings of different pieces of prior art to obtain your invention? Examiners generally need to provide some reason that a person skilled in the art would have modified the prior art or combined different prior art references to obtain your invention.  However, the examiners get quite a bit of leeway in coming up with these reasons, and they do not need to show a piece of evidence that identifies the reasons.  Instead, they can rely on “common sense” or known design incentives (e.g., reducing cost, improving efficiency, etc.).  However, if the prior art generally discouraged others from doing what you did, it can be helpful.  This is sometimes referred to as “teaching away.”

 3.      Are there any key benefits that are obtained when you combine the elements of your invention which someone reading the prior art would not have expected? Sometimes an invention combines certain known features but yields a “synergistic effect” or some special benefit that would not have been predicted from the prior art. This type of information can be very helpful in anticipating or responding to obviousness rejections. If there are certain tests or experiments that demonstrate such a “synergistic effect,” you may want to put them into your application.  In the United States, such data can be supplied after the application is filed if it is needed to respond to an obviousness rejection.  However, that is not true in some foreign countries.  Therefore, if you are seeking foreign patent protection, you may need to put this data in the application in order to rely on it later.

4.      Did you recognize a problem that no one else recognized which led you to come up with the invention? Sometimes an invention is the result of recognizing a problem that no one else recognized.  It may help you to build in the recognition of the problem in the background section of your patent application.  However, this will not necessarily carry the day.  If other problems or known incentives would have led someone skilled in the art to come up with your invention, it may not matter that they were not motivated to do so by the specific problem that led you to develop it.

5.      Did you solve a problem that others were unable to solve? If so, what specifically about the invention allowed you to solve it? 

Consider the problem you solved and how you solved it to develop a non-obviousness case

This is a corollary to Item 1, but focuses on the problems that those in the art were actually trying to solve.  Item 1 focuses on the problems that someone would have encountered if they tried to combine pieces of prior art in the way an examiner might, which is more of a hypothetical exercise. This one is critical, and spending time on it can help you prepare a much stronger patent application.  Consider why others were unable to solve the problem your invention solved and focus on the specific technical features that allowed you to solve it. In other words, you may have come up with a broad combination of product features that is novel.  However, now take it one step further and consider what specific features allowed you to solve the problems the prior art failed to address.  These will be the features that will provide the strongest basis for obtaining a patent.  You may want to try to avoid limiting all of your claims to these features if they are particularly narrow, especially when you first file the patent application. However, if the examiner rejects your claims as obvious, they may give you a way to limit your claims and get a patent. Clients often focus on the novelty of their invention at the time they file their patent applications and do not consider obviousness issues.  However, this can make it difficult to overcome obviousness rejections when they arise during examination of the application.  The foregoing questions may help build a case for non-obviousness and prepare you to handle such rejections.