Understanding Patent Obviousness and Overcoming Associated Rejections

 The hardest hurdle to clear when proving the patentability of an invention is likely obviousness. This is as a result of its ambiguous and individualised nature. When a patent application is denied owing to obviousness, the inventor may be quite disappointed because their brilliant idea was rendered unpatentable by a vague concept. Rejections of obviousness are based on earlier art references and the conclusions drawn from them. Understanding the idea of obviousness and finding solutions to avoid it are therefore crucial. A similar effort is made in this article.

So what makes an invention obvious?

An invention is deemed obvious if, at the time the patent application was filed, a person of ordinary skill could have seen the differences between the claims and the relevant previous art. In other words, an invention cannot be patented if it is clear to the average person. As a result, a large portion of the patent application process involves arguing with the examiner that the invention is not obvious and is not based on the prior arts stated by the examiner because the concept is wholly subjective. It has frequently been seen that the examiner combined several preceding arts to reject a claim (one or more prior art references to interpret)

 

Moreover, when we compare the concept of Novelty with the idea of Obviousness, the subjectivity of the latter becomes even more evident as we will see in the sections below. 

 

Novel vs. Obvious in Patent Law

 

Novelty is defined under Section 102 of United States Code Title 35 – Patents of the U.S. Patent Act. A claim lacks novelty if each component has been described or discovered in a single prior art.

 

On the other hand, “Obviousness” is defined under Section 102 of United States Code Title 35 – Patents of the U.S. Patent Act, and a claim is not patentable if all the elements of the claim can be arrived at either by combining elements of the two or more prior arts or by combining the elements of the one or more prior arts with the knowledge of the person ordinarily skilled in the art. Moreover, the classification of the underlying claim as ‘Obvious’ leans more towards the legal aspect of the process rather than being a technical question. USPTO has provided various guidelines for rejecting a claim under obviousness. These guidelines arrange the cases in the following groups of obviousness rationales:

1. a straightforward replacement of one known element with another element to arrive to the same conclusion.

2. utilising established approaches to enhance existing devices (methods, or products).

3. "Obvious to try" refers to selecting one of a limited number of clearly defined, workable options with a fair chance of success.

4. A person of ordinary skill was inspired or guided by some prior art teaching, suggestion, or motivation to alter or combine the prior art references in order to produce the identical claimed invention.

5. If variants are predictable to someone with ordinary skill in the art, well-known work in one field may inspire variations for use in either that field or a different one.

6. Combining existing pieces in a known way to get predictable results

Ways for overcoming the Patent Rejection from Obviousness

In order to protect the patent application from being denied on unjustified and unrelated grounds, it is crucial to be prepared for these scenarios. The following advice will assist in avoiding rejections due to obviousness:

1. The examiner's conclusions that lack evidence or rely solely on common sense should always be contested by claiming that the rejection is conclusory and unsubstantiated.

2. The finding of obviousness must be contested by demonstrating how the issue was unknown in the prior art or by presenting further supporting evidence for the solution.

3. It is advised to take a deeper look at the patent's prosecution history if an examiner rejects the claim based on patents or published patent applications.

4. By highlighting the options available and how uncertain each option's results may be, you might challenge the examiner's presumptions regarding the small number of solutions with anticipated success.

5. On the grounds that the prior art offered no solutions to the issue the invention addresses, the examiner's analysis can also be contested.

6. Explain the unpredictable nature and factors of the examiner's indicated obviousness, and if feasible, provide evidence of the unexpected outcomes.

7. Last but not least, changes to the claims can be made and particular components that weren't present in the previous art references can be introduced if the examiner is still not persuaded.

To know more, read entire article on Patent Obviousness